Wide Bay Brickworks Pty Ltd v Barrier Engineering and Construction Co Pty Ltd

[2000] APO 35

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Nos. 674995 in the name of Wide Bay Brickworks Pty Ltd

Title:          A Building Panel

Action: Opposition under section 59 of the Patents Act by Barrier Engineering and Construction Co Pty Ltd

Decision:          Issued            .

Abstract

The claimed invention is directed to an article per se.  The term "floor panel" in the claims merely indicates the intended use, and a requirement of suitability for that use.  The invention is not distinguished from other panels of the same construction having identical features intended for a different use but which are similarly suitable for use as a floor panel.  The present specification itself states the floor panel of the invention is suitable for a different use such as a wall panel.  The invention as defined is not novel over a series of technical drawings of a stair landing panel and the prior art patent documents respectively, provided by the opponent describing various prefabricated wall building panels having the same essential features as the invention.  The dependent claims were similarly not novel in the light of these documents, or were considered obvious in the light of common general knowledge possessed by a skilled worker in the building industry.

There is no patentable subject matter present, application refused.  Costs followed the event.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No 674995 by Wide Bay Brickworks Pty Ltd and opposition under section 59 of the Patents Act by Barrier Engineering and Construction Co Pty Ltd.

BACKGROUND

Patent application 674995 was filed by Wide Bay Brickworks Pty Ltd (Wide Bay) on 30 September 1994 and associated with provisional application PM 1801 filed on 13 October 1993.  The patent application was advertised accepted on 16 January 1997 and a Notice of Opposition was lodged by Barrier Engineering and Construction Co Pty Ltd (Barrier) on 15 April 1997.

On 15 July 1997 Barrier served its statement of grounds and particulars.  The grounds relied on are novelty, obviousness, manner of manufacture and clarity.  Evidence in support was served on 15 October 1997.  No evidence in answer was served by the applicant.

A hearing on the matter was set down at Canberra on 1 February 2000.  Mr Michael Grant of Patent Attorney Services lodged written submissions on behalf of the opponent whilst the applicant was not represented and made no written submissions.

SPECIFICATION

The invention relates to a building panel, in particular a prefabricated floor panel of steel reinforced, clay block construction.

The specification explains that in multistorey buildings elevated floors are normally made of reinforced concrete.  The construction of each such elevated floor requires the erection of formwork, laying and spacing of reinforcing, pouring and screening of concrete, and the dismantling of formwork.

Such procedures are considered labour intensive and time consuming particularly as the next level of floor construction cannot commence until the previous level's concrete has set sufficiently.  The present invention seeks to provide a floor panel which ameliorates at least some of the disadvantages of the case concrete floors.

The specification ends with eleven claims in all of which there is one independent claim as follows:

"1.  A prefabricated floor panel comprising a plurality of juxtaposed courses of blocks, at least some of the blocks having through holes, the floor panel further comprising at least one elongate reinforcing member which, in use, extends horizontally in aligned through holes in the blocks, transversely to the courses, substantially from one edge of the panel to the opposite edge."

In addition, claim 9 is directed to a method of constructing a floor panel using the prefabricated panel of at least claim 1 as follows:

"9.  A method of constructing a floor panel, comprising prefabricating a floor panel as claimed in any one of claims 1 to 8, placing the prefabricated floor panel in an elevated position in a generally horizontal orientation."

The entire eleven claims are set out below.

1. A prefabricated floor panel comprising a plurality of juxtaposed courses of blocks, at least some of the blocks having through holes, the floor panel further comprising at least one elongate reinforcing member which, in use, extends horizontally in aligned through holes in the blocks, transversely to the courses, substantially from one edge of the panel to the opposite edge.

1. A floor panel as claimed in claim 1, wherein the blocks are clay blocks.

1. A panel as claimed in claim 1 or 2, wherein the blocks have at least one exposed surface which is keyed or grooved.

1. A panel as claimed in any preceding claims, wherein the joints between the courses of blocks, and the between the blocks in each course, are filled with mortar.

1. A panel as claimed in any preceding claim, wherein the aligned through holes containing the reinforcing member(s) are filled with grout.

1. A panel as claimed in claim 5, wherein the reinforcing member(s) is(are) pre-tensioned before the aligned through holes are filled with grout.

1. A floor panel as claimed in any one of claims 1 to 5, wherein the reinforcing member(s) is (are) post-tensioned.

1. A floor panel as claimed in any preceding claim, further comprising a layer of concrete cast on the upper side thereof.

