Aardwolf Pty Ltd v Abaco Machines (Australasia) Pty Limited
[2011] APO 41
•21 June 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aardwolf Pty Ltd v Abaco Machines (Australasia) Pty Limited [2011] APO 41
Patent Application: 2005201021
Title:Clamping devices for lifting slab, panel or sheet material
Patent Applicant: Abaco Machines (Australasia) Pty Limited
Opponent: Aardwolf Pty Ltd
Delegate: Xavier Gisz
Decision Date: 21 June 2011
Hearing Date: 30 March 2011 by written submission
Catchwords: PATENTS – opposition to the grant of the patent under s 59 – opposed on the basis of manner of manufacture, novelty, inventive step, full description and fair basis – opposition is unsuccessful on all grounds – costs awarded against opponent
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005201021
Title:Clamping devices for lifting slab, panel or sheet material
Patent Applicant: Abaco Machines (Australasia) Pty Limited
Date of Decision: 21 June 2011
DECISION
The opposition is not successful on any grounds. Costs according to Schedule 8 are awarded against the opponent, Aardwolf Pty Ltd.
I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, then I direct that sealing not occur until the appeal has been decided or discontinued.
REASONS FOR DECISION
Background
Abaco was a company formed by James Corbett in 1995 to manufacture and sell a device that clamps sheet material thus allowing the sheet to be lifted and moved. Mr Corbett gained patent protection in various countries for the sheet material lifter including the US patent US 5,893,595 (Corbett). Some time after the company was formed two brothers, Ai Nhon Nguyen and Hau Nguyen, became junior business partners in the Abaco company. In 2001 Mr Corbett sold his share of Abaco to the Nguyen brothers and granted a 12 month licence of the sheet material lifter to Abaco. Once the licence period elapsed, Mr Corbett formed Aardwolf to sell the sheet material lifter. Without a licence to the sheet material lifter, Abaco was compelled to invent a different device. Thus Hau Nguyen invented another sheet lifter which forms the basis of the presently considered application.
Patent application 2005201021 (the Application) to Abaco Machines (Australasia) Pty Limited (the Applicant) was filed on 7 March 2005 and advertised as accepted on 22 January 2009. On 2 March 2009 a Notice of Opposition was served by Aardwolf Pty Ltd (the Opponent) and a Statement of Grounds and Particulars was served on 2 June 2009.
On 26 May 2010 the Opponent served Evidence in Support. On 26 August 2010 Evidence in Answer was served by the Applicant. No Evidence in Reply was served.
The Delegate advised the parties that the matter would be heard on 30 March 2011. Both parties declined the opportunity to be heard in person. The Applicant provided written submissions while the Opponent did not provide submissions.
Request for dismissal
The applicant states in their submission:
“The patent applicant, Abaco Machines (Australasia) Pty Limited requests that the opposition be dismissed.”
It is not clear on what basis this request is made. Regulation 5.5(1) requires that the applicant may, within 1 month of being served the statement of grounds and particulars, request the Commissioner dismiss the opposition. More than 18 months from the date the statement of grounds and particulars was served had elapsed when this request was made, thus the request was made outside the prescribed time period. Pursuant to Regulation 5.5(3) the Commissioner may dismiss an opposition on her own volition at any time, although this would typically only be where a statement of grounds and particulars has not been served. I see no clear reason the opposition should be dismissed. Consequently the opposition is not dismissed and I will now consider each of the grounds of the opposition.
Evidence
Evidence in support is a statutory declaration by Graham Cowin with exhibits GLC-1 to GLC‑4, and a statutory declaration by James Corbett with exhibits JEC-1 to JEC-11. Details of these exhibits are below.
GLC-1 is a copy of the presently opposed application, AU 2005201021 B1
GLC-2 is a Wikipedia page defining a floating hinge
GLC-3 is a copy of US design D190008
GLC-4 is a US design D436794JEC-1 is Federal Court guidelines for expert witnesses
JEC-2 is a copy of the presently opposed application, AU 2005201021 B1
JEC-3 is a copy of US patent US 5,893,595
JEC-4 is a owners manual for the Aardwolf lifter
JEC-5 is an operation manual for the Aardwolf lifter
JEC-6 is copy of US patent US 3,845,585
JEC-7 is an encyclopedia entry about floating hinges
JEC-8 is a copy of US patent 3,524,670
JEC-9 is a photo of the Aardwolf lifter
JEC-10 is load testing document of the Abaco lifter
JEC-11 is a photo of the Aardwolf lifter
Evidence in Answer is a statutory declaration by Ai Nguyen with exhibits ANN-1 to ANN-2. Details of these exhibits are below.
