AliWood Pty Ltd v Deco IP Pty Ltd
[2023] APO 45
•14 September 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
AliWood Pty Ltd v Deco IP Pty Ltd [2023] APO 45
Patent Application: 2019204039
Title:Two-Piece Batten
Patent Applicant: Deco IP Pty Ltd
Opponent:AliWood Pty Ltd
Delegate:Neil Miller
Decision Date: 14 September 2023
Hearing Date: 23 June 2023, by Videoconference
Catchwords: PATENTS – Section 59 – opposition to grant of a patent – grounds of Novelty, Inventive Step, Clarity – construction – two-piece batten – interconnection of members – meaning of “inward stop portion” – functional limitations in a claim – context of a claim – essential features of a claim – matter of routine – lack of expert evidence – material under regulation 5.23 – costs
Representation: Patent attorney for the applicant: George Griziotis, Acrogon Group Pty Ltd
Patent attorney for the opponent: Micheal Biagio, IP Guardian, Patent and Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019204039
Title:Two-Piece Batten
Patent Applicant: Deco IP Pty Ltd
Date of Decision: 14 September 2023
DECISION
The claims are clear and succinct. I consider the invention so far as claimed to be novel and to involve an inventive step.
Subject to appeal, I direct that the application proceeds to grant.
I award costs according to Schedule 8 against AliWood Pty Ltd.
REASONS FOR DECISION
Background
Australian patent application no. 2019204039 (“the application”) was filed on 10 June 2019 and claims priority from Australian provisional application no. 2018903487 filed 17 September 2018. The application was originally filed in the name of Decorative Imaging Pty Limited, which subsequently changed its name to Deco Australia Pty Ltd and later assigned the application to Deco IP Pty Ltd (“the applicant”).
The application was accepted on 28 July 2021 with a notice of acceptance advertised on 12 August 2021.
On 27 July 2021 a notice under section 27 of the Patents Act 1990 (“the Act”) was filed by IP Guardian, Patent and Trade Mark Attorneys (“IP Guardian”). Additional section 27 material was filed by IP Guardian on 5 October 2021. A notice of opposition was filed on 11 November 2021 by AliWood Pty Ltd (“the opponent”) represented by IP Guardian. On 12 November 202, following the filing of the notice of opposition, IP Guardian filed further materials under the provisions of section 27.
In correspondence issued on 3 December 2021, a Delegate advised the opponent that it would be both timely and appropriate to include the section 27 material in their statement of grounds and particulars as well as their evidence in support. Notwithstanding this the Delegate also noted that if the material was not included in the evidence in support that the Commissioner may exercise discretion to consult the material under Regulation 5.23 and may add grounds to the opposition under s60(3). On 21 December 2021 another Delegate of the Commissioner issued a direction relating to the consideration of the section 27 material. The Delegate advised that the Commissioner had decided not to commence re-examination in view of the co-pending opposition proceedings.
A Statement of Grounds and Particulars (“SGP”) was filed by the opponent on 10 February 2022, with the SGP mentioned documents filed on 15 February 2022. The opponent then filed the Evidence in Support (“EIS”) on 10 May 2022. The EIS consisted of a statutory declaration dated 9 May 2022 with supporting exhibits Annexure I to Annexure XV by Marcus Woodman (“Woodman 1”).
The applicant filed their Evidence in Answer (“EIA”) on 11 August 2022. The EIA included a statutory declaration dated 11 August 2022 by Mr George Griziotis (“the Griziotis declaration”).
Evidence in Reply (“EIR”) was then filed by the opponent on 12 October 2022. The EIR consisted of a statutory declaration dated 26 July 2022 with Annexures A to C by Mr Colin Beattie (“the Beattie declaration”) and a statutory declaration dated 12 October 2022 by Mr Michael Biagio (“the Biagio declaration”).
On 8 June 2023 the opponent filed their summary of submissions (‘the opponent’s written submissions’). The applicant filed their summary of written submission (‘the applicant’s written submissions’) on 19 June 2023.
The opponent’s written submissions were accompanied by a request under regulation 5.23. The request sought to introduce a statutory declaration dated 8 June 2023 by Marcus Woodman (“Woodman 2”) with supporting exhibits Annexures A and B. To prevent an unnecessary delay in the hearing of this matter, I wrote to both parties advising that the issue of the reg 5.23 request would be considered during oral submissions. I therefore requested that both parties come to the hearing prepared to discuss the opponent’s reg 5.23 request. On conclusion of the hearing the applicant filed further written submissions regarding the opponent’s reg 5.23 request.