1. A method of constructing a floor panel, comprising

prefabricating a floor panel as claimed in any one of claims 1 to 8,

placing the prefabricated floor panel in an elevated position in a generally horizontal orientation.

1. A method as claimed in claim 9, further comprising the step of casting a layer of concrete on the upper side of the panel.

1. A method as claimed in claim 9 and 10, further comprising the step of rendering the underside of the floor panel with mortar to form a substantially smooth underside surface

The specification states several of such panels are laid side-by-side to form a floor.  Typically, the block panels are constructed off site, either horizontally or vertically, to the desired dimensions.  Once formed the panels are transported on site as required, and lifted by crane to span the supporting walls.

The specification further states that "although the panels 10 have been described with particular reference to their application as floor panels, they can also be used as wall panels."

STATEMENT OF GROUNDS AND PARTICULARS

The grounds for opposition identified in the statement are that the claimed invention:

1. is not novel,

2. lacks an inventive step and,

3. is not a manner of new manufacture, and that

4. the complete specification does not comply with section 40.

In essence the statement provides the following particulars in support of grounds (i)-(iii):

The manufacture and installation by the opponent in the Victorian Operative Bricklayers Society Building, Barry Street Carlton, Victoria in 1987-8 (herein after referred to as V.O.B.S. Building) of stair landings and stair treads composed of prefabricated brick panels.

The manufacture and installation in buildings in Australia of prefabricated wall panels composed of courses of blocks, including by the opponent in the building identified above.

A variety of publications, including patent specifications, in Australia of documents describing and illustrating building panels composed of courses of blocks with reinforcing members extending through aligned holes from one edge to an opposite edge.

THE EVIDENCE

The written submissions provided by Mr Grant did not reiterate or comment at length on all the grounds of opposition. More particularly attention was primarily drawn to the nature and the relevance of the publications and activities of the opponent in relation to the construction of the V.O.B.S. Building.

Evidence in Support

The evidence filed in support of the opposition consists of statutory declarations by:

• John O'Connor McCabe with Exhibit JMcC-1 - a photograph of a brick stairtread located at Barrier's own premises.

• Michael John Grant (patent attorney for Barrier) with Exhibits MJG 1-8 - these relate to inter alia, a number of patent specifications, drawings of a stair tread panel, a promotional pamphlet having photographs of the V.O.B.S Building, and photographs of a portion of a stairway of the V.O.B.S. Building taken by Mr Grant.

Mr McCabe is the Managing Director and owner of Barrier since 1966.  Mr McCabe has worked in the building industry since 1958 as a bricklayer, building contractor (both domestic and commercial) and as a manger of a contruction company where he has had involvment in training, supervision, marketing and tendering for the business.  The company deals primarily in the construction of commercial buildings.  Mr McCabe states "As a result of nearly 40 years continuous practical experience…I am familiar with the general working knowledge and industry practices particularly in working with bricks, building blocks and panels or building components using building bricks and blocks".

Much of Mr McCabe's declaration addressess the Exhibits of Mr Grant's declaration, consequently I will refer to the declarations made by Mr McCabe where appropriate in my decision without reviewing his declaration here.

Similarly I will refer to Mr Grant's declarations where appropriate rather than reviewing his declaration at present.

DECISION

Before addressing the issue of lack of novelty as raised in the written submissions, I first need to construe the claims and establish the scope of the monopoly being sought by the claims.  Concentrating on independent claim 1, I find upon reading the claim as a whole, the claim is directed to a "Prefabricated floor panel" having the following essential features:

• A plurality of juxtaposed courses of blocks

• At least some blocks having through holes

• At least one elongate reinforcing member which extends in aligned through holes in the blocks, transversely to the courses

• The elongate reinforcing member extending substantially from one edge of the panel to the opposite edge.

I note the claim is directed to an article per se.  The "floor panel" designation merely indicates the intended use of the article.  It is a long established principle that words of intended use impose a requirement of suitability for that use, but do not limit the article to that use.  Consequently, the present article must be suitable for use as a floor panel.  However this does not distinguish it from a panel of the same construction intended for use as a wall panel.  In this context the present panel could be put to a different use (e.g. as a wall panel), provided it is suitable for use as a floor panel without any modification.

In reading the specification, there appears to be no specific design parameters or constructional requirements of the panel to distinguish it exclusively as a floor panel.  The panel defined by the claim appears equally suitable for use as a prefabricated wall panel, for example.  Indeed as noted earlier, the specification at page 6 highlights the fact that the "floor" panels can also be used as wall panels.

