Ace Bed Co., Ltd v Sealy Technology LLC - [2015] APO 63

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Ace Bed Co., Ltd v Sealy Technology LLC [2015] APO 63

Patent Application: 2008219052

Title:Innerspring coils and innersprings with non-helical segments

Patent Applicant:                   Sealy Technology LLC
Opponent:  Ace Bed Co., Ltd.
Delegate:  R Subbarayan
Decision Date:  24 September 2015
Hearing Date:  9 July 2015, in Canberra;

Catchwords:  PATENTS – section 59 – opposition to grant of patent – Innerspring coils for a mattress – whether claims are novel – whether claims are inventive - whether claims are clear and succinct - whether claims are fairly based - whether claims are useful – none of the grounds made out – costs awarded against the opponent

Representation: Patent applicant: Did not appear
Opponent:Fraser Old of Fraser Old & Sohn

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008219052

Title:Innerspring coils and innersprings with non-helical segments

Patent Applicant: Sealy Technology LLC
Date of Decision: 24 September 2015
DECISION
None of the grounds of the opposition has been made out. All of the claims are novel, inventive, clear and succinct, fairly based and useful.
I direct that the application proceed to grant subject to any appeal being filed within the relevant period.
Costs according to schedule 8 awarded against the opponent Ace Bed Co., Ltd.
REASONS FOR DECISION
BACKGROUND

Application 2008219052 in the name of Sealy Technology LLC (Sealy) was filed on 19 February 2008 as a PCT application (PCT/US2008/002146) and claims an earlier priority of 20 February 2007 from priority application US 11/708099. The application was advertised as accepted on 20 March 2014. Ace Bed Co., Ltd (Ace) filed a notice of opposition to the grant of the patent on 20 June 2014. The matter was heard in Canberra on 9 July 2015. Sealy advised that they did not wish to appear at the hearing or file written submissions.
GROUNDS OF OPPOSITION
Ace has opposed the application on the grounds of Novelty, Inventive Step, Clarity, Fair Basis and Utility.
EVIDENCE
The only evidence in this opposition is evidence in support comprising the following:
·Declaration of Mr Nick Ristevski dated 18 November 2014.
·Declaration of Mr Nick Ristevski dated 18 December 2014 with exhibits NR-1 to NR-3.
Mr Ristevski is the proprietor of Rockdale Mattress Factory, a Sydney based company that has been manufacturing standard and custom made mattresses for approximately 40 years.
In his first declaration, Mr Ristevski briefly discusses the different types of centre springs used in innersprings of mattresses, including the use of exposed coils which extend above the border wires of the innerspring. He also states that if it is desired to increase or decrease the height of the mattress, the normal way of doing this is to increase or decrease the length of the centre spring by adding or decreasing the number of turns of the spring, or by increasing or decreasing the spacing between adjacent turns.
In his second declaration, he very briefly discusses the opposed application and the two prior art documents that Ace relies on.
ONUS OF PROOF
The examination request for this patent application was filed on 25 October 2011. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [ 2000] FCA 283 at [29] , [67]; [2000] FCA 283 ; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18] , [22]; [2008] FCAFC 182 ; 79 IPR 426 ; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742 ; [1999] 92 FCR 106 at [17] ).
SPECIFICATION
The present invention relates to wire coils for innersprings of mattresses. Such coils typically consist of a generally cylindrical coil body formed by a plurality of helical turns of a wire. At each axial end of the coil body, the coil terminates in coil ends that lie in a plane that is generally perpendicular to the longitudinal axis of the coil body. A plurality of these wire coils are interconnected or laced together in a matrix array to form an innerspring. The innersprings are normally covered with padding on both sides and then enclosed in upholstery to form the mattress.