The description
10. The specification begins by stating that the present invention relates to a two-piece aluminium batten for use in building facades. The batten is formed of an interconnectable base and cover members. A brief discussion of the background art is then provided; the specification acknowledges that there are various metal batten systems on the market but states that there remains a need for a more efficient two-piece batten. The specification then enumerates a number of features that the more efficient two-piece batten should exhibit. Notably the two-piece batten should be easy to interconnect, and the interconnection should be strong when the batten is in use. Additionally, the cover should conceal the base from view after the cover is connected, and, ideally, the batten should be as lightweight as possible and should not, when the cover is being connected to the base, damage the wall to which the base is secured.
11. On pages 2-4 of the specification a set of consistory statements are provided. These statements by and large mirror the language of claims 1-10 which are discussed below. At page 6 the specification begins discussing an example of a two-piece batten embodying the principles and concepts of the present invention. The batten has a base and a cover which are interconnected to form the batten. The construction of the cover and base is best understood with reference to figures 1 and 2 (reproduced below).
12. As shown in figure 1 the base 12 of this embodiment of the invention includes a rear wall 18 and a pair of arms 20, 22 which project froward from the rear wall, the arms terminating in free ends 24, 26. Each arm includes a tooth 28, 30 that projects outwardly from the arm. As shown, the teeth are positioned proximate to the rear wall of the base. Each tooth includes a forward-facing ramp edge 32, 34 and a rearward-facing clamping edge 36, 38.
13. As shown in figure 2, the cover includes a front wall 40 and a pair of legs 42, 44 that project from the wall, each leg terminating in free leg ends 46, 48. Each leg includes a stop portion 54, 56 which projects into the interior space formed between the legs and front wall. As shown, each leg also includes an inwardly projecting tooth 50, 52 positioned adjacent to the free leg ends 46, 48. Each tooth has a rearward-facing ramp edge 58, 60 and a forward-facing clamping edge 62, 64. For reference and as can be seen from figure 2 the rearward and forward directions are determined relative to the front wall of the cover.
14. In operation the base is adapted to be secured to a mounting surface such as a wall or to a wall secured bracket. The cover is then engaged with the base such that the cover conceals the base from view. The interconnection of the cover and base is shown in figures 5-7 reproduced below. As shown, the legs of the cover are positioned over the free ends of the arms of the base. The cover is then pressed into engagement with the base such that teeth 50, 52 of the cover are brought into complementary engagement with the teeth 28, 30 on the base with forward facing clamping edges 62, 64 abutting the rearward facing clamping edges 36, 38. As can be seen in figure 7, when the teeth are engaged with each other the free ends of the arms 24, 26 are immediately adjacent or in abutting relation with the stop portions 54, 56. The stop portions prevent the cover from being pressed beyond the base ,thereby preventing the free ends of the legs from contacting the mounting surface.
15. On pages 8 and 9 the specification discusses the provision of grooves on the outer surface of each of the legs 42, 44. The groove acts as a point of weakness which allows greater lateral flexibility in the legs. The additional flexibility allows the legs to be easily distorted to more readily accommodate the arms of the base. In addition to this, the groove also provides a point of weakness through which a fastener, such as a screw or rivet can be driven, thereby securing the legs 42, 44 to arms 20, 22. A groove may also be provided in the rear wall of the base to allow a fastener to be driven through the rear wall in order to attach the base to the desired mounting surface. Additional fastening methods are also discussed such as the use of adhesives to bond the base to the mounting surface and to secure the cover to the base.
16. On page 10 the specification then proceeds to discuss the embodiments of figures 15-18. The construction of these embodiments is largely the same as that discussed above, the main distinction being that these embodiments have differently shaped cover members. The embodiments of figure 19 and 20 concern different arrangements relating to the base. In figure 19 there is a slight variation to the arms; notably there is a reduced thickening provided in the region near the free end to accommodate the passing of a fastener such as a screw or rivet. In addition to this reduction in thickness, additional grooves are also provided in the rear wall for receipt of additional fasteners. The embodiment of figure 20 also includes some slight variations to the base; the main one being the provision of a plate extending laterally from the rear wall of the base. The plate acts as a spacer to allow the user to accurately space the battens.
17. The remainder of the description then discusses various treatments that can be applied to the batten such as power coating, etc. In addition to this, discussion is also provided on various advantages of the invention. The detailed description then concludes with two disclaimers. The first concerns various modifications to design and construction of the described two-piece batten that may be apparent to one of skill in art. The second is a typical drafting edifice concerning admitted prior art; namely that reference to any such art is not to be taken as an admission of the common general knowledge in the art.
