(ii) involves an innovative step;
That is the same in structure as s 18(1) dealing with standard patents and an inventive step.
47 It is submitted for Dura-Post that there is a difference between the invention, on the one hand, and the innovative step, on the other, based upon the language of s 18(1A) and s 7(4) as the invention has to "involve" an innovative step. Reference was made to what was said by the Full Court in Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220, (2005) 224 ALR 168, (2005) 67 IPR 230 at [159] in the context of inventive step:
The inventive step is not necessarily coextensive with the invention as claimed. The requirement is that the invention, so far as claimed in the claims, involved an inventive step. It was not an error to examine the inventive step by reference to the specification and the purposes or object of the invention, a system capable of providing continuous on-line production. The primary judge accepted that the inventive idea as claimed by Gambro lay in part in the conception of the improvement in existing machines to implement on-line production of liquid bicarbonate concentrate solution.
(Original emphasis.)
It is submitted that the language of s 7(2) and s 7(4) cannot be relevantly distinguished.
48 It is then submitted that it is necessary to ascertain what the inventive step or advance in the art is, which must be involved in the invention as claimed. It is submitted that, when read in the light of common general knowledge, persons skilled in the art would find the advance in the art being the use of sheet spring steel in making roadside posts that possessed the feature of being elastically bendable through 90° from an unbent state about the transverse axis. This is represented in the combination of features 1-8 which represent the broadest claim of the patents as claim 1 of Patent No 2 and which is common to all of the claims and in each of the patents. It was submitted that that approach was endorsed by the High Court in Lockwood Security Products Pty Ltd 217 CLR 274 at [36], [60]-[65].
49 It was then submitted that all combinations containing additional integers beyond integers 1-8 served only to narrow the scope of monopoly claimed but, in the light of the common general knowledge, did not alter the nature of the advance against which the prior art in s 7(5) must be tested. Put another way, the "working of the invention", is that of the broadest form of the invention consistently with what was said by Dixon CJ in Griffin v Isaacs (1938) 12 ALJR 169, (1938) 1B IPR 619 at 624. It was submitted that none of the narrowing integers differed from what was already known in a way that is not merely superficial or peripheral to the invention.
50 I do not agree that s 7(4) should be construed in that way. It is fundamentally inconsistent with approaching the issue claim by claim as required by the language of the sections and as well entrenched in relation to judgment of inventive merit (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 ALR 202, (2007) 81 ALJR 1070, (2007) 72 IPR 447, at [148]-[149]; Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [18]-[21]).
51 The inventive step may not be coterminous with the invention as claimed in each claim in the sense that the inventive step is the difference between the invention as claimed and that which it is being compared with. On the other hand, the word "involve" does not necessarily mean that the two are not coterminous. After all, the root of involve is "involvere" - to roll in or on, enwrap, involve (The Macquarie Dictionary (3rd edn, The Macquarie Library Pty Ltd, 1998).
52 There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention. It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so. Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached. If there is no difference between the claimed invention and the prior art base then, of course, the claimed invention is not novel.
53 The phrase "no substantial contribution to the working of the invention" involves quite a different kind of judgment from that involved in determining whether there is an inventive step. Obviousness does not come into the issue. The idea behind it seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious. Indeed, the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.
54 There is a question as to the proper construction of "substantial" in this context. In some situations it may mean "great" or "weighty"; elsewhere it may mean "more than insubstantial" or "of substance" (for example, there is debate in the fields of both trade practices and copyright).
55 The provenance of the language is summarised in Dura-Post's submissions. The Report of the Advisory Council on Intellectual Property (ACIP) recommended that:
The inventive level for innovation patents should be lower than for standard patents. The test for this inventive level should be a modified form of the expanded novelty test set out in Griffin v Isaacs. The test would be worded something along the lines of: an innovation patent should not be granted if the innovation is not novel; if an innovation varies from a previously publicly available article, product or process, only in ways which make no substantial contribution to the effect of the product or working of the article or process, then it cannot be considered to be novel.
