Titan Hoarding Systems Australia Pty Ltd v Lomax Group Pty Ltd
[2021] APO 19
•27 April 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Titan Hoarding Systems Australia Pty Ltd v Lomax Group Pty Ltd [2021] APO 19
Patent Application: 2016414392
Title:A structure support arrangement
Applicant: Lomax Group Pty Ltd
Opponent: Titan Hoarding Systems Australia Pty Ltd
Delegate: Dr N. R. Madsen
Decision Date: 27 April 2021
Hearing Date: 8 March 2021 via teleconference
Catchwords: PATENTS – a support arrangement for supporting hoarding panels – section 59 – opposition to grant of a patent – grounds of clarity, support, novelty, inventive step – opposition successful – claims not novel, not inventive, and not supported – ground of support raised by Delegate under section 60(3) – opportunity to amend – costs awarded
Representation: Counsel for the opponent: Ben Fitzpatrick
Patent attorney for the applicant: Baxter Patent Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016414392
Title:A structure support arrangement
Applicant: Lomax Group Pty Ltd
Date of Decision: 27 April 2021
DECISION
The opposition is successful.
Claims 1, 3-6, and 14-18 are not novel and not inventive. Claims 1-8 and 14-20 lack support.
I allow the applicant two (2) months from the date of this decision to propose amendments to overcome the deficiencies.
Costs are awarded in accordance with the Patent Regulations against Lomax Group Pty Ltd.
REASONS FOR DECISION
Background
This matter relates to patent application 2016414392 in the name of Lomax Group Pty Ltd (the applicant), having an earliest priority date of 22 November 2016. The patent application was examined and advertised as accepted on 7 February 2019. Following this, a notice of opposition was filed on 29 April 2019 by Titan Hoarding Systems Australia Pty Ltd (the opponent). The application was filed after 15 April 2013 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Patents Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
Evidence in support, answer and reply was filed and after the filing of evidence in reply the applicant sought to amend the claims of the specification. These amended claims were allowed and incorporated into the specification in November of 2020.
Prior to the hearing, I exercised my power under section 60(3) of the Patents Act to take into account any ground of opposition. To this end, before the hearing was conducted, I invited specific submissions from the parties regarding a matter under section 40(3) of the Patents Act in relation to the ground of Support. I will discuss these submissions where necessary in the decision.
The opponent was represented at the hearing via teleconference by counsel. The applicant chose not to appear at the hearing instead filing written submissions only.
At the hearing, the opponent sought to raise a new particular under the ground of clarity. I will address this general issue when I construe the claims in the decision, but it remains necessary to consider a request to amend the Statement of Grounds and Particulars filed by the opponent the day following the hearing. Relevant factors to be taken into account in determining whether it is appropriate to make the amendment were considered in CSL Limited v Isconova AB et al [2016] APO 82, and include:
· the prospect of undue prejudice to a party – for example, the applicant may be unduly prejudiced by unnecessary delays in seeking amendment, or by the introduction of further particulars that change the case the applicant has to answer (see Diamond Scientific Company v CSL Limited [1992] APO 55);
· the timing of the amendment request and the reasonableness of the explanation of the delay;
· the nature and importance of the requested amendment;
· the public interest – noting that a correct determination of the opposition is one based on the issues properly raised in the opposition proceedings.
The new particular under the ground of clarity is:
“Claim (sic) is also unclear as the relationship between the structure support arrangement, the weight and the body member in claim 1 is unclear. In particular, it is unclear whether the body member and the weight are the same thing or, if different, what the differences are.”
Considering the relevant factors identified above, there is a degree of prejudice to the applicant in having to respond to this issue at such a late stage, although rather minor. More significantly the timing of the amendment, being posed at the hearing and formally requested thereafter, weighs clearly against allowance. The explanation of delay is simply that the issue arose because of the applicant’s submissions however I do note that the claims stood to be considered as potentially unclear for the submitted reasons throughout the proceedings. The public interest lies in correct determination of proceedings based on issues properly raised, however I cannot see how the newly introduced particular is of a nature and importance sufficient to justify amendment, and the reasons for this will become clear in the decision when I proceed to construe the claims. Balancing these factors, it is clear to me that it is not appropriate to make the amendment. The opponent’s case proceeds on the grounds and particulars originally raised in the statement filed 29 July 2019.
The evidence
Evidence in support consists of a declaration by Gregory James Bloom (Bloom) dated 29 October 2019 with exhibits GJB-1 to GJB-3, and a declaration by Rod Wilkie (Wilkie) dated 29 October 2019 with exhibits RW-1 to RW-3R. Evidence in answer consists of a declaration by Mark Lomax (Lomax) dated 31 January 2020 with exhibits ML-1 to ML-15. Evidence in reply consists of a declaration by Tristan Mitterstoger (Mitterstoger) dated 31 March 2020.