The opposed claims
18. The claims under consideration are those as accepted. The specification as accepted includes a total of 10 claims with claim 1 being the only independent claim as follows:
1. A two-piece batten when used for a building façade, the batten comprising:
(a) a base for securing to a mounting surface, the base having a rear wall and a
pair of arms projecting forwardly from the rear wall and terminating in respective free
arm ends, each arm having an outward tooth projecting from an outer side of the arm
at a position closer to the rear wall than to the free arm end of the arm, each outward
tooth having a forward facing ramp edge and a rearward facing clamping edge, and
(b) a cover for connecting to the base to conceal the base from view when the
base is secured to the mounting surface, the cover having a front wall and a pair of
legs projecting rearwardly from the front wall and terminating in respective free leg
ends, each leg having an inward tooth and an inward stop portion, each inward tooth
projecting from an inner side of the leg at a position adjacent to the free leg end of the
leg and having a rearward facing ramp edge and a forward facing clamping edge, each
inward stop portion projecting from an inner side of the leg at a position between the
inward tooth and the front wall,
wherein the cover is pressed over the base and is connected thereto by a snap-
on engagement of the inward teeth of the legs of the cover with the outward teeth of
the arms of the base, whereby the forward facing clamping edge of each inward tooth
abuts against the rearward facing clamping edge of a respective outward tooth and the
cover is clamped over the base with sufficient strength to prevent sliding movement
of the cover relative to the base and disconnection of the cover from the base, and
whereby the free arm end of each arm is immediately adjacent to, or abuts against, the
inward stop portion of a respective leg and the cover is stopped from being pressed
further over the base to prevent the free leg ends contacting and damaging the
mounting surface.
19. Claims 2-10 define additional features relating to the construction of the arms of the base and legs of the cover, the use of additional fasteners such as screws, rivets and the use of adhesives, etc.
Onus and Standard of Proof
20. The present application was filed after 15 April 2013. As such, the present application is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to Sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
21. The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the present application. Nevertheless, it remains the case that, in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue.
The nature of the opposition
22. In the SGP the opponent listed the following grounds of opposition:
·s18(1)(a) – the invention is not a manner of manufacture;
·s18(1)(b)(i) – the invention as claimed lacks novelty;
·s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step;
·s18(1A)(c) – the invention is not useful;
·s40(2)(a) – the specification does not disclose the invention in a manner which is clear enough and complete enough (i.e. lack of sufficiency);
·s40(2)(aa) – the specification does not disclose the best method known to the applicant of performing the invention;
·s40(3) – the claim or claims must be clear and succinct and supported by matter disclosed in the specification.
23. In written and oral submissions, the opponent sought to press the grounds that the claims were not clear and/or succinct and the invention so far as claimed lacked novelty and an inventive step.
The reg 5.23 request
24. The opponent sought to introduce additional materials under the reg 5.23. As noted above these additional materials consisted of the Woodman 2 declaration and accompanying Annexures A and B. The materials provided in Annexures A and B were a further copy a document supplied in the EIS (Annexure V to Woodman 1 - labelled as D11 in the opposition) and a sales invoice dated 9 August 2018 associated with sales of the product shown in D11. D11 shows a batten composed of a base and cover, with each having teeth on their respective arms and legs.
25. During the hearing, I queried the opponent as to the probative value of these materials, in particular given the fact that D11 was already in evidence. The opponent stated that the reasons for the introduction of the reg 5.23 material was to provide additional detail as to the dimensions of the base and cover for the purposes of illustrating that the tooth in D11 was positioned closer to the wall of the base as stipulated in claim 1.
26. I then queried the applicant as to whether they had any issues with the submission of the additional materials under reg 5.23. The applicant advised that they did not see any probative value in the introduction of the material, and that they had already dealt with the disclosure of D11 in their evidence in answer and summary of oral submissions. In view of this the applicant did not have any objection to the inclusion of the additional materials under the provisions of reg 5.23. The applicant stated that they had prepared additional materials in relation to the request. I advised the applicant that, should I require additional submission, I would request them following the hearing. As noted above, following completion of the hearing, and without solicitation, the applicant filed their additional submission concerning the reg 5.23 request.