Furthermore, as a result of the panel being considered at least suitable as a floor panel, the phrase "one elongate reinforcing member …which in use extends horizontally" places a limitation only on the orientation of the reinforcing member when the panel is used as a floor panel, and not necessarily when used for example as a wall panel where the member would extend vertically.  As mentioned earlier, the specification itself states the panel may be constructed vertically, resulting in the reinforcing member extending vertically in the completed panel, until such time it is laid horizontally for use as a floor.  Consequently I believe the reinforcing member need only extend through the aligned holes transverse to the courses as the orientation of the reinforcing member is inherently dependent on the use of the panel.

NOVELTY

The basic test for anticipation is the " reverse infringement test" as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) 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."

Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.

A more recent statement in relation to novelty is given in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:

"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms.  The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.  What ever is essential to the invention must be read out of or gleaned from the prior publications."

In reviewing the material submitted at the hearing I am able to divide the evidence provided with respect to novelty in two and deal with each in turn.

The V.B.O.S Building evidence

Firstly, I shall consider the evidence in respect to the V.B.O.S Building etc.,provided by the declarations of Messrs Grant and McCabe, and similarly the evidence in respect of the Barrier premises. 

Exhibit MJG-3: relates to a copy of two sheets of technical drawings identified as "landing panel, connection details" and "panel P.21, stair tread panel" respectively, drawn by Bill Gamble Project Consultants, and labelled Barrier Engineering Construction Co Pty Ltd.  The drawings are dated March 1987.  Mr McCabe states the drawings "were prepared for the tender process for the V.S.O.B. Building and were also used in the construction phase of the building project".  Mr McCabe asserts that once completed "the panel was to be ready for horizontal installation as a stairway landing panel as shown in the same drawing at the bottom right labelled "landing panel connection detail".  He further states that at least one copy of the drawings was provided by Barrier to the Civil and Civic Project Manager on the V.S.O.B. building site without restriction of disclosure or use, as is common practice.  As there is no evidence to the contrary, I believe this document clearly forms part of the prior art base, being publicly available without any obligation of confidence.

Looking at each of these drawings in turn, the drawing labelled "Landing Panel" shows a plurality of courses of blocks in the plan view.  In elevation, a single row of blocks is depicted having a black dot within a rectangular interior space of several of the blocks.  Adjacent these spaces are the characters "S12".  A skilled addressee when construing this drawing would immediately recognise the dot and characters to represent a 12mm diameter reinforcing rod running through the entire length of the panel at those particular locations, even though the drawing does not explicitly depict these rods in the plan view.  It is understood in the art that such rods are inherently required to run the entire length of a panel if the panel has any load bearing surface, and this detail is omitted for clarity of drawing.

Indeed this is borne out by Mr McCabe in his declaration where he states: "The characters "S12" and the black dots shown within the rectangular holes in the bricks indicate that reinforcing bars of 12mm diameter were provided extending through the aligned holes in successive courses of bricks throughout the entire height of the landing panel.  The 12mm reinforcing bars were totally embedded in grout so that when the panel was completed and the grout had set, the 12mm bars and surrounding grout effectively formed reinforcing columns extending throughout the entire height of the panel."  I note Mr McCabe further states the landing panels are produced in a vertical position, thus the rods run through the "height" of the panel, until they are completed and laid horizontally as a stair landing panel, where the rods would lie horizontally. 

In summary, I find the essential features of claim 1 as I have listed them above may be readily identified in the drawings of the landing panel.  Furthermore it is apparent from the drawings the landing panel is part of a stair landing panel which is used as a floor after a flight of stairs.  Hence I believe the citation satisfies the reverse infringement test.

The "stair tread" drawings depict plan and elevation views of a row of single bricks juxtaposed one another, having two reinforcing rods "S12" running transverse substantially from one edge of the stair tread to the opposite.  The tread is mounted via metal plates at two points to load bearing beams, to create a single stair.  Mr Grant submits that this "row" of bricks is in fact a plurality of courses of brick, each "course" comprising a single brick.  I do not subscribe to this view.  I am guided by the "Glossary of Building Terms" fourth edition, published by the National Committee on Rationalised Building Standards Australia and Suppliers Index Pty Ltd January 1994., which defines a course as "A continuous horizontal layer of bricks, blocks, stones or other building units in a wall of uniform height and bonded together with mortar and forming the masonry structure". I note also that Mr McCabe states "I would not use or interpret the word "course" to refer to a single brick or block so that the Barrier stair treads would not in my definition of "course" constitute a "panel comprising a plurality of juxtaposed courses of blocks..".  Hence, I am guided to the conclusion that a course of bricks or blocks at least comprises a plurality of blocks.  As a result I do not consider this stair tread relevant as it does not exhibit a plurality of juxtaposed courses of blocks.  Consequently I find the panel defined in claim 1 novel over that disclosed in the stair tread drawing per se as there is no "plurality of juxtaposed courses of blocks" as defined, resulting in the reverse infringement test not being met.