The specification states that mattresses have normally been constructed to be “double-sided”, wherein the arrangement of components and materials is identical on each side of the mattress. This double-sided symmetrical construction “enables flipping of the cushion or mattress to obtain the same support characteristics on a fresh uncompressed side” and such flipping was necessary “to allow compressed layers of padding, particularly natural materials such as cotton batting or fowl feathers, to decompress while the opposite side was used as the support side”. It further states that the introduction of improved materials that do not require such a prolonged recovery period for the padding layer, have led to the development of the “one-sided” or “no-flip” mattress. In such a “one-sided” mattress, one side has more padding and is used as a support side, while the other side has reduced padding and is used as a bottom side of the mattress.
The specification notes that “one-sided” mattresses have however continued to be made with conventional symmetrical innersprings made for “double-sided” mattresses and with such a conventional innerspring “there is a substantial amount of wire material and structure on the bottom side of the innerspring which is excessive and not required for adequate or optimal performance of the single support surface”.
The specification then explains that American style high profile mattresses require high height coils for the innerspring and that increasing the height of the coils by including more turns in the coils can affect the stiffness of the coils which generally decreases with height. While stiffness can be increased by using heavier gage wire, this will add significantly to weight and material costs.
The object of the present invention is therefore to provide a wire coil design for use in innersprings of one-sided mattresses, which has adequate height and stiffness, and which requires a lesser amount of material than conventional symmetrical coils used in double-sided mattresses.
This object is met by providing the coil with a step or non-helical segment that is contiguous with the helical body of the coil and extends between an end of the helical body and the coil end so that the height of the coil is increased without correspondingly increasing the number of helical turns of the coil body.
The specification then describes various configurations of “stepped” coils. One such configuration is shown in figures 1A and 1B that are reproduced below:
These figures show a wire coil 10 having a generally cylindrical coil body 12 formed by a plurality of helical turns 121-126, coil ends 14, 16 formed at each axial end of the coil body, each coil end lying in a plane that is generally perpendicular to the longitudinal axis A of the coil body 12 and a coil step 20 which is constituted by a linear segment that extends from the bottom coil end 14 to the bottommost turn 121 of the coil body. The step extends in a direction that is generally parallel to the longitudinal axis A and acts to extend the height of the coil without (a) increasing the number of turns of the coil and (b) affecting the stiffness of the coil at the upper support side of the innerspring.
While in the above embodiment, the step segment is linear and extends generally parallel to the longitudinal axis A, in some of the other embodiments the step segment is curved and/or non-parallel to the longitudinal axis. For example figure 14A reproduced below shows a step 148 which is non-linear and has two bends or undulations 1481, 1482.
The specification ends with 50 claims of which 7 are independent and read as follows:
1. A wire coil for use in an innerspring, the coil comprising:
a generally cylindrical coil body formed by a plurality of generally helical turns between axial ends of the coil body,
a coil end at each axial end of the coil body, each coil end generally lying in a plane generally perpendicular to a longitudinal axis of the coil body,
and a step segment which extends from one of the coil ends to one of the axial ends of the coil body, the step extending out of the plane of the coil end to the axial end of the coil body.
14. An innerspring having a plurality of wire coils interconnected in an array, each of the wire coils having a generally cylindrical body with two or more helical turns of wire which form a helical path about a longitudinal axis of the coil, the coil body terminating at opposed axial ends,
a coil end at each axial end of the coil body, each coil end oriented in a plane which is generally perpendicular to the longitudinal axis of the coil, and a step which extends between one of the coil ends and the coil body and which does not follow the helical path of the coil body.
21. A wire coil for use in an innerspring, the coil having a plurality of helical turns which form a helical coil body about a longitudinal axis of the coil;
a first coil end which extends from one end of the helical coil body, the first coil end located in a plane which is generally perpendicular to the longitudinal axis of the coil;
a second coil end located proximate to an opposite end of the helical coil body, the second coil end located in a plane which is generally perpendicular to the longitudinal axis of the coil;
and a step which extends between the opposite end of the coil body and the second coil end, the step extending out of the plane in which the second coil end is located and not aligned with the helical turn at the opposite end of the coil body.