27. On examination of the materials provided under the request the only discernible difference between the versions of D11 that have been supplied is that there is some slight variation in the measurements provided on the representations. Notably the version of D11 submitted under annexure A of the request, includes two additional dimensions relating to the overall length of the arms and the distance from the free end of the arm to the clamping edge of the tooth that is closer to the rear wall. The inclusion of these dimension does not add anything of probative value, the distance between the clamping edge of the tooth and the rear wall is clearly marked and is the same in both versions of the document. Moreover, there is sufficient information provided within the version of D11entered into evidence to determine the overall length of the arm and the position of the tooth. The additional information provided under the reg 5.23 request does not alter the interpretation or understanding of D11 as entered into evidence. Consequently, I do not see that it is necessary for me to consult the material supplied under Reg 5.23 for the purposes of deciding this matter. In view of this, it also not necessary for me to consider the applicant additional submissions on the matter.
Person skilled in the art
28. The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481; 71 IPR 615 Kiefel J identified ([16]) the person skilled in the art (“PSA”) as:
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time...They are likely to have a practical interest in the subject matter of the invention...and may often work in the art with which the invention is connected.”
29. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated at [70]:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
30. In AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 (at [23]), the High Court additionally noted that:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
31. In their submissions the opponent advanced that the PSA would be a designer of aluminium extrusions and have a working understanding of:
a. competing extrusions in the field of business that they are in (in this case in the construction cladding field);
b. extrusion manufacturing processes;
c. the effect of manufacturing tolerances;
d. the effect of thermal stresses on extrusion-type manufacturing processes; and
e. the effect of forces and how they affect stresses and strains when applied to extrusions.
32. The applicant’s position was that the PSA would be someone that is a designer and manufacturer of aluminium extrusions used in the building construction industry. Such a person would possess a good working knowledge of extruded aluminium battens.
33. It is noted that there is overlap between the opponent’s and applicant’s characterisation of the notional PSA. Notably both parties acknowledge that the PSA would be a designer and manufacturer of aluminium extrusions.
34. On the face of the specification, there is little doubt that the notional PSA includes a person with experience in the construction of metal battens and in particular two-piece metal battens. Such persons would require knowledge of the various components and materials used in the construction of such battens, i.e. knowledge of making metal extrusions. It also seems clear that the PSA would also require knowledge as to the manner in which the components are normally interconnected to form the batten. I tend to agree with the opponent’s position that such a person would also need to possess an understanding of the effect of manufacturing tolerances and the various effects of stresses and strains in the manufacture and use of such battens.
35. I note that of the evidence presented by the parties, none seeks to directly identify any of the declarants as persons of skill in that art. However, two of the declarants, Mr Woodman and Mr Beattie, hold positions within businesses that are engaged in the production and supply of aluminium products such as two-piece battens. This would seemingly have Mr Woodman and Mr Beattie well placed to provide evidence as to what may constitute the common general knowledge (‘CGK’) in the art.
36. With respect to the remaining declarants, Mr Griziotis and Mr Biagio, I note that these individuals are identified as registered patent attorneys; Mr Griziotis representing the applicant and Mr Biagio representing the opponent. While I have no doubt that Mr Griziotis and Mr Biagio are experienced attorneys and have an intimate knowledge of patent law, this does not necessarily position them to provide evidence as to state of the CGK, at least from the perspective of the PSA.
37. To the extent that it becomes necessary, I would prefer Mr Woodman’s and Mr Beattie’s evidence in terms of the state of the CGK in the art. Whereas the declarations provided by Mr Griziotis and Mr Biagio simply speak to the applicable principles of patent law at issue in this matter.
Construction
38. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, the correct application of these rules 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.”
39. I would also note what was said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 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.”
40. I do not see any inherent difficultly in interpreting claim 1; it is clear that it is directed to a two-piece batten composed of a base member and a cover member, with the base member having a rear wall and two arms extending from the rear wall, and each arm including a tooth positioned closer to the rear wall. Each tooth extends outwardly from the arms and includes a forward-facing ramp edge and a rearward facing clamping edge. The cover includes a front wall and a pair of legs extending from the front wall each leg having a free end. Each leg includes a tooth positioned adjacent the free end, with each tooth having a rearward facing ramp edge and a forward-facing clamping edge. Also associated with each leg is an inwardly projecting stop portion. The remainder of the claim then defines the interconnection of the base and cover, which in effect requires the complementary engagement of the teeth on the arms and legs such that the free ends of the arms are abutting or adjacent the respective stop portions.
