William Bailey v R.D. Werner & Co., Inc

[1988] APO 25

In the Matter of the Patents Act 1952 - and In the Matter of Application No. 547250 for a Patent by WILLIAX BAILEY - and In the Matter of Opposition thereto under Section 59 by R.D. WERNER & CO. INC.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

WILLIAM BAILEY on 22 April, 1980 lodged an application entitled "Improved Hydraulic Circuit Means", which was accompanied by a provisional specification. The complete specification was lodged on 22 April, 1981. Advertisement of acceptance of that application appeared in the official Journal of 10 October, 1985.

R.D. WERNER & CO., INC. (WERNER) lodged notice of opposition on 10 January, 1986 and completed service of its evidence in support by 12 December, 1986.. After a number of extensions of time, BAILEY, through his patent attorneys G.R. Cullen & Co., indicated on 11 December, 1987 that he did not intend to serve evidence in answer. The matter came to hearing on'25 May, 1988 in Canberra. Mrs. D. Mullins of Counsel assisted by Mr. D. Fetherston, solicitor appeared for BAILEY and Mr. B. Caine of Counsel assisted by Mr. L. Dyson, Patent Attorney of Edwd. Waters & Sons appeared for WERNER.

Grounds of Opposition

Whilst the notice of opposition lists most of the grounds available under section 59, at the hearing argument was restricted to those grounds concerned with prior claiming, want of novelty and prior publication. Nevertheless Mr. Caine indicated that the opponent formally sought to rely on all grounds stated in the notice.

The Specification

The specification commences thus:

"THIS INVENTION relates to apparatus for performing metal working operations and more particularly to apparatus for performing swaging and blanking operations in the assembly of ladder type frames."

Reference is then made to Australian Patent No. 527037 in the name of the present applicant which discloses "an improved step ladder and method of assembly of same". This method is stated to comprise:

"the steps of forcing an end portion of the step of the ladder through an associated stile to form an aperture therein and swaging the protruding end portion of said step about said stile such that the step is securely connected to the stile."

The object of the present invention is to provide an apparatus which enables ladder type frames to be assembled in an efficient and rapid manner.

Then follows a consistory statement in similar terms to claim 1 and description of the invention with reference to two drawings. There are eight claims contained in the accepted specification. Claims 1 and 2 read as follows:

"1. Apparatus for assembling frames of the type having a pair of side members and a plurality of transverse members extending therebetween, said apparatus including a carriage assembly for supporting said side members and transverse members in an operative position, said carriage assembly being adapted to advance said operatively positioned members along a path, two pairs of hydraulic rams longitudinally spaced along said path, the rams of each said pair being disposed on opposite sides of said path and being provided with operating heads, the operating heads of the first said pair of rams including blanking dies, said dies being movable inwardly by the first said pair of rams to engage said side members and cause the opposite end portions of said transverse members to be forced therethrough, the second said pair of rams being provided with swaging dies, said swaging dies being movable by the second said pair of rams into engagement with the respective said end portions of said transverse members to swage said end portions about the respective side members.

2. Apparatus according to claim 1, wherein said pairs of hydraulic rams are longitudinally spaced apart a distance equal to the distance between respective transverse members and wherein said carriage assembly is adapted to advance said members stepwise past said rams, whereby the opposite end portions of each said transverse member are successively operably positioned in alignment with said blanking dies and said swaging dies."

There was no argument before me at the hearing concerning the description of the invention or the definition of that invention in the claims. The features of the apparatus of the invention are readily discernible from the definition in claim 1. Rather than itemise each feature, I propose to identify those features which were the centre of submissions for novelty purposes. Those features of the apparatus are:

A - a carriage assembly for supporting said side members and transverse members in an operative position, and being adapted to advance said members along a path;

B - two pairs of hydraulic rams longitudinally spaced along said path, with the rams of each pair disposed on opposite sides of said path;

C - a first of said pair of rams having operating heads including blanking dies;

D - the second of said pair of rams having operating heads in the form of swaging dies.