I find it appropriate at this stage to comment on the written submissions made by Mr Grant in respect of Exhibit JMcC-1.  (A photograph of a completed stair tread, built to the specifications set out in the "stair tread"drawing of Exhibit MJG-3.  Mr McCabe states the stair tread has been in use at the Barrier premises since prior to 1993.)  Mr Grant contends that the construction of prefabricated panels from bricks or blocks having aligned holes which receive reinforcing rods was part of the common general knowledge in the industry at the time of the stair treads.  Consequently the use of the opponent's stair tread coupled with this common general knowledge of manufacturing building panels using multiple blocks would in the opponent's opinion lead to the present claims failing to define a novel invention.  I do not believe this to be the case.  Whilst it is legitimate to read the citation in the light of common general knowledge (Acme Bedstead v Newlands 58 CLR 689 at page 704), it is not permissible to add common general knowledge to the document in determining novelty. In this instance it may be that a skilled addressee could read in the use of profiled blocks in the stair tread to avoid slipping for example, as common general knowledge. However to change the overall construction of the single row stair tread to a multi course panel of blocks constitutes more than a mere reading in of the common knowledge of the art. Thus I do not believe the photograph of Exhibit JMcC1 anticipates the claimed invention as implied by the submissions.

Patent documents

Secondly, I shall consider the evidence provided by various patent documents forming part of the prior art base.  These are Exhibits MJG-6, MJG-7, and MJG-8 of the Grant declaration, respectively.

AU 579 788 Troiani

This specification discloses a prefabricated building panel comprising a plurality of top and bottom bond beams and a plurality of courses of block elements with mortar filled joints extending between the top and bottom beams.  These beams extend across substantially the whole width of the panel.  The bond beams and the block elements are fired clay blocks.  The panel further comprises a plurality of spaced apart tensioning members extending between the top and bottom beam members and passing through apertures in the block elements.  The tensioning members may be steel rods or other elongate materials of high tensile strength, which may be tensioned at the bond beam members via a nut and bearing plate arrangement, as exemplified in Figure 4.  I note the top and bottom beams are building blocks, which have a longitudinal channel running therethrough.  It is within this channel that the reinforcing rods are tensioned, rather than at the extreme edge of the block.  In my opinion following the purposive approach to construction as laid down in CatnicComponents Ltd v Hill and Smith, (1982) RPC 183 having the length of the reinforcing rods such that the respective ends finish in the channel of each the top and bottom beams satisfies the "extends…transversely…substantially from one edge of the panel to the opposite edge" feature of the claim. With this in mind I find claim 1 is not novel when the reverse infringement test is applied.

US 4 429 499 Kato

This document describes a reinforced brick assembly.  The structure of the assembly comprises "a plurality of perforated brick units, each of which has a plurality of passable holes for inserting vertical steel bars for reinforcement…The plurality of perforated brick units are piled upon one another in a panel form, and the vertical steel bars are inserted into the passable holes for reinforcement of adjacent upper and lower brick unit.  Horizontal steel bars for reinforcement are inserted into joint portions between adjacent left and right brick units".  In addition, Figure 6 of the document clearly shows an embodiment wherein the reinforcement rods are pre-tensioned rods which extend substantially from one edge of the panel to the opposite edge.  I believe the disclosure of the horizontal steel bars inserted between "adjacent left and right brick units" necessarily implies there is a plurality of courses of bricks.  This is further substantiated by figure 4 of the document, which is a transverse sectional view of an example of a reinforced brick assembly.  The figure shows two adjacent brick units with a cross section of the respective reinforcing rods through each brick.  Consequently the essential features of the claimed invention as listed are readily identified in the Kato document, rendering the claim not novel when the reverse infringement test is applied.

AU 653 233 Barrier Engineering & Construction Co. Pty, Ltd.

This patent document discloses a prefabricated structural component comprising a plurality of courses of building blocks.  The structural component further including a transverse reinforcing rod extending transverse to the lines of the courses of blocks and through aligned holes in the blocks of the courses.  The transverse rods being contained within a passage defined by the aligned holes which are filled with grout so as to form a reinforcing column.  The courses are preferably laid substantially horizontally so that the transverse reinforcing rod extends substantially upright throughout substantially the entire height of the structural component.  Again the essential features of the invention as defined in claim 1 are readily identified in this patent document, rendering the claim not novel when applying the reverse infringement test.