Specification
The invention described in the specification relates to the field of hoarding or “wall” or “fencing” structures that may be used at construction sites to fence off areas in which construction or renovation is taking place. Structures are usually made of wood, wooden composite or plastic sheets typically screwed to a support post. Prior art arrangements often suffer from instability especially during windy conditions or when the structure is pushed accidentally. Often indentations or holes in the ground are required to fix support posts in place. Figures provided in the specification clearly depict the nature and implementation of the invention. Figs 1 and 2 respectively are reproduced below.
10. Paragraphs [39] and [40] of the description describe these figures as follows.
Fig. 1 illustrates a plurality of structure support arrangements 1210, 1220, 1230, 1240, 1250, and 1260 stacked along a support post 110 in accordance with a preferred embodiment 100 of the present invention. At a construction site or shop renovation site, multiple stacks of the structure support arrangements are placed along the boundary of the site. One or more hoardings or panels are fixed to the support posts 110. This way, a wall or a fence is formed along the boundary of the site to for example prevent pedestrians from entering into this site.
Fig. 2, illustrates a top perspective view of a structure support arrangement 1220 of the plurality of structure support arrangements 1210 to 1260, in accordance with a preferred embodiment of the present invention. As shown in Fig. 2, the structure support arrangement 1220 comprises a body member 210. In one embodiment of the invention, the body member 210 is made of plastic. Further, in one embodiment, body member 210 is made using a technique selected from a group of technologies including injection moulding, rotary moulding and blow moulding.
A nesting formation 220 is provided on the body member in order to prevent lateral movement when plural devices are nested as per Fig 1. A post receiving formation 230 is defined by the body of the structure support and this formation can be partially closed off using lips/plates 240 which serve to hold the post within the body. These lips/plates can be attached by fasteners to the body and can be partially embedded into a recess in the body.
The claims
12. The specification as amended 20 July 2020 ends in 20 claims, with the independent claim reproduced herein.
A structure support arrangement comprising a weight for supporting a hoarding
structure, the structure support arrangement comprising:
a body member;
a nesting formation defined on the body member and configured to
prevent lateral movement of the structure support arrangement in at least one
transverse direction when the structure support arrangement is nested with a
further structure support arrangement; and
a post receiving formation defined on the body member and
configured for receiving a support post to support the hoarding structure,
wherein the body member includes at least one support side along which the hoarding structure is supported in operation, and the post receiving formation abuts the at least one support side.
The Person Skilled in the Art
13. The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are ‘those likely to have a practical interest in the subject matter of [the] invention’. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
In the present case, it is indubitable that a person skilled in the art includes a person with experience in the design and use of hoarding structures in places like construction sites. Of the evidence presented by the parties, only the evidence in support presents experts that seek to identify as persons skilled in the art. Mr Bloom has worked for at least 25 years in the hoarding industry and has substantial knowledge in the installation of external and internal hoardings for construction sites and in retail shopping centres (Bloom at [1], [3], and [4]). He has participated in industry standard reviews of hoarding structures and has consulted on many on-site installations (Bloom at [21] and [22]). Mr Wilke is a structural testing engineer whose involvement in temporary hoarding and fencing has been in relation to the development of relevant industry standards (Wilkie, exhibit RW-1R).
As demonstrated by their declarations and work histories, both Mr Bloom and Mr Wilke can be considered persons skilled in the art having involvement in the hoarding industry in the contexts of testing, supply, and/or installation. I consider this background positions both Mr Bloom and Mr Wilkie to comment on the common general knowledge. At this point I note that the applicant has raised several issues regarding the evidence of the experts and I summarise some key points of the applicant as follows:
· Neither witness was provided the Federal Court guidelines for expert evidence
· That it is the wrong approach to simply ask experts whether certain features are common general knowledge in considering inventive step
· The experts may have seen prior art documents before considering the specification and that “hindsight bias” looms large in the evidence
· The experts lack independence from each other and from the opponent
· Mr Wilkie is not a person skilled in the art because he is simply a technical test engineer having only worked to assist stakeholders in the preparation of a relevant Australian hoarding standard
To the extent that any of these factors may become relevant I will consider them as required in this decision in deciding the weight I am to give to particular elements of the evidence. In short, I see no information before me that would lead me to consider there to be any personal bias to the evidence. I consider it clear that Mr Bloom, and to an extent Mr Wiklie are equipped to provide evidence as to the common general knowledge in the hoarding industry. Importantly, the applicant does not file any contrary evidence to that of the opponent in this regard.