The Evidence

The only evidence adduced in this opposition has been lodged on behalf of the opponent. This comprises a declaration by Mr. Dyson, a Registered Patent Attorney, who annexes copies of the opposed Specification and that of Australian specification 527037 at acceptance, and a declaration by Kenneth Peter Walkerden.

Mr. Walkerden holds a Bachelor of Science degree in Electrical Engineering. His present position is that of Director of Manufacturing at Oldfields Pty. Ltd. at Campsie, N.S.W., having been employed by that company for a total of 7 years at the time of making his declaration. Prior to joining his present company he had 12 years employment with Lincoln Electric Company as an Engineer and Chief Engineer being involved in the electrical and mechanical design of welding machinery and other production equipment. Since joining his present employer in 1980 (the exact date is not given) he has travelled overseas on a regular basis "studying new engineering developments in the manufacture of plant equipment, including metal working machinery, forming machinery, assembly machinery and all forms of process equipment". He declares that he has "extensive knowledge in the area of plant and processing machinery" as a result of his employment history "particularly since joining my present Company in 1980".

In his declaration Mr. Walkerden somewhat briefly refers to Australian specification 527037 and its disclosure, drawing particular attention to the specification text at various references and to the features there mentioned. He also refers somewhat briefly to the description and claims of the opposed specification.

Mrs. Mullins for the patent applicant, formally objected to part of paragraph 22 and all of paragraph 23 of Mr. Walkerden's declaration. As a Tribunal, I accept the evidence into the proceedings but I will have due regard to the specific comments in relation thereto by Mrs. Mullins when considering the relevance of this evidence to the points at issue.

Prior Publication, Novelty

(i) Prior specification AU 527037

The opponent's attack on the opposed application on the grounds of prior publication and lack of novelty are based on AU Patent specification 527037. This specification, which is referred to on page 2 of the opposed specification, was laid open to public inspection on 20 March, 1980, i.e. before the earliest priority date of claims of the opposed specification, viz. 22 April, 1980.

It is relevant to observe that the description of specification AU 527037 that needs to be considered is that description which became open to public inspection (opi) on 20 March, 1980 and not the description in the specification as accepted on 10 February, 1983 : the latter was put in evidence and referred to by Mr. Walkerden. There are some differences between these two texts although for present purposes those differences are not material. In the following two paragraphs, the page references are to those of the accepted specification, the text at these references being essentially identical to that in the opi specification.

Specification AU 527037 is directed to a method of forming a joint between a ladder step and a ladder stile and to a method of assembling ladders. One method disclosed enables the end of a step to be punched through the stile and thereafter the end of the step protruding through the stile is swaged to fix the step to the stile. To effect this method, the specification specifically discloses in one embodiment, the use of a cooperating blanking die to enable a step to be punched through the stile, followed by the removal of the blanking die and operatively positioning in its place a swaging die to engage the step end and thus swage it to the stile (page 6 of the description). In a preferred arrangement, all joints between the ladder steps and the stiles can be formed in one operation, and for this end clamping means are arranged along a jig assembly carrying the ladder steps, wherein the clamping means support the stiles and move same inwards into engagement with the respective step ends. This arrangement is further described in these terms on page 7:

"Preferably, the clamping means also carries inter- changeable blanking and swaging dies for respective simultaneous cooperation with each respective end of each step 10. The blanking die is disposed in its operative position during initial clamping operations and the oppositely arranged dies are forced inwards to cause the step ends to blank out the stiles 11. Thereafter, the blanking dies are moved to their inoperative position and the swaging dies move into alignment with the protruding step ends. They are operated simultaneously ... to swage-connect the protruding ends about the stiles."

AU 527037 does not include in its accompanying drawings any representations of the clamping apparatus referred to in the descriptive text.