31. An innerspring comprising:
a plurality of wire coils, each coil having a plurality of helical turns which form a generally cylindrical body with a longitudinal axis, a first coil end attached to one of the helical turns at one end of the cylindrical body, and a step extending from a second coil end to one of the helical turns of the cylindrical body;
each of the coils arranged in an array and with the first coil ends located in a common plane and the second coil ends located in a common plane.
43. A wire coil having a first coil end and a generally helical coil body which extends from the first coil end about a longitudinal axis which is generally perpendicular to the first coil end,
a step at an end of the coil body opposite the first coil end, the step having a segment which is angled with respect to the longitudinal axis of the generally helical coil body, the step being connected to a second coil end which lies in a plane generally perpendicular to the longitudinal axis of the coil body, the step being substantially perpendicular to the plane in which the second coil end lies so that the helical coil body is spaced from the second coil end by the step.
46. An innerspring coil comprising:
a generally helical coil body having a plurality of helical turns about a longitudinal axis, the coil body terminating at opposite axial ends,
a coil end proximate proximate to each axial end of the coil body, each coil end generally lying in a plane which is generally perpendicular to the longitudinal axis of the coil body,
at least one step extending between one of the coil ends and one of the axial ends of the coil body, the at least one step extending out of the plane of the coil end from which it extends to space the respective axial end of the coil body from the respective coil end.
49. An innerspring coil comprising:
a coil body formed by a first set of helical turns about a longitudinal axis, and a second set of helical turns about the longitudinal axis, and a non-helical step which connects the first and second sets of helical turns, the coil body terminating at opposite axial ends, and
a coil end at each axial end of the coil body, each coil end located in a plane which is generally perpendicular to the longitudinal axis of the coil body.
CLAIM CONSTRUCTION
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification"
I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
Where the specification indicates that a special meaning is to apply to a particular term, the special meaning may only prevail over the plain and unambiguous meaning if the special meaning is clearly expressed. This is known as the dictionary principle and is reflected in British Thomson-Houston Company Ld. v Corona Lamp Works Ld. (1922) 39 RPC 49 at page 67, where Viscount Haldane stated:
"We have to scan the Specification with the closeness which is required in the case of any instrument conferring a monopoly, but, subject to this, all we can legitimately do is apply the ordinary rules for the construction of written instruments. One of these, which is relevant in the case before us, is that the instrument must be read as a whole. The Claiming Clauses, for example, are not to be taken as standing in complete isolation. For if the Patentee has used in these clauses expressions which he has already adequately interpreted in the body of his Specification, he is entitled to refer to the Specification as a dictionary in which the meaning of the words he uses has been defined."
I think it is important to properly construe the following terms used in the claims.
Wire coil
The Macquarie dictionary defines coil as “a connected series of spirals or loops into which a rope or the like is wound”. Therefore I construe the term wire coil as a wire wound into a connected series of spirals or loops.
Step
Each of the independent claims defines that the wire coil includes a “step”. As discussed earlier under the heading “Specification”, the invention lies in the provision of the step that serves to extend the height/length of the coil without increasing the number of helical turns of the coil.
The Macquarie Dictionary includes a number of definitions for the term “step”, but the definition that is most relevant to this term in the context of the claimed invention is “a part or offset resembling a step of a stair”. Almost all of the embodiments of the various configurations of the coils show a step segment that generally conforms to this definition in that it includes a segment that is generally oriented in a vertical/ longitudinal direction similar to the riser of a step to space the bottommost turn of the helical body from the coil end. For example as can be seen in figure 1a, the step 20 in connected to the end coil 14 and the helical turn 121 in such a manner that they resemble the step of a stair. Even in those embodiments in which the step is non-linear or non-parallel to the longitudinal axis, the general configuration is such that it could be broadly termed as being step-like. For example the step 148 of figure 14A, while being curved, still acts as a step riser in that it is generally vertically oriented to distance the first turn 1421 from the coil end 144. While this is the plain meaning of this term in the claims, I note that the body of the specification sets up its own definition of how this term is to be construed.
Firstly at paragraph [10] under the heading “Summary of the invention”, it states “As used herein, the terms "step", "stepped", "one-step" and "multi-step" refer to and mean the non-helical shaped segments of the described coils”.