ANN-1 is a copy of the US equivalent patent US 7,156,436
ANN-2 is a copy of the German equivalent patent DE 10 2005 010 389
The Specification
The specification under opposition relates to a clamping device for lifting slab or sheet material. The clamping device utilises a mechanism that transfers the vertical force due to the weight of the clamp and slab to tighten the clamp against the slab in a horizontal direction.
10. The specification ends with 15 claims including a single independent claim. Claim 1 is reproduced below:
1. Clamping device suitable for lifting and handling of sheet like-objects,
having:- a rigid frame configured to straddle an edge region of sheet-like objects, the frame including a stationary jaw and a frame housing defining a gap between them in which the sheet-like object may be received, the stationary jaw providing a first clamping surface;
- a movable jaw supported at the frame housing within the gap for movement towards and away from the stationary jaw, the movable jaw providing a second clamping surface and being mounted to the frame by at least one linkage arm which is articulated or pivoted at the movable jaw and near the upper end of the frame, respectively;
- an actuating carriage received between the movable jaw and frame housing for reciprocating movement between lower and upper ends of the device and arranged to transmit a clamping force; and
- actuator tracks present at both the movable jaw and the frame housing at which the actuating carriage is guided, at least a portion of one or both of the actuator tracks having an inclined portion that is inclined relative to a longitudinal axis extending between the upper and lower ends of the device, the inclined portion having a profile adapted to bias the movable jaw towards the stationary jaw as the actuator carriage is lifted by a lifting force towards the upper end of the device and thereby causes the respective clamping surfaces of the movable and stationary jaw to press against opposite faces of the sheet-like object when received within the frame and transmit the clamping force to frictionally clamp the sheet like object in the device against displacement.
11. I consider the characterising feature of the invention to be the mechanism by which the movable jaw is mounted to the frame. This feature is defined in the claims as follows:
“a movable jaw supported at the frame housing within the gap for movement towards and away from the stationary jaw, the movable jaw providing a second clamping surface and being mounted to the frame by at least one linkage arm which is articulated or pivoted at the movable jaw”
12. This feature is commonly known as a ‘floating hinge’ as explained by Mr Cowin’s declaration at paragraphs 5 and 6:
“I note that from figures 1, 2, 3a and 3b of the Abaco specification, a hinging arrangement including a pair of link arms (denoted by reference numeral 50) is used to enable a moveable jaw (22) to be displaced towards and away from a stationary jaw (20). This arrangement is very well known to me and is commonly known as a floating hinge”
Statement of Grounds and Particulars
13. The Application is opposed on the basis that the claimed invention is not a manner of manufacture, novel, inventive, fully described, fairly based, or having utility.
The particulars for novelty and inventive step cite several documents. However only two of these documents were produced as part of the evidence in the opposition: US 3,524,670 (Ilich), US 5,893,595 (Corbett).
15. The particulars for novelty and inventive step also cite the prior use of the Aardwolf lifting clamp. The evidence in support of the prior use of the Aardwolf lifting clamp is the owner’s manual and the operator’s manual for the Aardwolf lifter as well as photographs of the Aardwolf lifter.
Novelty [s 18(1)(b)(i)]
US 5,893,595 (Corbett)
16. US 5,893,595 (hereinafter referred to as the Corbett patent) discloses a sheet material carrier which transfers the vertical force due to the weight of the carrier into a horizontal clamping force. The carrier includes a rigid frame and a movable jaw. The carrier does not disclose the movable jaw being mounted to the frame by a floating hinge. Instead the movable jaw is slidably mounted on a pair of cross-members. The Corbett patent does not disclose all the features of the claimed invention. Consequently I am not satisfied that the claims lack novelty in light of the Corbett patent.
Prior Use of the Aardwolf lifter
17. Mr Corbett states at paragraph 30:
“The exhibited Aardwolf manual shows the current form of my lifter. The commercially available lifter has been in this form unchanged since 2002. The current lifter design includes some slight essentially aesthetic modifications to the device from its original 1995 form”
18. This statement is uncontested by the Applicant and so I accept that the Aardwolf lifter was used publicly before the priority date. I further accept that the Aardwolf lifter is essentially the same as the lifter disclosed in the Corbett patent. As I have already found that the claimed invention does not lack novelty in light of the Corbett patent, and since the Aardwolf lifter is essentially the same as the Corbett patent, it logically follows that the claimed invention does not lack novelty in light of the prior use of the Aardwolf lifter.