Specification AU 527037, in a paragraph immediately following the above quoted passage, refers to the strength of the joint formed by the process of the invention. The next paragraph of the specification, at page 8, refers to particular means to form the swage connections in these terms:

"Preferably, the swage connections between the ends of each step 10 and the stiles 11 are formed simultaneously in swaging apparatus of the type described in Australian Patent Application No. 35680/78 [now 5172001, and for this purpose, the steps and stiles are adapted to be operatively disposed for indexed advancement through the swaging apparatus whereby the swage connections at successive steps are made."

The immediately following paragraph indicates that the indexed advancement can be by way of a frame which supports the ladder components and which is moved in an indexed manner past the swaging head assembly. The swaging apparatus described with reference to drawings in AU 517200 comprises a pair of opposed hydraulic ram assemblies each carrying a swaging die which in cooperation with respective back stop members simultaneously swage opposite ends of a ladder step to the respective stiles.

The reference to the swaging apparatus of AU 517200 does not directly follow on from the preceding description in the specification which specifically concerns the use of clamping means carrying interchangeable blanking and swaging dies. Furthermore, in its reference to this particular swaging apparatus, the specification makes no mention of how the steps and stiles may have been prepared (e.g. how the stiles are apertured to fit the step ends) to enable the swaging to be effected.

(ii) The Law on Anticipation

On the requirements for prior publication based on a published document, Mr. Caine referred me to two authorities.

Firstly, in Hill v. Evans (1862) ER 1195 at 1199 it was said:

"I apprehend the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. ... the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a patent, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use."

Secondly, given the comments of Mr. Justice Starke in Acme Bedstead Co. v. Newlands Brothers Ltd. (1937) 58 CLR 659 at 704, Mr. Caine submitted that it was legitimate to read and interpret the prior specification against the backdrop of the common general knowledge.

On the question of novelty, I was referred to the cases of Griffin v. Isaacs (1942) 12 AOJP 739, and Dennison Manufacturing Co. v. Monarch Marking Systems Inc. 1 IPR 431.

In my view, the comments of the Court of Appeal in General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. [19721 RPC 457 at 485, are also apposite:

"To determine whether a patentee's claim has been anticipated by an earlier publication it is necessary to compare the earlier publication with the patentee's claim. The earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances which then existed, and without regard to subsequent events.

The earlier publication and the patentee's claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date."

Regarding expert evidence, it is worth noting the comments of Lord Tomlin in British Celanese Ltd. v. Courtaulds Ltd. (1935) 52 RPC 171 at 196:

"The area of territory in which in cases of this kind an expert witness may legitimately move is not doubtful. He is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. ... He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him."

(iii) Prior Publication

In order to decide whether the claimed invention has been prior published, it is first necessary to construe the prior document AU 527037 to ascertain its disclosure. As the authorities indicate, this is a function for the court or tribunal to determine albeit with the benefit of any pertinent expert evidence. In the present case, the earlier publication AU 527037 must, for prior publication purposes, be construed as of its publication date viz. 20 March, 1980.

In this case the evidence of Mr. Walkerden is of little assistance in ascertaining what AU 527037 disclosed to a reader skilled in the art at its publication date. Whilst Mr. Walkerden has no admitted involvement in ladder construction, he does have experience in engineering production equipment and associated processing - as such, I consider Mr. Walkerden to be a relevant addressee of the prior specification. But apart from drawing attention to certain passages in the description of specification 527037, Mr. Walkerden provides no further comment as to what those passages taught or suggested to him. Furthermore Mr. Walkerden makes no pronouncement concerning matters of common general knowledge in the art as of 20 March, 1980. I must necessarily disregard Mr. Walkerden's "opinion" expressed in his paragraph 23 because there is no basis for his conclusion in his evidence.

I am therefore placed in the position of construing the prior specification as of March 1980 without the benefit of any relevant expert evidence. In this exercise, it is important not to use hindsight, and it is especially important not to evaluate the disclosure of the prior document in the light of information obtained from the specification in suit.