56 In its formal response to the ACIP report [Government response to the Recommendations of the Advisory Council on Industrial Property "review of the Petty Patent system"] the government nominally accepted this proposal and agreed "in principle" that the test be a modified form of the novelty test set out in Griffin v Isaacs (1938) 1B IPR 619, although there were ultimately significant differences between the wording of s 7(4) and that proposed by ACIP. In Griffin, a novelty case, the High Court there found that whilst an item of prior art did not possess all of the integers of the claims of the patent in suit, still the invention was not novel [the so-called "doctrine" in Griffin v Isaacs was the subject of detailed consideration by Waddell J in Windsurfing International inc v Petit [1984] 2 NSWLR 545 at 564 and in the decisions of the Full Court of the Federal Court in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1988) 25 FCR 565 and Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545 at 564]. Dixon CJ said (at 624):
Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty ...
57 The reference to what was said in Griffin12 ALJR 169, 1B IPR 619 is somewhat confusing. That was an appeal to the High Court from a decision of the Commissioner of Patents in opposition proceedings refusing to accept the applicant's application for the grant of letters patent on the ground of lack of novelty. The application could not be refused on the ground of lack of subject matter or obviousness as the law then stood. The purported invention related to improvements in the means for supporting trousers and skirts by a method which included the use of a band made from elastic and non-elastic material fitted in conjunction with the waist band. The opponent had made public a trouser top which was claimed to be similar to the applicant's trouser top. There were differences between the opponent's trouser top and the trouser top claimed in the patent application. The High Court dismissed the appeal. Latham CJ referred to there not being established "any substantial difference between the two waist bands" (Griffin12 ALJR 169, 1B IPR 619 at 621). Starke J said (Griffin12 ALJR 169, 1B IPR 619 at 622):
Nothing is disclosed that is not already known to or well within the range of knowledge of competent workmen in the trade of manufacturing trousers.
The passage from Dixon J has been set out above. McTiernan J said:
Although the applicant's counsel made the best possible use of all formal differences between the opponents construction and the alleged invention, I do not think the latter is a manner of manufacture which is substantially different.
58 That decision has been discussed at some length in later cases in this Court, starting with Dennison Manufacturing Co v Monarch Marking Systems Inc (1983) 66 ALR 265 per Fox J at 274 and Franki J at 284; then in RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 per Lockhart J at 580-581 and 583, and Gummow J (with whom Jenkinson J agreed) at 589-591 and 601-602; and then in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 per Lockhart J (indirectly) at 517 and Gummow J (indirectly) at 527-528 in dealing with novelty and workshop improvements.
59 These discussions indicate that a wider view of lack of novelty was taken in the High Court prior to the Patents Act 1952 (Cth) than could properly be taken thereafter, at least in relation to appeals from the Commissioner. Be that as it may, the feature of what Dixon J said was the disjunctive nature of the concepts - one was "make no substantial contribution to the working of the thing"; the other was "involve no ingenuity or inventive step". The first alternative has been taken by Parliament virtually verbatim from the judgment. The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.
60 There may also be difficulties in particular cases of applying the phrase "the working of the invention" but it is not necessary to discuss that in the abstract.
61 In my view the provenance of the phrase "make no substantial contribution to the working of the invention" indicates that "substantial" in this context means "real" or "of substance" as contrasted with distinctions without a real difference. That confirms my impression from construction of the words of the section itself.
62 Issue 14: What is the content of common general knowledge? In this case it is not necessary to endeavour to summarise the whole of relevant common general knowledge in Australia at the priority date. It is best to have regard to that question where necessary, in dealing with the particular issues. I can find, however, that use of sheet spring steel was not known for use in connection with roadside posts or analogous uses and that none of the cited patents was part of common general knowledge in Australia at the time. The description of the start of the art in the specifications of the patents in suit gives a good summary of the position. That included the use of PVC material.
63 Issue 15: Does the claimed roadside post involve an innovative step over the use (etc) of the SupaFlex plastic guide post? In my opinion, the answer to that question must be "yes". Each of the claims involves construction by sheet spring steel. The SupaFlex post is plastic. The materials are quite different, although, no doubt, they each have the same objective. As I have endeavoured to explain, the question is not whether flexible sheet steel is better than flexible PVC - it is certainly different. It cannot be seriously argued that the material sheet spring steel does not make a substantial contribution to the working of the roadside post claimed in each claim.