Then later in in paragraph [46] under the heading “Detailed description of preferred and alternate embodiments” it states “As used herein, the term “step” refers to any generally linear or curvilinear segment of wire in a coil, located between the helical coil body and a coil end, which does not follow the helix or path of the helical form of the wire of the coil body, and which may have at least one segment which is generally aligned with or parallel to a longitudinal axis of the coil body, or which is co-located at a radial extent from the longitudinal axis A with an outer radial extent of one of the helical turns of the coil body”.
This therefore raises the questions whether the definition provided by the body of the specification is different to the plain meaning of this term and if so does it override the plain meaning. The definition provided in paragraph [10] under the heading “Summary of the invention” refers to the non-helical shaped segments of the “described coils”. There is therefore a clear reference here to the described embodiments all of which as I mentioned earlier show a non-helical segment that extends generally vertically and can be broadly described as being step-like. The term step does not therefor refer to any and every non-helically shaped segment that one could come up with. If that was the intent, the applicant would have used the term “non-helical” instead of “step”. The reference to the described coils supports the view that the non-helically shaped segment still needs to extend generally vertically similar to the riser of a step to space the bottommost turn of the helical coil body from the coil end. In my view there is therefore no major difference between the definition provided by the body of the specification and the plain English meaning.
Although Ace submitted that the definitions in paragraphs [10] and [46] are inconsistent, I fail to see any serious inconsistency between the two definitions. Paragraph [46] requires that the step is any linear or curvilinear segment which does not follow the helix or path of the helical form of the coil body. In my view this is basically stating that the step segment is non-helical as required by paragraph [10]. While it does not refer to the “described coils” similar to paragraph [10], I note that it does state that the segment may be generally aligned with or parallel to the longitudinal axis, again giving the whole arrangement a step-like configuration. In any event even if there is some inconsistency, in my view the definition under the heading “Summary of the invention” would take precedence over the definition under the heading “Detailed description of preferred and alternate embodiment”.
So in my view, the skilled addressee would understand the term “step” as defined in the claims as referring to a non-helical segment of the coil that extends in a generally vertical direction similar to the riser of a step.
Coil end
Although Ace did not raise any issues with the construction of this term, I think it is important to construe this term as will become evident later. The term end means “an extreme or farthermost part of anything extended in space” or “anything that bounds an object at one of its extremities; a limit” (The Macquarie Dictionary). Hence applying this plain meaning the term “coil end” would mean the part that bounds the wire coil at each of its extremities. Such a construction is also wholly consistent with the disclosure in the body of the specification.
CLARITY AND SUCCINCTNESS

Ace submitted that the claims are not succinct in that claims 1-13, 21-30, and 43-45 are all directed to a wire coil and are repetitive in scope and similarly claims 14-20, and 31-42 are all directed to an innerspring and are repetitive in scope.
In Doric Products Pty Ltd v Lockwood Security Products Pty Ltd [ 2001] FCA 1877 it was held:
“I accept that it takes patience, time and effort to unravel all of the claims of the Patent. Subject to the expenditure of that time and effort, there is no alleged ambiguity in the claims. The problem is not with prolixity, but with attempted compression, and the multitude of claims. That, however, falls short of establishing that the claim or claims are not clear and succinct."
In the present instance there are seven independent claims, three of which are to a wire coil, two to an innerspring and two to an innerspring coil. Despite having more than one independent claim for each of these aspects, I have not found any ambiguity in the claims and there is no redundancy amongst them. As the delegate stated in American National Can v Trigon[1996] APO 23:
“It is the right of an applicant to draft his claims so as to protect every aspect of the invention that he has disclosed. This can lead to a large number of claims, and potentially even a large number of independent claims”.
In my view the different independent claims are no more than an attempt to protect various aspects of the invention, which although appearing repetitious still have at least slight differences in scope. I am not satisfied that the claims lack succinctness.
FAIR BASIS
Ace submitted that all of the claims with the exception of claim 42 are not fairly based as they are not restricted to being used in a one-sided mattress.