I have already referred to the specific disclosures of AU 527037. To me the disclosure of 527037 at its publication date suggests the following arrangements of apparatus to perform the method described therein:

(a) A pair of opposed clamping means (e.g. hydraulic rams) which can be fitted with either blanking dies or swaging dies to enable the successive steps of punching the ends of a ladder step through the stiles and swaging of those ends to the stiles. I construe that the respective dies can be operatively fitted to the rams with the other 'dies completely removed therefrom; alternatively a blanking die and a swaging die can be supported on each ram arranged to be respectively positioned in an operative position.

(b) A plurality of opposed clamping means (hydraulic rams) arranged along a jig assembly, the jig assembly supporting a corresponding plurality of ladder steps.

The rams support and move the ladder stiles into engagement with the steps and each carry interchangeable blanking and swaging dies to respectively achieve either the blanking or swaging actions for each ladder step in one operation. I construe the fitment of the dies to the rams to be as for arrangement (a).

(c) A clamping apparatus of the type described in AU 517200 having a pair of opposed hydraulic rams which can be fitted with either blanking dies or swaging dies to enable the successive steps of punching the ends of a ladder step through the stiles and swaging of those ends to the stiles. The apparatus also includes a movable frame to support the ladder components and which can be moved in an indexed manner past the rams thus presenting each ladder step in turn to the rams for the blanking and swaging actions.

Arrangements (a) and (b) follow directly from the specific disclosures at pages 5 to 7 of AU 527037, and arrangement (c) from the disclosure on page 8 referring to the apparatus of AU 517200 when considered in the context of the surrounding description which refers to the clamping means and interchangeable dies therefor.

Given the disclosure of the prior specification 527037 as indicated, there is no disclosure of apparatus having the features of claim 1, namely B, C and D as previously itemised. Whilst there is disclosure of a support frame indexable past clamping apparatus, there is no disclosure of two pairs of rams longitudinally spaced along a path traversed by the support frame or movable carriage, the ram pairs carrying, respectively, blanking and swaging dies. Therefore, in my view, the prior specification does not provide knowledge equal to that required to devise the invention in suit thus the invention claimed has not been prior published.

(iv) Novelty

I have identified the differences between the claimed invention and the disclosure of the prior specification in the preceding paragraph. Mr. Caine for the opponent submitted that any such differences were in the category of mere workshop improvements, developments well within the range of the skill and knowledge of a competent workman at the time, and as such the invention could not qualify as being novel or inventive. To consider this submission and the novelty question, an assessment is needed of the knowledge possessed by the competent workman.

As the publication of the prior specification preceded the earliest priority of the opposed claims by only a matter of weeks, the knowledge of a competent workman at the priority date can be taken, I believe, as being equivalent to that at the publication date of AU 527037. However what that knowledge comprises has simply not been put before me in evidence - I have previously mentioned deficiencies concerning the evidence of Mr. Walkerden. Without evidence as to the knowledge of competent workmen in the art at the priority date and what AU 527037 disclosed to them, I am unable to conclude that the differences exhibited by the present invention were developments any competent workman would have arrived at. Additionally, as there is no evidence to establish that no ingenuity would have been needed to arrive at the present invention, I find the opposition ground of lack of novelty not established.

Obviousness

Consideration of the question of obviousness of the claimed invention must be made against the background of the proven common general knowledge in the art in Australia at the priority date. Given the absence of evidence to establish such common general knowledge, I am unable to decide this question, and accordingly I must reject the allegation of obviousness of the claimed invention.

Other opposition grounds

No argument was advanced at the hearing, nor is there evidence before me, concerning the other grounds of opposition listed in the notice and relied on by the opponent in this opposition. I find nothing to support those grounds of opposition and I formally dismiss them.

Summary

I have found that the opponent has failed in its opposition on all grounds upon which it relies. I therefore direct that the application proceed to grant subject of course to any appeal which may be lodged.

I award costs against the opponent.

(T.R. BRUHN)

Supervising Examiner of Patents

23 AUG 1988

Patent Attorneys for the applicant : G.R. Cullen & Co. Patent Attorneys for the opponent : Edwd. Waters & Sons