64 Issue 16: Does the claimed roadside post involve an innovative step over the SupaFlex brochure? The answer to this question must again be "yes" for the reasons set out in relation to issue 15.
65 Issue 17: Does the claimed roadside post involve an innovative step over information made publicly available in relation to a prototype steel post developed by Mr Dennison and Mr P Turner in Tasmania? Has Dura-Post established what information was made publicly available by the doing of an act for this purpose?
66 The evidence given by Messrs Denison, P Turner and M Turner in their affidavits concerning the disclosures was not seriously challenged. The substance of that evidence is as follows:
67 Mr Denison was self-employed in farming and building activities but had an interest in engineering and developing devices for which he foresaw a possible use. He gave the following evidence:
I am and have been for many years a friend of Mr Peter Turner, who in 1999 approximately I understood to be the proprietor of the business Dura-Post. In 1999 my residence in Flowery Gully, Tasmania was approximately ten minutes from the manufacturing premises of Dura-Post in Winkleigh, and from time to time I would visit Peter Turner and amongst other things I would discuss with Peter Turner Dura-Post's products and operations in relation to guide posts.
To the best of my current recollection, in or about 1999, while discussing flexible roadside posts with Peter Turner at his premises in Winkleigh, I conceived the idea of constructing a post from flexible steel ("my concept"). At that time, I was aware that Peter Turner had devised posts with flexible joints. I thought that if the post itself was made from steel with sufficient flexibility, a much simpler device could be produced which had no need for joints or moving parts, and which could be installed easily by being driven into the ground. I visualised a post which had the same curved profile as a venetian blind, and which had the same ability as a venetian blind to flex back to its initial position when bent.
When forming my concept in 1999 I was aware of the availability of flexible steel material, which I generally referred to as "spring steel", with a 'memory' that allowed it to spring back to an original shape when bent. I was not aware at that time of any other person producing or developing a post constructed from flexible steel of any kind.
After discussing the concept with Peter Turner, I searched for a suitable sample of flexible steel. The only steel that I found with the degree of flexibility that I considered necessary was a material referred to as "crinoline strip", which I purchased from Steel Mark in Launceston, which was approximately 0.8 to 1.2mm thick. I have conducted a search for the order form or receipt for this material but it appears that I have disposed of these documents.
For approximately a week, Peter Turner and I worked with the material to form a guide post. We used a brake press to form the steel into a curved shape, which gave the post rigidity. We constructed a full sized post which was modelled on and had a width and curved profile which were similar to a PVC post produced by SVP Industries Pty Ltd which was supplied to Dura-Post for sale by Dura Post. Exhibited hereto and marked "JSD1" are true copies of drawings of the post which I have prepared from my recollection of its shape and dimensions.
To the extent that it was developed by Peter Turner and I, the post functioned relatively well. We clamped the post and bent it in various directions at differing angles, including right angles, and observed that the post sprung back to its original position. The post did not spring back as quickly as I would have liked, and had we pursued the project I would have liked to trial the use of other flexible steels of different tempering and thickness to perfect the post's performance.. However, I was content with the essential shape, dimensions and functioning of the post we developed.
I perceived no urgency to proceed to the final stages of the development of the post, and as Peter Turner and I became involved with other matters we did not proceed any further with it.
There were several Dura-Post employees who were working at Peter Turner's manufacturing premises while we were worked on the flexible steel post. There were also a number of people, who I understood to be customers and suppliers, who came and went from the premises while I was there. … I did not treat our activity in relation to the post as secret or confidential, …
Exhibit JSD1 was as follows:
68 Mr Peter Turner established a business known as Dura-Post in November 1996 and sold it in mid-2002 - it was subsequently incorporated and is the respondent in the proceedings. His evidence was as follows:
I have extensive experience in the design and manufacture of metal products. In 1984 I established a business known as Saxon, which employed approximately 50 people and specialised in the production of wood burning heaters. I was primarily involved in research and development for the various components of the heaters.