The requirement that the claims be fairly based on the description is a requirement of consistency of the claims with the description or, more particularly, with the invention described.
As noted by the High Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; 207 CLR 1 ; 177 ALR 460 ; 75 ALJR 518, the general principle underlying fair basis is:
‘... where the issue is one under a 40(3) of "fair basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.’
In order for a claim to be fairly based, the claims must be consistent with what the specification as a whole describes as the invention. As a consequence, fair basis does not require any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention".
In LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, the High Court affirmed that the test for fair basis is:
...whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5].
While the invention was developed to address the shortcomings in the innerspring of a one-sided mattress, the solution provided by the application is to introduce a step in the wire coil used in the spring so that when such a coil is used in the innerspring of a one-sided mattress with the step located in the bottom side of the mattress, it continues to provide the same sprung characteristics of a typical innerspring with symmetrical coils. The invention therefore lies in the construction of the wire coil and not in the construction of the mattress. In my view all of the claims are consistent with what the specification as a whole describes as the invention and there is a real and reasonably clear disclosure within the body of the specification for each of these claims.
All of the claims are therefore fairly based.
NOVELTY
For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of prior art information within the prior art base. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20] ; [1977] HCA 19 ; 137 CLR 228 at 235:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19] ; [1990] FCA 40 ; 16 IPR 545 at 549). To meet this requirement, the prior art must contain "clear and unmistakable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
Regarding the requirement of a clear and unmistakable direction, Australian courts have often cited with approval the words of the UK Court of Appeal in The General Tire case which states at pages 485-486:
"If ... the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least be as likely to be carried out in a way that would not do so, the patentee's claim will not be anticipated.
To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee"
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 , the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has "planted the flag" as opposed to having provided merely "a signpost, however clear, upon the road" or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
In relation to the specificity required in order for a prior art document to anticipate the claimed invention, the full court in AstraZeneca (supra) also quoted with approval the following quote from Gyles J in Apotex Pty Ltd and Another v Sanofi-Aventis and Another (2008) 78 IPR 485:
"anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun".
Ace relied on two Korean utility patent documents to support its ground of lack of novelty. The owner of both these utility patents is the present opponent Ace. Although these documents are in Korean, Ace has filed verified translations of these documents and I will therefore rely on these translations in construing the disclosure of these documents.
D1: KR 20-0417435
Independent claim 1:
D1 relates to an innerspring structure for a mattress that has a dual buffer structure. It comprises a plurality of wire coils that are vertically arranged, spaced apart from one another and are interconnected by helical coils. Each of the wire coils includes a body spring that is interconnected with adjacent body springs and an exposed wire spring disposed above the body spring and formed integrally with the upper end of the body spring. These exposed springs compress relatively easily as compared to the body springs thereby providing the dual buffer structure.
Ace primarily relies on an embodiment of D1 shown in figures 4a to 4c as disclosing all of the features of claim 1. These figures and a modification of this embodiment as shown in figure 4d are reproduced below:
This embodiment discloses a spring coil 200 for use in an innerspring comprising a body spring 10 formed by a plurality of generally helical turns with end springs 16, 18 at its upper and lower ends that lie in a plane generally perpendicular to a longitudinal axis of the body spring, an exposure wire spring 20 having one or more helical turns and a connection end portion 24 that integrally connects the upper end spring 16 and the exposure wire spring 20 to each other. It further includes a first contact preventing portion 30 and a second contact preventing portion 32 that prevent the coils of the exposure spring 20 from rubbing against the coils of the body spring 10 when the spring coil gets compressed.
Ace submitted that the body spring portion 10 clearly has a general cylindrical body formed by a plurality of helical turns, coil ends 16, 18 at each axial end of the coil body and a step segment 32 which extends from one of the coil ends 16 to the axial end of the coil body, the step extending out of the plane of the coil end to the axial end of the coil body.