The dependent claims

I will now address the issues raised in the opponent's submissions with respect to the dependent claims.  In particular the alleged want of novelty and lack of inventive step of these claims.

The features of claims 2, 4, 5, 6, and 7 are clearly not novel and each may be readily found in at least one of the respective patent documents above.  For example filling the aligned through holes with grout as defined in claim 5 is clearly disclosed in the Barrier patent document.

The invention defined by claim 9 is not novel over the figure shown in the "Landing Panel connection detail" drawing of Exhibit MJG-3, which depicts the prefabricated panel in a generally horizontal orientation in an elevated position upon two support beams.  Clearly the method of claim 9 would be used in order for the panel to be placed in such a position as shown in the drawing, rendering the claim not novel.

In determining the novelty or otherwise of a claim, it is legitimate for me to read any single document in the light of the relevant common general knowledge at the date of publication of that document, Acme Bedstead, supra.

With this in mind, I believe claim 3 of the present specification defines a feature that was merely common general knowledge and a well established technique in the building industry in Australia at the relevant priority dates of the prior art submitted above. Having an exposed surface of a block which is 'keyed" as defined, I consider to be no more than common general knowledge.  There is nothing abstruse in the principles of using a keyed surface in order to increase the surface area available to a bonding agent to increase the bond.  Such a technique has been well known in many industries and technologies including the building industry.  I further have no reason to disagree with Mr McCabe's submission that such keyed building blocks have been well known for a period of time well before the publication dates in question.  Consequently to my mind there is nothing novel in a skilled addressee selecting keyed building blocks over any other types of building blocks in constructing a prefabricated building panel.  Hence claim 3 fails the reverse infringement test in respect of any of the above patent documents, when read in the light of common general knowledge at their respective publication dates.

INVENTIVE STEP

The only claims I will consider under inventive step are those claims found to be novel.  That is, claims 8, 10, and 11, which are dependent on earlier claims found to be not novel.

Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:

(a) common general knowledge in the art; or

(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

The common general knowledge relevant to the question of obviousness was described by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:

"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."

In the light of the evidence of McCabe and the absence of any evidence to the contrary, appended claims 8, 10, and 11 amount to no more than what is common general knowledge in the field and lack an inventive step.  I agree with the McCabe declaration with respect to the feature of casting a layer of concrete on the upper side of the panel as defined in claims 8 and 10.  In particular, I accept the technique of forming floors by pouring concrete onto panels which remain in position after the concrete has set and therefore become part of the floor is a well known technique in Australia.  I further note the technique of applying a layer of concrete to provide a level "working surface" is similarly a well known one.  With respect to claim 11, the technique of rendering a surface, be it for weather-proofing, aesthetic affect or insulation and so on, as defined in the claim is a well practised one and would be part of the background knowledge of a skilled worker in the building industry, even to someone without substantial experience in the particular field of prefabricated panels.  Consequently the features provided in these claims add no more than what is readily understood and regarded as relevant common general knowledge by a skilled person in the art.

CONCLUSION

I find the claimed invention is directed to an article per se.  The term "floor panel" merely indicates the intended use, and a requirement of suitability for that use, but not limited solely thereto.  The invention is not distinguished from other panels of the same construction having identical features intended for a different use but which are similarly suitable for use as a floor panel, particularly as the present specification itself states the floor panel can be used as a wall panel.  The opponent has provided evidence which challenges the validity of the opposed specification on the grounds of lack of novelty and inventive step.  I find the invention as defined is not novel over the technical drawings of a stair landing panel and the prior art patent documents provided by the opponent describing various prefabricated wall building panels having the same essential features as the invention.

The invention defined by the dependent claims are clearly not novel in the light of the documents presented or lacks an inventive step over what is considered common general knowledge in the art.

Furthermore, I am unable to identify any patentable subject matter disclosed in the specification that could form the subject of a valid claim.  I note that even if the claims were to be amended such that they are strictly limited to their intended use, they would not be considered novel or inventive over the stair tread landing panel disclosure.  Accordingly I refuse the application.

COSTS

In accordance with the principle that costs follow the event I award costs against the applicant, Wide Bay Brickworks Pty Ltd.

Lars Koch
Delegate of the Commissioner of Patents

Patent attorneys for the opponent :  Patent Attorney Services, Box Hill