The Common General Knowledge
17. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited(1980) 144 CLR 253 at page 292, Aickin J. stated:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
18. The opponent submits that the evidence of Mr Wilkie identifies that a person skilled in the relevant hoarding structure art would have a skill set including the following (Wilkie, exhibit RW-1R):
· Cutting, welding steel tube
· Working with steel wire mesh products
· Bolting and clamping
· Placing concrete into moulded forms
· Assembly of components
· Jointing of framing components
· Positioning of concrete footings
· Levelling
· Stabilisation/bracing of fences and hoardings
· Stacking and storage
19. The opponent also asserts that the person skilled in the art would have a general understanding of fence/hoarding erection techniques, including knowledge of connections between structural members such as (Wilkie, exhibit RW-1R):
· Screw fastened, lapped timber joints
· Nail fastened timber joints
· Notched timber joints
· Screw and rivet jointed metal framing
· Mechanical clamped joints
· Spigot type male and female connections
· Bolted connections between metallic and timber framed members
· Stabilisation fences and hoarding using unit mass kentledge as ballast
· Understanding of block ballast arrangement, simple unsecured stacking vs interlocking techniques (nesting)
· Erection of modular hoardings with stackable interconnecting ballast to stanchion technology
20. In accordance with these points, the opponents evidence points to the use of a structure support having weighted nested formations further comprising a post receiving formation and support side as being part of the common general knowledge (Bloom at [30] and Wilkie, exhibit RW-2R). There is no evidence from the applicant to contend with this identification. I see no reason to not consider the characterisation above as not being representative of the common general knowledge.
21. The opponent goes further to seek to identify more information as forming part of the common general knowledge. With reference to the evidence of Mr Bloom, the opponent asserts that a commercially available “Titan system” developed by Mr Bloom was part of this knowledge. Mr Bloom discusses the commercial success of the Titan system and also points to its use across a wide range of major retail outlets and companies (Bloom at [24]-[28]). The opponent submits that given the popularity and commercial success of the Titan system, its components formed part of the common general knowledge at the priority date.
22. In brief, I cannot consider that a relatively broad commercial success constitutes the type of evidence sufficient to satisfy me that the Titan system could be considered background knowledge and experience which is available to all in the trade. Thus, the common general knowledge for the purposes of this decision does not include the Titan system identified in the opponent’s evidence.
Section 40: Construction/Clarity/Support
Claim Construction and Clarity
23. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
24. The idea of impermissible addition of features or “gloss” is also referred by Burley J in Doric Products Pty Limited v Asia Pacific Trading (Aust) Pty Ltd [2017] FCA 849 (28 July 2017) at [37]:
“But it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. Terms in a claim which are unclear may be defined by reference to the body of the specification, but the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter.”
25. I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
26. With this particular case law in mind, I seek to construe with care, claim 1 of the opposed application. The claim can be conveniently separated into integers as follows.
Integer Feature a A structure support arrangement comprising a weight for supporting a hoarding structure b the structure support arrangement comprising c a body member d a nesting formation defined on the body member and configured to prevent lateral movement of the structure support arrangement in at least one transverse direction when the structure support arrangement is nested with a further structure support arrangement e and a post receiving formation defined on the body member and configured for receiving a support post to support the hoarding structure f wherein the body member includes at least one support side along which the hoarding structure is supported in operation g and the post receiving formation abuts the at least one support side
A structure support arrangement comprising a weight for supporting a hoarding structure, the support structure comprising…
27. Regarding this feature the opponent submits that it only requires a structure support arrangement that has a weight that is sufficient to support a hoarding structure. I do not see any other meaning that can be given to the limitation provided. Other features besides a weight are clearly contemplated by the presence of the word “comprising”. In the context of feature “b” defining the structure support arrangement also “comprising” further features such as a body member, nesting formation and post receiving formation, it would appear entirely clear to me that the weight and the body member for example can be the same element but, may also be different (with features defining the relationship between the two elements not being claimed).
28. While the applicant appears to submit that the support structure in the form of the body is the weight contemplated in this preamble, it would be a gloss to take this otherwise clear articulation of features in the claim and turn to the specification and a particular defined embodiment to limit the claim to the weight and the body being one and the same. Further to this, the weight may be coagulable material within a hollow body member (claims 16 and 17, paragraphs [26] and [49]). To this end, I see insubstantial basis to support the need to allow the requested amendment to the Statement of Grounds and Particulars discussed above.
a hoarding structure
29. The applicant provides submissions that appear to seek to characterise the hoarding structure of the claimed invention in claim 1 as precisely equatable with a hoarding panel. This is done by reference to the specification and figures which discusses a panel mounting directly for example, to the support post provided in Fig 1. I see no basis in the claimed use of the term “hoarding structure” to further limit this feature to a “hoarding panel”. A hoarding structure appears to be a structure that may comprise a hoarding panel but is not limited to a merely a hoarding panel on plain reading of the claim’s language. For example, a hoarding structure might include a hoarding panel plus other members such as horizonal supports like rails of a fence. Limitation to a hoarding panel is clearly an impermissible gloss on claim 1. The hoarding structure as defined in the claim is something that must be supportable by the support post of claim 1. The support post and hoarding structure are contemplated as separate items.