US 3,524,670 (Ilich)
19. US 3,524,670 (hereinafter referred to as Ilich) discloses a sheet material carrier which transfers the vertical force due to the weight of the carrier into a horizontal clamping force. The carrier includes a rigid frame and a movable jaw.
20. Mr Corbett states at paragraph 86:
“I have referred briefly above to the Ilich patent. In my view the device described in the Ilich patent has all of the features of the device claimed in claim 1 of the Abaco application.”
21. Mr Nguyen states at paragraph 26:
“I note Mr Corbett alleges at paragraph 86 that the Ilich patent illustrates a lifting clamp that has all of the features of the Abaco lifter as claimed in claim 1 of the Abaco Specification. I disagree. The Ilich device does not have actuator tracks present at both the movable jaw and the frame housing at which the actuating carriage is guided, at least.”
22. The operating mechanism (58) in Ilich operates in a similar manner to the actuator carriage of the claims. Column 3 lines 11 to 15 of Ilich states:
“This [operating] mechanism comprises a tubular extension (60) slidably received on the leg portion (18) for reciprocating movement relative thereto; and, a ramp or cam member (62) fixed to and extending laterally from the extension.”
23. The leg portion (18) functions as the actuator track that guides the operating mechanism of the claimed invention. However, the movable jaw in Ilich does not have an actuator track with an inclined portion as defined in the claims. Instead the movable jaw has a roller (52) while the complementary actuator track is on the actuator carriage. The roller itself cannot be considered an actuator track with an inclined portion for two reasons. Firstly, the term ‘track’ is construed to mean stationary with respect to the movable jaw. Secondly, the term ‘inclined portion’ is construed to mean substantially straight rather than circular or arcuate.
24. Ilich does not disclose all the features of the claimed invention. Consequently I am not satisfied that the claims lack novelty in light of Ilich.
Inventive step [s 18(1)(b)(ii)]
25. The relevant portions of Section 7 state:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
…
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant …
26. The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“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.”
Person skilled in the art
27. No evidence was provided as to who a person skilled in the art would be, however I consider it reasonable to assume that the person skilled in the art would be a mechanical engineer.
Ascertained, understood, regarded as relevant
28. I will now consider whether the person skilled in the art could have been reasonably expected to have ascertained, understood, regarded as relevant each of the prior art documents as required by s 7(3).
Prior use of the Aardwolf lifter
29. Mr Corbett states at paragraph 25 of his declaration:
“I conservatively estimate that by 2003 my clamp would have had about 90% of the Australian market.”
30. Mr Nguyen states at paragraph 11;
“I can confirm from personal knowledge that the lifter clamp referred to by Mr Corbett in paragraphs 19 to 25 and described in the US patent of Exhibit JEC-3, sold until 2002 by Abaco under the Abaco brand would have had about 90% market share in Australia of such type of slab / sheet lifting machines used in the stonemason industry.”
31. Both the Applicant’s and Opponent’s evidence support the opinion and I thus accept that the Aardwolf lifter was a very well known sheet lifter. In looking for existing methods of clamping and lifting sheet material it is reasonable to assume that the person skilled in the art would have found examples of the prior use of well known sheet material lifters such as the Aardwolf lifter. Thus the prior use of the Aardwolf lifter would have been ascertained by a person skilled in the art.
US 5,893,595 (Corbett)
32. It is considered reasonable to expect that persons skilled in the art would look for existing methods and devices for clamping and lifting sheet material. It is also considered reasonable to expect the person skilled in the art to review the patent literature and, in particular, patents relating to clamping and lifting sheet material. Thus any patent, including the Corbett patent, could be reasonably expected to have been ascertained by a person skilled in the art.
33. The Corbett patent is written in plain English and would thus be readily understood by the person skilled in the art. Having ascertained and understood these documents the Corbett patent would clearly be regarded as relevant since the device is for clamping and lifting heavy slab material.
US 3,524,670 (Ilich)
34. A person skilled in the art could be reasonably expected to have ascertained Ilich for analogous reasons as for the Corbett patent.