In November 1996 I established a business which traded as 'Dura-Post' and manufactured and supplied roadside guide posts. I conducted its research, development and production activities. I developed a mild steel rigid roadside guide post and. a plastic guide post with a flexible joint. Dura-Post was also involved in the supply of flexible PVC posts which it purchased from SVP Industries Pty Ltd.
Although I do not recall the exact dates, in or about 1999 or 2000 and well before I sold the Dura-Post business in 2002, I worked on the development of a roadside guide post constricted of a flexible steel. I engaged in this activity after the concept was suggested to me by Mr John Denison, a farmer and friend of mine living in the same area as I.
Mr Denison told me that he had looked at the shape and behaviour of a venetian blind slat and thought that a roadside post could be constructed from a "spring" steel formed to a similar curved shape, which would have the ability to return to its original form when bent. At that time, there was no roadside post on the market which was formed from a "spring steel", and I was not aware of any competitor in the industry that was researching or using that material.
After my discussion with Mr Denison, Mr Denison and I sourced a thin flexible steel from a specialty steel supplier and began experimenting with the material to make a roadside guide post. I cannot recall which supplier we used, but it was likely to have been a business located in Tasmania.
I cut the steel with a guillotine and shaped it with a brake press to create a prototype post which emulated the curved or 'cap' shape of a venetian blind slat. I modelled the post on the dimensions of existing posts of the time and experimented with dimensions for the post to achieve what I considered to be a suitable combination of rigidity and flexibility. The project reached a stage where the essential shape and structure of the body of the post had been formed.
The development of the post was very simple and I do not remember preparing any drawings or specifications in relation to it. I did not complete the post by adding further … design features, such as a depth marker, barb, removal hole, bracket slot or powder coating. …
I remember testing the flexibility of the post by bending it in the workshop, and possibly also by driving it into the ground to test its performance in use. From what I can recall, the post sprang back to its original position when bent. If I had proceeded with the project, it is likely that I would have experimented with other samples of steel to optimise the performance of the post.
I did not consider my development to be confidential or secret. I worked on the prototype over a period of time at Dura-Post's manufacturing warehouse constructed on my farm. in Winkleigh, Tasmania, … I received numerous visitors at the warehouse …
I considered the development of a flexible steel post to be a side project which. I worked on from time to time. There was no commercial need or urgency for me to proceed further with the prototype given that Dura-Post was experiencing success in the sale of its mild steel and plastic posts, having approximately 250 customers throughout Australia at one point. I also had concerns regarding the safety risk that would be created by a spring steel post, given the potential for the thin steel to injure motorcyclists or other persons if it were to be hit from the side.
I do not know where the flexible steel prototype is now. I lost interest in the project and, given that there were many items in my workshop, the post was eventually misplaced.
69 Mr Michael Turner is the Managing Director of a group of companies which includes SVP Industries Pty Ltd, which is involved in the business of injection moulding and extrusion of plastic products and profiles, including roadside guide posts. Those products include the SupaFlex guide post. It manufactures other posts including flexible posts manufactured to customers' specifications. His evidence was as follows:
I first learnt of a proposed use of flexible steel in relation to roadside guide posts in or about 1998 or 1999 during a visit to Peter Turner (the then owner of Dura-Post), to the workshop on his farm near Winkleigh and Flowery Gully in the West Tamar municipality of Tasmania. I remember that the visit occurred two to three years before Dura-Post relocated its operations to St Leonards. I was visiting Mr Turner's premises to discuss the injection moulding of a proposed cap to fit the Dura-Post steel post (being the post shown in the annexure marked "MRT10") and whilst there, discussion arose regarding the design of a cap to potentially fit a new form of roadside guide post made of flexible steel that Mr Turner told me he was in the process of developing. Mr Turner showed to me and I handled the flexible steel material which Mr Turner was working with. During that meeting, Mr Turner said to me words to the effect: "I'm designing a post made of spring steel. Can you make up an injection moulded plastic cap to fit it to overcome the problem of sharp edges?" I recall, although I no longer have any documents concerning it, that SVP's engineering department subsequently provided an indicative quote for the cap, but so far as I recall this injection moulding project did not proceed and until recently as referred to in paragraphs 67 and 68 below, I did not see a flexible steel roadside post being used in practice.