While I accept that the second contact preventing portion 32 is non-helical and extends in a generally vertical direction and would therefore fall within the scope of the term “step segment”, I note that the body spring 10 is only one part of the overall wire coil 200 of the innerspring. Although Ace submitted that it is only the body springs that are laced together to form the innerspring and that therefore the body portion alone can be considered as the wire coil for the purposes of establishing lack of novelty, I do not find this persuasive. As noted earlier, the body spring is integrally connected to the exposure wire spring 20 and together they constitute the wire coil of the inner spring. While the lower end spring 18 is clearly a coil end in that it forms an end or extremity of the overall coil, upper end spring 16 only forms the extremity of the body spring but not of the overall coil. As discussed earlier, in my view the coil ends need to form the extremity of the whole coil and not just one helical portion of the coil. The other coil end of this embodiment of D1 is constituted by the upper end of the exposure spring 20. Claim 1 does not lack novelty based on this construction.
Having decided the coil ends of the wire coil 200 are 18 and the upper end of exposure spring 20, the question that also then needs to be answered is whether the overall coil 200 having these coil ends discloses all of the other integers of claim 1. The body spring 10 has a generally cylindrical shape and is formed by a plurality of generally helical turns between axial ends of the coil body, a coil end (18 and upper end of 20) at each axial end of the coil body. While it has step segments 30, 32 in the form of the contact preventing segments located between the upper coil end and the upper axial end of the coil body, neither of these step segments extends out of the plane of the coil end and also extends from the coil end to the axial end of the coil body. All of the integers of claim 1 are therefore not disclosed.
While not a construction advanced by Ace, I also considered whether it is possible to construe the entire exposure wire and the contact preventing segments as a step segment that extends from the coil end to the axial end of the coil body. In my view such a construction would not fall within the scope of the term “step” in the manner that I have earlier interpreted this term.
Similarly while not a construction advanced by Ace, I note the figure 4d shows a modification of this embodiment in which the coil 200 has an additional step 32 between the coil end 18 and the bottommost turn of the helical body 10. This step segment extends out of the plane of the coil end 18 to the axial end of the coil body 10. However in this embodiment, the coil end at the top of the overall coil 200 is not located at the axial end of the coil body, but is separated therefrom by the exposure wire spring 24. Therefore this requirement of claim 1 is not met.
Claim 1 is therefore not anticipated by any reasonable construction of D1. Claim 1 and its dependent claims are therefore novel.
Independent claims 14, 21, 31, 43 and 46:
Independent claims 14, 21, 31, 43 and 46 either define a wire coil or an innerspring that includes a wire coil in which there is a coil end at each axial end of the coil body and a step which extends between one of the coil ends and the coil body. For reasons discussed in relation to claim 1, one or more of these integers are not clearly and unmistakably disclosed in D1. These claims and their dependent claims are also therefore novel.
Independent claim 49:
In this claim, the step is formed not between the coil body and the coil end but rather connects first and second sets of helical turns. The embodiment of figures 4a to 4c of D1 discloses an innerspring coil comprising a first set of helical turns that constitute the body spring 10 and a second set of helical turns that constitute the exposure wire spring 20 and a coil end at each axial end of the coil body with each coil end located in a plane which is generally perpendicular to the longitudinal axis of the coil body. It also discloses two non-helical steps 30, 32 located between the first and second sets of helical turns. While Ace submitted that this embodiment discloses all of the features of claim 49, I am not convinced. What the claim requires is a (single) step that connects the first and second sets of helical turns, whereas in D1, there are two distinct non-helical steps that are connected together by the end spring 16. In my view there is no clear and unmistakeable disclosure in D1 of a step that connects the first and second sets of coils. Each of the integers of claim 49 is not disclosed.
Claim 49 and its dependent claims are therefore novel.
D2: KR 20-421339
The disclosure of D2 is very similar to that of D1 and Ace did not provide any specific additional submissions in relation to this document. For reasons discussed in relation to D1, I find that all of the claims are novel over D2.
INVENTIVE STEP
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (subsection 7(3)).
The test for whether an invention is obvious is to ask 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 at [45], 148 CLR 262 at 286 Aickin J 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."