a body member
30. I agree with the opponent’s submission in relation to a body member as follows:
“As noted by Burley J in Doric Products Pty Limited v Asia Pacific Trading (Aust) Pty Ltd [2017] FCA 849 (28 July 2017) at [48] [49] this term should be construed broadly, and, in the context of the invention, would encompass “the trunk or main mass of a thing” or the “main or central part of a thing”. There is no requirement in the claims for the body member to be unitary. To import such a requirement would be an impermissible gloss.
a nesting formation defined on the body member…
31. There is no difficulty in understanding the nesting formation and the specifics thereof, as defined in the claim. There is merely some structure built into the body such that when plural bodies are placed upon each other, the “nesting formation” prevents a lateral movement of structural supports with respect to each other. In other words, they are limited in their horizonal movement with respect to one another as per Fig 1 above.
a post receiving formation defined on the body member and configured for receiving a support post to support the hoarding structure
32. Here, the body member comprises a formation that is capable of receiving a support post that itself is capable of providing support to a hoarding structure. The support post and hoarding structure are contemplated as separate items.
wherein the body member includes at least one support side along which the hoarding structure is supported in operation
33. The opponent asserted that this feature was unclear in their statement of grounds and particulars. They did not elaborate on a brief written submission provided in the summary of submissions that stated it was unclear what was meant by “the structure is supported in operation along at least one support side”. However, the opponent did present their construction of the relevant feature at the hearing being:
“[the feature] only requires that the structure have at least one side that is capable of supporting a hoarding structure. Further, there is nothing in the claim language to suggest that the support provided by support side must be direct support. The language clearly encompasses indirect support. This is apparent from the limiting language of the dependent claims including claim 2.”
‘The body member must have at least one side which functions to confer support to the structure. There is no requirement in the claims for that support to be direct.”
34. Claim 2 in fact refers to a feature whereby a hoarding panel bears directly against the support side, supporting the notion that claim 1 is not limited to any particular mode of support “along” the support side. While one might suggest that an upper side or surface of the body (for example an upper side of the body in Figure 2) may constitute a support “side” I do not see the claim in context as including such a limitation. A support structure is designed to nest upon a further support structure and be restricted from a lateral movement with respect to further structures. In this context of a nesting capability and the functioning to provide support in operation, guided by Figure 2 and the disclosure, I view a support “side” to be consistent with the dictionary definition of a side being a surface other than the top or bottom, or alternatively worded, a lateral side (The Macquarie Dictionary, 6th ed. 2013,
35. I agree that the body member must have at least one “lateral” side which functions to confer support to a hoarding structure. While the claim is not limited to a mode of support, I see no reason why, in accordance with Monsanto Co v Commissioner of Patents, a person could not ascertain whether what he or she proposes to do falls within the ambit of the claim.
and the post receiving formation abuts the at least one support side
36. The opponent submits that this feature reads to the post receiving formation and the support side sharing a common boundary. In other words, I understand this to mean that the post receiving formation “opens” to a lateral support side in that it is not a “closed” aperture, but a receiving formation of the type shown in Fig 2 above by item 230. The plain meaning of the term “abut” is to “make contact”. If for example, a closed aperture is simply nearby a side of a body, I do not see that it can “make contact” with that side. Instead to “make contact” between the post receiving formation (which in context is necessarily arranged to hold a post substantially vertically) and the lateral support side, as a matter of logic, there must be a shared boundary and thereby some kind of open recess/aperture. As an aside, I note that claim 5 is directed to the post receiving formation being either an aperture or a recess. To the extent that the post receiving formation is defined on the body and opens onto a support side of the body, I do not see claim 5 as providing any particularly significant limitation to the scope of claim 1 as an open recess or an aperture necessarily provides such a feature.
37. I find the claims are clear.
Support
Subsection 40(3) requires that the claims must be supported by matter disclosed in the specification. In the present matter, to comply with sec 40(3), the scope of the claims must not be broader than is justified by the extent of the description and drawings, and the contribution to the art. This means that:
“… the definitions in the claims [i.e. the claimed invention] should essentially correspond to the scope of the invention as disclosed in the description. In other words, … the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” (Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13 at [36], affirming T 409/01)
39. The word ‘support’ means more than just coincidence of language (Schering Biotech Corp.'s Application [1993] RPC 249 at 252-253). In considering UK and European Authority, a delegate of the Commissioner of Patents constructed a framework around which one could consider the issue of support (see CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [115]).