70 If the article described by the witnesses had been exhibited at a public exhibition, I would be satisfied that there was no significant difference between that and integers 1 to 8 with the exception that it would not properly be described as a roadside post as development was not complete. However, given the generality of claim 1 in Patents Nos 2 and 3, making it into a roadside post would be a simple task. It is arguable that it also had a substantially arcuate transverse cross-section. I do not accept that there is any satisfactory evidence that there was a marker hole. The substantially arcuate transverse cross-section clearly makes a substantial contribution to the working of the invention in the claims. I accept the view of Mr Dowling that the marker hole makes a real contribution which is of substance to the working of the invention, as the embedding of the post in the ground is a significant aspect of the operation of a roadside post and the marker hole undoubtedly assists in that regard.
71 The second aspect of this matter is - whether, and, if so, what, information was made publicly available by the doing of an act. The "act" pleaded was "the development and design of a post formed of spring steel by Mr Peter Turner … which act was made publicly available when disclosed at least to Mr Michael Turner in approximately 1999". The somewhat awkward statutory phrase is "information made publicly available … through doing [an] act". Construed liberally, this could encompass giving the prototype to Mr Michael Turner.
72 This topic was discussed by the Full Court recently in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139, the principle being discussed at [121]-[125]. Reference was made to the earlier discussion of the topic by the Full Court in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90, (2005) 222 ALR 155, (2005) 65 IPR 86 and Merck & Co Inc v Arrow Pharmaceuticals Ltd (2006) 154 FCR 31, particularly at [98]-[103].
73 The present case is not like Jupiters [2005] FCAFC 90, 222 ALR 155, 65 IPR 86, where the system was operating in what amounted to a public place and could be observed. In my view, the evidence does not enable any such finding to be made here. Even if it was left around the factory, nobody was invited to look at it and nobody would have had any occasion to take any notice of it. In any event, the matter was not pleaded in that way. Rather, the case turns on the principle that, if a product is made available to a member of the public without restraint at law or in equity as to the use of that product that is regarded as public disclosure. That principle has been applied for a very long time when various formulations of the statutory test have applied. In the present context, that would be the equivalent of making the information publicly available by an act. It is well-recognised that a duty of confidence in the recipient would negate the public nature of the act.
74 Insta Image [2008] FCAFC 139 illustrates both branches. It was held that there was public disclosure at motocross and jet-ski races open to the public where the article was present. On the other hand, the inventor went to a metal fabricator to have parts welded and that fabricator and his employee were involved and observed the articles. The trial judge had held that the circumstances strongly suggested that the information contained was confidential and could not be imparted by the fabricator to others or used by himself. The Full Court said the following (Insta Image [2008] FCAFC 139 at [153]-[156]):
The primary Judge recorded that Mr McKinnon showed the Original to Mr Forster and Mr Soward for the purposes of their assisting in the design and manufacture of the structure (at [65]). Mr Soward was the "owner" of Tom Soward Steel Fabrication Pty Ltd which was to undertake the manufacture of the brackets. Mr Forster was an employee. The primary Judge concluded that the circumstances of the collaboration were such that it could not be inferred that they were at liberty to make use of the Original. The circumstances, she said, strongly suggested that the information available from an inspection of the Original was confidential and could not be imparted to others or utilised by Mr Soward or Mr Forster (at [72]).
The appellants maintain that they did not rely on Mr Soward and Mr Forster seeing the structure in the course of design and manufacture as an instance of public use. They rely upon evidence not adverted to by the primary Judge concerning the showing of the Original to Mr Soward after his company had fabricated the brackets and Mr McKinnon had taken them away to assemble his canopy. This, the appellants submit, constituted an open disclosure, unaffected by any confidentiality, and a demonstration to Mr Soward of the way in which the canopy worked.
We are not satisfied that the evidence establishes that the confidential relationship between Mr McKinnon and Mr Soward, as found by her Honour, did not still exist when Mr McKinnon showed Mr Soward the finished product. We are not satisfied that her Honour was in error in finding that the showing of the canopy to Mr Soward did not constitute a prior use for novelty purposes within the meaning of the Act, whether the demonstration was of the finished product before or after parts were manufactured by Mr Soward.