35. Ilich is written in plain English and would thus be readily understood by the person skilled in the art. The Ilich patent is directed to a carrier device for carrying sheet material such as plywood or sheet rock (column 3 line 40) under a person’s arm. Since Ilich is for lifting masonry sheet or slab it is reasonable to conclude it would be regarded as relevant by a person skilled in the art.
Obviousness
36. I have determined that prior use of the Aardwolf lifter, the Corbett patent and the Ilich patent would have been ascertained, understood and regarded as relevant by a person skilled in the art. I must now determine whether the claimed invention would be considered a matter of routine to a person skilled in the art.
US 5,893,595 (Corbett)
37. The Corbett patent discloses all the features of claim 1 except for the movable jaw being mounted to the frame by a floating hinge. Instead the movable jaw in the Corbett patent is slidably mounted on a pair of rods.
38. Mr Corbett states at paragraphs 73 to 75:
“In the Abaco specification the criticism is made of my device that it is unable to adjust itself into full plane parallel contact with divergent sheet faces. This criticism is simply untrue, as the applicant of the Abaco application well knows.
Although the movable jaw of my lifter device is not pivoted but rests on horizontal slides, there is sufficient tolerance in the moveable jaw for it to be able to move away from the vertical as required to grip materials that have other than parallel sides.
Now produced and shown to me marked Exhibit JEC-11 are two photographs which I had taken which demonstrate this. These photographs are of the model 40 Aardwolf lifter. This model was available and sold commercially in Australia from 2002. As these photographs demonstrate the vertically depending jaw is able to adjust itself into full plane-parallel contact with divergent sheet faces.”
39. Although the mechanism is different, the Corbett patent and the present invention both allow the moveable jaw to move in a horizontal direction and to pivot in a limited range.
40. Mr Corbett states at paragraphs 63 and 65:
“The hinging arrangement used is an obvious alternative to that which is used in my lifter. It is the simplest and most obvious way to connect a flat sheet member which is to move roughly horizontally. An example of such an arrangement is provided by US patent specification 3,524,670 in the name of Ilich (the “Ilich patent”).
The hinged arm connection used in the Abaco clamp has a fundamental flaw, which is that as the moveable jaw moves forward, the hinges move from a vertical position to an inclined position. Once the moveable jaw engages the load, the gravitational forces of the load exert a downward force on the moveable jaw and apply pressure to force the inclined hinges towards a vertical position thereby drawing the bottom of the movable jaw away from the load. This results in reduced clamp surface engagement with the slab and potential slippage problems on lifting.”
41. Mr Nguyen states at paragraph 19 of his declaration:
“…I disagree with Mr Corbett’s statement at paragraph 63 that the specific way in which the movable jaw is supported in the Abaco lifting clamp, and as defined in claim 1 of the Abaco Specification, is as such an ‘obvious’ alternative to that which is used in the Aardwolf lifter. If, as stated by Mr Corbett at paragraph 65, the hinged arm connection used in the Abaco lifting clamp has a fundamental flaw, how can it then be regarded by people with knowledge in how to design a lifting clamp as the ‘simplest and most obvious way’ to connect the moveable jaw within the frame of the lifting clamp?”
42. As is pointed out by Mr Nguyen, Mr Corbett’s statement that “the hinged arm connection used in the Abaco clamp has a fundamental flaw” seems to support the contention that a person skilled in the art would not see it as a matter of routine to use a floating hinge in place of the mechanism in the Corbett patent. Consequently claim 1 is not considered to lack inventive step in light of the Corbett patent.
Prior use of the Aardwolf lifter
43. As I have already found that the claimed invention does not lack an inventive step in light of the Corbett patent, and since the Aardwolf lifter is essentially the same as the Corbett patent, it logically follows that the claimed invention does not lack an inventive step in light of the prior use of the Aardwolf lifter.
US 3,524,670 (Ilich)
44. Ilich disclose all the features of claim 1 except an actuator track on the movable jaw. Instead Ilich discloses the actuator track on the actuator carriage and a roller on the movable jaw.
45. In my opinion placing the roller on the movable jaw or the actuating carriage would function in a similar manner. That is, either configuration will result in the same effect: the actuator carriage and the movable jaw pushing against and sliding past each other.