“Thus the task is to:
i.construe the claims to determine the scope of the invention as claimed,
ii.construe the description to determine the technical contribution to the art, and
iii.decide whether the claims are supported by the technical contribution to the art.”
40. As noted above, I invited the parties to comment regarding a potential issue of support that I identified before the hearing. I wrote to the parties as follows:
“…I request that the parties provide submissions as to the feature “wherein the body member includes at least one support side along which the hoarding structure is supported in operation” regarding whether or not this feature presented in the context of claim 1 is support by matter disclosed in the specification as required by section 40(3).
More specifically, the feature provides a functional arrangement where a hoarding structure is supported “in some way” along a particular side of the structure support. Reading the specification, it appears that the only means described for achieving this is by fixing hoardings to the support posts 110 described in the specification. These support posts are arranged within the claimed post receiving formation 230. In order to achieve support of the hoarding in operation, it appears that the specification further requires that the support posts are held within the post receiving formation by two plate members 240 secured to the body of the structure support along the support side. Prima facie it appears to me that this specific teaching may not be sufficient to support the claimed functional feature of claim 1 across its entire scope. In other words, it may be that there is an undue burden in extending this limited teaching of the specification across the entire scope of claim 1 to cover any and all means of supporting the hoarding structure along the support side of the structure support.”
41. The applicant responded with reference to the need for there to be basis in the description for each claim and that the scope of the claims must not be broader than the extent justified by the specification and contribution to the art, arguing that the post receiving formation may be an aperture or a recess with reference to paragraphs [6] and [43] of the opposed application. More specifically:
“This disclosure provides support for a post receiving formation that does not include plates. For example, the formation may be an aperture in the weight that adapted for receiving the hoarding support post (vertical timber stud): see [43] and claim 5 of the Opposed Patent. Here, the word “aperture” is referred to as being defined on the weight such that it comprises a hole surrounded by the body of the weight, which is consistent with the way the term is used to describe the pole receiving apertures of the weight: see [47] and apertures 260 in Figure 2. That aperture may have a rectangular cross-section to match the shape of the hoarding support post: see [20] of the Opposed Application.
The weights of the invention, as referred to at [24], [49], and [62] may be made of a sturdy plastic shell and filled with a coagulable material such as cement, so that would provide sufficient structural integrity for the weight to receive and hold the hoard post of a hoarding in an aperture of the weight”
42. Firstly, it is clear to me that there is an issue with the applicant’s position and the equating of an aperture in the form of a “hole surrounded by the body of the weight” with the claimed post receiving formation. This is because the post receiving formation of claim 1 is defined, as I understand it, as further abutting the at least one “lateral” support side. Having construed the feature of “abut” early in the decision it is clear to me that the post receiving formation of claim 1 cannot constitute a surrounded hole, but instead must be some kind of aperture or recess that is not fully enclosed, opening in some way onto the support side. Such a concept is well exemplified in Fig 2 shown above at item 230. With this in mind it is left for me to consider the elements of claim 1 in that the claim is limited to an open structure that shares a common border with the lateral support side.
43. As I identified in my correspondence to the parties, the feature “wherein the body member includes at least one support side along which the hoarding structure is supported in operation” is a feature directed to any and all means of the support structure doing so. In order to support a hoarding structure as operationally required in accordance with the benefits discussed in the specification in the context of claim 1, the specification makes it clear that a necessary element to achieving this support is some form of retention means to adequately retain/hold a post. The only way the specification describes achieving this when the post receiving formation abuts a support side is via the use of lips 240 that enclose the abutting post receiving formation (see Figs 1 and 2). While I acknowledge other specific means would appear to be available to the person skilled in the art without undue burden or the need for further invention, such as fastening the post directly to the body, the hoarding structure will simply not be supported in operation and the structure will not achieve its stated benefits (i.e. it will fall over) without some adequate means to retain the post within the claimed post receiving formation. Thus, I consider claim 1 lacks an essential feature and is not supported.
44. To this extent, applying my construction of claim 1 I have turned to the description to understand what the technical contribution to the art is. It appears to me that the technical contribution to the art described by the specification involves the use of a post receiving recess that abuts a lateral support side, there being a retention means present as part of the support structure for holding the post in place. In the specification this is embodied in the form of lips 240. Given the above discussion, it appears reasonable to suggest that the issue could also arise under the ground of Utility. However, in light of my findings, I do not consider it necessary to address this further.
45. The issue with claim 1 is not rectified until dependent claim 9 in which plates are claimed in a manner reflected by Fig 2. Claims 10-13 are dependent upon claim 9 and include the features thereof.
46. Therefore, I find that claims 1-8 and 14-20 lack support.
Novelty
47. For the purposes of subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information. This prior art information may include a publicly available use of the invention.
48. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at [235]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
49. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
50. I also note that an alleged anticipation need not explicitly disclose all of the essential features of the claimed invention. In this regard, a disclosure may be implicit as discussed in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at 576:
“What all authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.”
51. The opponent argues that the claims lack novelty in view of documents D1 and D11. Document D11 is an Australian patent application published 21 February 2013, having application number AU 2013100057. It is clearly relevant prior art for the purposes of novelty and inventive step. Document D1 is a web-based publication of what the opponent refers to as the “Cassidy Brothers – Kelly Block”. In terms of demonstrating the public availability of this information, the opponent refers to a declaration filed as evidence in reply which points out that images relevant to disclosure of the claims at hand were “uploaded” to a WordPress file before the priority date of the opposed application (Mitterstoger). There is no additional evidence to further support the assertion from the opponent as to an act of publication of this information.
52. The nature of the evidence is clear in that I cannot be convinced that the images of the Kelly Block, relevant to the present claims, were made publicly available on a web site before the priority date of the present application. The applicant has filed evidence using the internet archive “Wayback Machine”, and while I note the difficulty of relying on such evidence from the Wayback Machine (see Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (no 4) [2016] FCA 138), this evidence does suggest publication of the relevant information after the earliest priority date (see Lomax). Hence, the opponent has not discharged their evidentiary onus in relation to document D1 and I only need to consider document D11 further under both Novelty and inventive step.
53. Figs 1, 3-5 and 13 are a useful depiction of the invention described in document D11.
54. The invention described in document D11 is a weighted support assembly for supporting hoardings. Fig 1 is a general depiction of the assembly in use, holding posts 22 which support a hoarding structure. Weights 18 (Fig 13) are used in a manner whereby they stack on top of each other. These weights serve to be placed on a foot 14 to assist in holding up the post arrangement 16 (see Figs 3-5). Fig 13 in particular bears commonality with the claimed invention in that the invention of claim 1 is directed to a support structure arrangement comprising a weight and a body with certain features, wherein the weight and the body may be one and the same element. I will now turn to the specific integers of claim 1.
55. Integer a) of claim 1 is a structure support arrangement comprising a weight for supporting a hoarding structure. Fig 13 clearly depicts a weight that is suitable for supporting a hoarding structure. The weight naturally comprises a body member which is shaped to provide a nesting formation 50 to be received in a corresponding formation on the bottom of the weight. This enables the weights to be stacked and received within one another in the claimed nesting fashion, thus preventing lateral movement of the structure. Thus, features b), c) and d) are also disclosed by document D11.
56. Feature e) requires a post receiving formation defined on the body member and configured for receiving a support post to support the hoarding structure. Items 56, 62 and 64 in Fig 13 clearly depict an open recess on the body of the weight that receives a support member 16 that may be considered a post. Fig 3 shows the support member 16 being received within the receiving formation. As per Fig 1, this support member (post) 16 is suitable for providing support to the hoarding structure, itself depicted in Fig 1 as including vertical posts 22 secured to a panel. It is also clear that the post receiving formation shares a common boundary with a side of the weight (as required by feature g)). Thus, what remains to consider is whether the body member can be considered to include at least one support side along which the hoarding structure is supported in operation as per feature f).
57. Regarding this remaining question the applicant submits as follows with reference to the opponent’s summary of submission (SOS):
“The argument in SOS is defective in many other aspects. For example, in relation to D-11, at [81] of the SOS, the Opponent says the face on which the slot 64 of the weight 12 opens is a support side, however this is not so as the hoarding panel is not supported along that side.
SOS at [82] also suggests that the body member may be some combination of interconnecting parts, so that the support side may provide indirect support. This is not consistent with the proper interpretation of the language of claim 1, and casts a gloss on the terms therein which that is not consistent when reading the entire specification of the Opposed Application as a whole.”
58. I have already dealt with the proper construction of the relevant features in claim 1. Earlier I considered the relevant feature to be that there is at least one side that functions to confer support to a hoarding structure and that the support provided by this side may be indirect support. The side which shares a common boundary with the claimed post receiving formation is depicted in Fig 13 as item 34. By its nature, this side naturally provides support in an indirect manner to a hoarding structure arranged along the length of this support side (Fig 1). I consider that document D11 clearly involves a hoarding structure being supported along the side at which the post receiving formation abuts. Importantly, the hoarding structure need not be directly supported by this side of the disclosed weight. As I have noted, the hoarding structure need only be supported, in some indirect manner, along this side.