Her Honour specifically concluded that the circumstances of the relationship with Mr McKinnon "suggest strongly that the information … was confidential and could not be imparted to others" (at [72]). No error is shown in this conclusion or in her Honour's resolution of the issue of disclosure to Mr Soward and Mr Forster.
75 To like effect is the judgment of Kiefel J in Richsell Pty Ltd v Khoury (1994) 30 IPR 129 at 135-136 dealing with designs in a similar context. See also Lloyd-Jacob J in Re Gallay Ltd's Application [1959] RPC 141, particularly at 144-145, in circumstances more complex than the present, but similar in substance.
76 In my opinion, Mr Michael Turner was not given or shown the prototype in order that he could use it as he sought fit without restraint. In my opinion, he was under a duty not to use it or disclose it without the consent of Mr Peter Turner. It is also clear enough that there was a duty of confidence between Mr Turner and Mr Denison. Indeed, that case was not made. Thus, in my view, the information represented by the prototype was not made publicly available through doing an act as alleged.
77 Issue 18: Does the claimed roadside post involve an innovative step over AU 526808 and 539998 (Schmanski)? That patent relates to "an impact resistant elongate web structure consisting of fibre reinforced synthetic material". That is a different material from sheet spring steel and, for the reasons referred to in relation to the SupaFlex post, there is an innovative step.
78 Issue 19: Does the claimed roadside post involve an innovative step over US No 6375385 (Kennedy)? This patent specification has been discussed in relation to lack of novelty. The mechanical lamination of a number of flexible members together is different from a flexible support constructed or formed of a sheet of spring steel. As I have indicated earlier, the Kennedy specification draws a clear distinction between the multi-laminated post, on the one hand, and a single sheet, on the other, in dealing with the prior art - a good example was what was said about the Blau patent. The different material contributes substantially to the manner in which that invention as claimed performs. As I have said earlier, it is not a question as to whether these claims are better than the disclosure by Kennedy, or whether it was obvious to move from Kennedy to this invention. Therefore, there is an innovative step over Kennedy.
79 Issue 20: Does the claimed roadside post involve an innovative step over US No 4486117 (Blau)? This specification has also been dealt with in the context of lack of novelty. The structure of the post, the shape of the tempered spring steel trap, the way it is attached and enclosed bears no relationship with the structure of any of the posts claimed in the patents in suit. The geometry is quite different. It follows that there is an innovative step over Blau.
80 Issue 20A: Does the claimed roadside post involve an innovative step over US No 3312156 (Pellowski)? Again, this specification has been considered in relation to lack of novelty. In my opinion, it is the only specification which requires close examination for the purposes of deciding whether there is an innovative step.
81 Once the issue of roadside post is set aside, I can see no real difference between claim 1 of Patent No 2 (integers 1 to 8) and that which was disclosed by Pellowski. I do not accept that Pellowski was limited in its dimensions, particularly its height, in the way submitted for Delnorth. Scaling off from non-scaled drawings and deductions from statements of particular use would not be sufficient for that purpose. Whilst 90° is not specifically mentioned in Pellowski, the description of resilience and flexibility and the description of the use to which the material would be put are consistent with the material having that capacity. Indeed, it seems to me that what is described would also encompass claim 2 of Patent No 2 where the body is elastically bendable to either side of the longitudinal axis. Mr Dowling does not suggest to the contrary. Neither does he suggest that the body does not have a substantially arcuate transverse cross-section.
82 I agree with the contentions of Delnorth, conveniently put through Mr Dowling, that the use of a marker hole, the use of a barb, the use of a taper, longitudinally extended in ribs and the particular dimensions of claim 3 of each of Patents Nos 1, 2 and 3 are not found in Pellowski and that each of them makes a substantial contribution to the working of the roadside posts.
83 I would not regard a surface coating, applied to the body, front and rear faces, as making a substantial contribution to the working of the invention as claimed in claim 1 in Patent No 3. I do not suggest that it has no functional purpose, rather that the contribution is not significant enough.