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59, 212 CLR 411 approved this approach.
Problem to be solved
As discussed earlier the specification states that one-sided mattresses are made with conventional symmetrical innerspring made for double-sided mattresses and there is therefore a substantial amount of wire material and structure on the bottom side of the innerspring which is excessive and not required for adequate or optimal performance of the single support surface. This in my view is the problem that the claimed invention seeks to address. Ace did not provide any alternate view on the problem.
Ascertain, understood and regarded as relevant
Both D1 and D2 relate to an innerspring with an exposed wire spring integrally connected to the body spring. While these documents do not specifically refer to a one-sided mattress, clearly such an innerspring would be used only in a one-sided mattress with the exposure spring located on the upper side of the mattress. However I note that both D1 and D2 are directed to solving the problem of reducing noise generated by contact of the exposure spring with the body spring and not about increasing the height of the innerspring or reducing the amount of material at the lower portion of the innerspring. In my view the PSA would not have considered these documents as relevant to solving the stated problem and these documents are therefore not prior art information under subsection 7(3) for assessing inventive step.
Even if I am wrong on this point and these documents would have been regarded as relevant, it is my view that the claimed invention would still not be obvious as reasoned below.
Is the invention obvious
Ace submitted that the person skilled in the art seeing the drawings of D1 and D2 would have realised that the contact preventing portions 30, 32 could be used to increase the height of the spring without increasing the number of turns of the coils as well as reducing the amount of material at the bottom of the coils.
I am not convinced. While I accept that the contact preventing portions are similarly configured as the step segments of the claimed invention, they are provided for a totally different purpose. While Mr Ristevski states that “the structure of the coil steps 20 and 32 is the same”, he does not state that the person skilled in the art having looked at the drawings of these documents would have as a matter of course be led to use the contact preventing portions to increase the height of the coil. On the other hand he has stated that if it is desired to increase or decrease the height of the mattress, the normal way of doing this is to increase or decrease the length of the centre spring by adding or decreasing the number of turns of the spring, or by increasing or decreasing the spacing between adjacent turns.
In my view Ace’s submissions as to the claimed invention being obvious is made with the benefit of knowing what the solution is and then comparing the claimed invention to these documents. The authorities have clearly cautioned against relying on such hindsight to establish obviousness.
In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No.2) Limited v Apotex Pty Ltd [2014] FCA 1398 Beach J held:
“An egregious form of impermissible hindsight has been the situation where a witness has been shown the patent specification in suit at a stage prior to that witness giving evidence that there was no inventive step involved.”
The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59; (2002) 56 IPR 129 noted that “It is important also to remember that in Australia, a "scintilla of inventiveness" will suffice: "no smallness or simplicity will prevent a patent being good"”. I am not satisfied that the claimed invention lacks even that scintilla of inventiveness over D1 and D2 even if these documents would have been regarded as relevant.
All of the claims are inventive.
UTILITY
Ace submitted that the claimed invention other than that of claim 42 lacks utility as it does not define that the step segment is located adjacent the bottom of a one-sided mattress and without such a limitation it could result in a mattress such as a double-sided mattress which had one side which was relatively uncomfortable compared to the other.
While the invention has been developed primarily for use in an innerspring of a one-sided mattress with the step located adjacent the bottom side, all of the claims are directed either to a coil for an innerspring or an innerspring and not to a mattress incorporating such a coil or an innerspring. The claimed coils and the innersprings are certainly suitable for being used in single-sided mattresses with the step being located on the bottom of the mattress and would therefore achieve the promise of the invention.

The claimed invention is useful. This ground of the opposition has not been made out.
CONCLUSION
None of the grounds of the opposition has been made out. All of the claims are novel, inventive, clear and succinct, fairly based and useful. I direct that the application proceed to grant subject to any appeal being filed within the relevant period.
COSTS
Ace has been wholly unsuccessful in this opposition. I therefore award costs according to schedule 8 against the opponent Ace Bed Co., Ltd.
R Subbarayan
Delegate of the Commissioner of Patents