59. Therefore, I consider claim 1 is disclosed by document D11.
60. Regarding the dependent claims:
· Claim 2 is a claim to the support structure of claim 1, wherein the at least one support side bears against a hoarding panel of the hoarding structure when the hoarding panel is fixed to the support post. It appears to me reasonable to construe claim 2 as limited to a physical arrangement expressly including a support structure with a post within the post receiving portion and having a hoarding panel fixed to the post, as the claim doesn’t structurally limit the body/weight in any way beyond claim 1. The claim includes the support side bearing against a hoarding panel. The hoarding panel of document D11 clearly does not bear against the support side of the weight/body (see Figs). Claim 2 is novel. Claims 19 and 20 are directed to similar subject matter. Claims 19 and 20 are also novel.
· Claim 3-6 are not novel as the at least one support side of D11 comprises an exterior side wall 34 of the body member; the post receiving formation includes an opening in the exterior side wall of the body member; wherein the post receiving formation is a recess; and wherein the shape of the post receiving formation conforms to a cross section of the post (Figures 3-5).
· Claims 7 and 8 are novel. Document D11 does not disclose a rectangular post receiving formation defined on the body of the structure support.
· Claims 9-13 are novel. Document D11 does not disclose plates secured to the body member to prevent lateral movement of the support post/member 16.
· Claim 14 is not novel. Document D11 discloses nesting formations involving raised portions and complementary recesses (item 50, paragraphs [0019] and [0062] and Figs, in particular Figs 3 and 5 and the projection and recess formations that I have arrowed and circled above in Fig 3). These features are in addition to the larger nesting element identified at 50 of the body. The present application simply describes dovetails (paragraph [46]) in relation to cavities 2520 shown for example in Fig 2 whereby corresponding projections are received in said cavities. I consider document D11 discloses the claimed dovetails of claim 14.
· Claim 15 is directed towards the presence of one or more pole receiving apertures defined on the body member. An aperture is defined in the Macquarie Dictionary (The Macquarie Dictionary, 6th ed. 2013, as “a hole, slit, crack, gap, or other opening”. The specification of the opposed application does not provide for a different definition. The duplication of element 64 provides for the disclosure of one or more pole receiving apertures. Claim 15 is not novel.
· Claims 16 and 17 are directed to a hollow body member that maybe filled with a coagulable material. Document D11 discloses that the weight includes an outer shell that defines a vessel filled with ballast such as concrete, water or any other material suitable for imparting sufficient weight to the vessel (paragraph [0073]). Hence, claims 16 and 17 are not novel.
· Claim 18 is not novel. Claim 18 is directed to a structure support further comprising a recess defined on the body member and configured to receive a bar that extends into a corresponding recess of another further structure support arrangement. Fig 3 demonstrates the function of a recess which serves a purpose distinct from the post receiving formation (second of the two open recesses which opens to the side opposite the support side 34), which is capable of receiving a bar (exemplified by item 76) that can extend into a corresponding recess of a body member nested beneath.
61. Therefore, I consider claims 1, 3-6 and 14-18 are disclosed by document D11. Claims 2, 7-13 and 19-20 are novel.
Inventive Step
62. The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
63. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]-[53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
64. The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
65. In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]- [203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s ‘starting point’ such as might be gleaned from a reading of the complete specification as a whole.”
66. In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The Problem
67. The specification discusses problems associated with known hoarding structures including insufficient stability in the presence of wind and accidental forces, and the need to the support posts using indentations in the ground. I am satisfied that the claimed invention seeks to address such issues by providing the support structure of claim 1. To this end the problem can be articulated as the need for an improved structure support arrangement for a hoarding structure with improved stability characteristics without requiring ground invasion.
Prior Art Base
68. In addition to an attack as to a lack of inventive step on the basis of common general knowledge alone, the opponent presses a lack of inventive step using documents D1 and D11. As per my discussion above I only need to consider the prior art base of common general knowledge and document D11.
Was the invention obvious?
Common General Knowledge alone
69. I have identified the common general knowledge above. There, I articulated the common general knowledge to include various standards skills and arrangements (paragraphs [17] and [18]) and more specifically, the opponents evidence pointed to the use of a structure support having weighted nested formations further comprising a post receiving formation and support side as being part of the common general knowledge. Importantly, not part of the common general knowledge is the post receiving formation abutting the support side. In relation to this feature, the opponent submitted that “the post receiving formation abutting the support side is the obvious place to locate the formation given the function of the post in supporting the hoarding”. This submission was made without reference to any expert evidence nor the problem solved by the presently claimed invention.
70. Such an assertion is insufficient to render the claims obvious. The mere presence of a post receiving formation defined on a weighted and nested formation as common general knowledge does not in and of itself, directly lead a person skilled in the art to apply a very specific arrangement to the post receiving formation that is not known to be common general knowledge. The post receiving formation defined in the claims shares a common border with the support side in as much as it is in the form of an open recess/aperture. The opponent simply has not discharged its onus in showing that in view of the identified problem, the person skilled in the art would take routine steps to arrive at the claimed invention. In other words, I don’t see the evidence establishing a post receiving formation abutting a support side as routine.