46. However, there is no evidence to support the contention, nor am I satisfied, that a person skilled in the art would, as a matter of routine, modify Ilich to have the actuator track rather than a roller on the movable jaw. Consequently the claims are not considered to lack an inventive step in light of Ilich.
Manner of manufacture [s 18(1)(a)] and an invention [s 18(1)]
47. Section 18(1)(a) of the current Act imports the newness threshold requirement of manner of manufacture from the previous act; see NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 32 IPR 449.
48. The particulars in support of this ground of opposition state:
“…contrary to the assertions by the Applicant there is no feature which distinguishes the alleged invention from the admitted known Corbett clamp and consequently the invention claimed is the subject of admitted prior art”.
49. However, there is a prima facie difference between the present invention and the Corbett clamp – the means of connecting the movable jaw to the clamp is different in the present invention and Corbett. Thus, on its face, the claimed invention is new. Therefore I am not satisfied that the claimed invention lacks a manner of manufacture.
50. The words “… an invention is a patentable invention …” in s 18(1) contain a threshold requirement that, on its face, the specification discloses ‘an invention’: Philips v Mirabella (supra); and Advanced Building Systems Pty Ltd v Ramset Fasteners (Australia) Pty Ltd (1998) 40 IPR 243.
51. The Opponent argues that because the invention does not, in their opinion, improve upon the prior art it is not an invention. However, a claim does not need to be directed to an improvement over the prior art to be considered an invention, the claim merely needs to define an alternative or an alleged invention (see the Dictionary of the Act). Furthermore, I have already found that there is a prima facie difference between the present invention and the prior art. Consequently I am not satisfied that, on their face, the claims are not directed to an invention.
Fully describe [s 40(2)]
52. The Opponent provides the following particulars for the ground of full description:
“The Specification does not describe or sufficiently and fully describe:
·What is meant by a "frame housing" and how that differs if at all from a "frame".
·What is meant by the words "is articulated or pivoted".
·What the words "near the upper end of the frame" mean.
·The Specification fails to describe how the invention could be marked [sic] utilising at least one linkage arm.”
53. The “frame” comprises two elements: the frame housing (24) and the stationary jaw (20). The phrase “is articulated or pivoted” is understood to mean ‘hinged’. The phrase “near the upper end of the frame” is understood to mean ‘close to the top of the frame’. None of these phrases put in doubt whether a full description of the invention has been provided since these phrases would be readily understood by a person skilled in the art.
54. The test for full description has recently been expressed in the High Court in Kimberly-Clark v Arico (2001) 207 CLR 1 (paragraph 25):
“… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
55. The description uses the phrase “at least one linkage arm”. The description clearly and fully describes the invention with two linkage arms which falls within the scope of the claims. Thus something that falls within the scope of each claim is fully described. It is not a requirement that everything that falls within the scope of the claim must be fully described; Kimberly‑Clark v Arico (supra). Consequently I am not satisfied that the invention is not fully described.
Fair basis [s 40(3)]
56. The opponent argues that the feature of “at least one linkage arm” is not fairly based since there is no disclosure of the invention with only a single linkage arm. The description contains a consistory clause which discloses at least one linkage arm. Although none of the embodiments of the invention disclose the use of a single linkage arm, the use of a single linkage arm is considered consistent with the description as a whole. Consequently I am not satisfied that the claims lack fair basis.
Usefulness [s 18(1)(c)]
57. The opponent states in their particulars for the ground of usefulness:
“The alleged invention fails to meet the promise made in the Specification that it provides an improved lifting device over that of Corbett type clamps…”
58. The issue of utility was recently considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 where Emmett J at 81 stated:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility.”
59. The claims will lack utility if something that falls within the scope of the claims can be shown to not be useful. However, the evidence does not show that anything that falls within the scope of the claims is not useful. The contention that the invention does not provide an improvement over the prior art is not relevant because it does not go to the utility of the invention – an invention does not need to be an improvement, it only needs to be an alternative to the prior art. Consequently I am not satisfied that that the claimed invention is not useful.
Conclusion
60. None of the grounds of opposition have been successful.
61. I direct that the application be sealed after twenty-eight (28) days from the date of this decision. If the Commissioner of Patents is served with a notice of appeal from this decision before that time, I direct that sealing not occur until the appeal has been decided or discontinued.
62. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. In terms of the substantive opposition, the Opponent has been unsuccessful on all grounds. Accordingly I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Opponent, Aardwolf Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents
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