71. Claim 1 is therefore inventive in view of the common general knowledge alone. Claims 2-20 are similarly inventive.
Document D11 plus Common General Knowledge
72. Firstly, claims 1, 3-6, and 14-18 lack an inventive step in view of document D11 and common general knowledge for the reasons already provided under Novelty. Remaining to consider are claims 2, 7-13, and 19-20.
73. Claims 2, 19 and 20 are directed towards the support side of the body/weight member bearing against a hoarding panel of the hoarding structure when the hoarding panel is fixed to the support post. Regarding claim 2 the opponent submits that:
“It is inherent that when a rectangular post / stanchion is fitted into a matching shaped hole the interfacing male and female components will bear against each other. This is how the block (body member) provides support to the post and hoarding structure. This feature was found in removable bollards and receivers, connection of temporary fence panel and counterweights well before the priority date.”
74. Similarly, with respect to claims 19 and 20 the opponent submits:
“As noted above, temporary fencing and hoarding systems routinely utilise stanchion posts and infill panelling. All hoarding panels are fixed to support posts, whether directly connected, or via battens, cross beams or other horizontal members. Systems which utilise a receiving slot concept, incorporating the stanchion post to fit into the block predate the priority date, including the Titan system. Accordingly, the addition of the intrinsic functional attributes does not confer inventiveness.
75. Turning to document D11 it is clear that the disclosure teaches panels being mounted at a distance from the weight/body member resulting in indirect support being offered to the hoarding panel along the relevant support side. The document teaches away from an arrangement whereby the hoarding panel bears against a support side of the body/weight when the panel is fixed to a support post. The submissions of the opponent do not rectify this issue. I see no evidence that would suggest it obvious to make such a modification to the clear workings of the invention in document D11. Therefore, I find claims 2, 19 and 20 inventive.
76. Claims 7 and 8 add further limitation to claim 1 and 6 in that the shape of the post receiving portion is rectangular with a short side parallel to the support side and the long side perpendicular to the support side. The opponent essentially submits that it was common to use rectangular wooden posts in hoarding arrangements (Bloom at [30]) and I do not doubt that this is true as a general concept. However, I must consider whether a person skilled in the art would consider modifying document D11 in view of this knowledge as a matter of routine.
77. Document D11 teaches the use of a recess that abuts a support side wherein the recess is designed to hold a post/support member that extends beyond the support side (see Figs 3-5). Modifying the recess to have a rectangular shape would change the way in which the described invention of document D11 works as there would no longer be elements (62) capable of retaining a post/support within the body/weight member. While the use of rectangular posts in hoarding structures may be generally well known, it appears to be that document D11 teaches away from a structure support having recesses shaped to receive a rectangular post. I consider claims 7 and 8 inventive in view of document D11 and common general knowledge.
78. Claims 9 adds the feature to claim 1 of one or more plates secured to the body member, in proximity of the post receiving formation, and adapted to prevent lateral movement of the support post in at least one transverse direction when the support post is received in the post receiving formation (claims 10-13 further append to claim 9). The opponent submits with refence to evidence of Bloom (at [30]) and Wilke (RW-3R at page 6) that the addition of this integer is obvious noting:
“The concept of using keeper plates to secure structural elements was commonplace at the priority date. They are often called purlin clamps, flange clamps, beam clamps. Using plates to secure wooden posts has been commonplace in a number of industries and hobbies and is part of the day to day knowledge of tradespersons.”
79. Again, I accept this assertion of the common knowledge to be true. Plates and similar devices are often used to hold wooden posts in place. However, the evidence fails to establish such common use in the context of hoarding arrangements and particularly for holding a post within a post receiving formation by way of securing plates to the body/weight of a structure support. Furthermore, document D11 appears to teach away from the use of any additional elements to the body of the support structure to prevent transverse movement of a post. As such I find claims 9-13 inventive.
Conclusion
80. The opposition is successful. Claims 1, 3-6, and 14-18 are not novel and are not inventive. Furthermore, claims 1-8 and 14-20 lack support. There appears patentable subject matter present in the claims and specification. On this basis, I will provide the applicant a period of two (2) months to propose amendments to attempt to overcome the identified deficiencies.
Costs
81. Lomax Group Pty Ltd has not been successful in defending the application. It is normal for costs to follow the event. In this case, I see no reason to depart from the norm as the opponent is successful in relation to grounds of novelty and inventive step. I award costs against Lomax Group Pty Ltd.
Dr N. R. Madsen
Delegate of the Commissioner of Patents
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