41. The opponent in their written and oral submissions sought to focus on the construction of two particular phrases utilised within claim 1. These are as follows:
·“inward stop portion”; and
·“an outward tooth projecting from an outer side of the arm at a position closer to the rear wall than to the free arm end of the arm”
“inward stop portion”
42. The opponent’s understanding of the term “inward stop portion” is discussed at [9]-[11] of the Biagio declaration. Notably the opponent points out that the term “portion” means “a part of any whole, either separated from or integrated with it”. The opponent submits that the phrase does not require the inward stop portions to be two separate members. Instead, the phrase includes within its scope the use of an integral cross member extending between the legs, with this cross member having a pair of stop portions being the sections of the member adjacent the interior face of each leg.
43. The applicant by contrast submits that, on a plain reading of the claim, it is clear that each leg has its own discrete inward stop portion each having a free end. The applicant submits that it is clear from the claim that the stop portions are not part of a single continuous member. In the applicant’s opinion, even if there is a perceived ambiguity in the claim it is readily resolved by a fair reading of the specification including the drawings. Considering the specification as a whole the applicant submits that the reader would understand that the stop portions are two discrete members each having a free end. The applicant pointed out during oral submission that the claim utilises the word “each” and “respective” to further qualify the stop portion. This infers that the stop portions are discrete members and that each leg includes such a member.
44. During oral submissions the applicant also advanced that “portion” was a commonly used drafting term that was often used to refer to structures having free ends. Given the applicant’s submissions they seemingly suggest that the term “portion” has a special meaning within the auspices of patent drafting. While I appreciate that the term “portion” is widely used in patent drafting, its widespread usage has not altered the plain ordinary meaning of the term. All that can be said of the term “portion” is that it is used to designate structure, namely a part; this part may be a discrete part, or it could be a section of a whole in line with the plain meaning of the term. The exact nature of the structure, i.e. whether it has free ends or not, is further qualified by the surrounding language of the claim. That is, the meaning ascribed to the term is one that is borne out from the context of the claim. Consequently, I do not subscribe to the view that the term, by itself, necessarily infers that the structure has free ends as advanced by the applicant.
45. In the present case the opponent has focused on the term “portion” and how it should be read to encompass “a part of any whole”. This singular focus, however, divorces the term from the additional context provided by the surrounding claim language. Notably the claim, when referring to the stop portion, uses qualifiers such as “each” and “respective” which somewhat infer or imply that there is more than one stop portion and that each are discrete and separate members. Moreover, the claim recites that “each inward stop portion” is “projecting”. The term “projecting” as defined by the Macquarie Dictionary online means “to jut out or protrude from a surface”. The term “projecting” and its facsimiles such as “protrude”, or “jut” imply that the associated structure has a free end. This is best understood when one looks to the plain meaning of “jut” which the Macquarie Dictionary online defines as “something that juts out; a projection or protruding point”. It is the notion of projecting or protruding that lends further support to the applicant’s construction that stop portions are discrete members having free ends and not part of a singular member extending between the legs.
46. As I have already mentioned, the opponent has advanced that a plausible construction of the inward stop potions is that they are regions disposed on each end of a singular cross member. The issue I have with such a construction is that I cannot see how the stop portions can be said to project from the leg when they are regions of a singular cross member that interconnects the legs. Moreover, the opponent’s construction relies on creating arbitrary lines on what is otherwise a continuous wall or structure, which suggests it is a construction engineered with a view to anticipation, and not one that comes from a plain understanding of the words as they appear in the claim.
47. Considering the above, and given the plain language of the claim including terms such as “each”, “respective”, and the portions have other functional requirements such as projecting from an inner surface of the leg, I am inclined to agree with the applicant. Namely that the stop portions are discrete members having free ends, with each of these portions projecting inwardly from the inner side of each leg. While I prefer the applicant’s construction in this instance, I will say that the debate as to the exact form of the stop portions could have been avoided if more plain language was utilised, rather than seeking to cloak, or otherwise obfuscate, the exact configuration of the stop portions through unnecessary verbiage.
“an outward tooth projecting from an outer side of the arm at a position closer to the rear wall than to the free arm end of the arm”
48. During the hearing the opponent sought to highlight the fact that the phrase does not impose any meaningful limitation on the construction of the tooth. As a consequence, the positioning of the tooth is not an essential feature of the claim. A review of the opponent’s written submissions on this issue show that they are an unwieldly melange of concepts relating to clarity, succinctness, support and novelty. During the hearing I sought to clarify the nature of the argument being advanced; namely, was it being advanced that the claim lacks support, or was the issue at hand one of clarity. The opponent stated that the argument was one of clarity and succinctness, more specifically given the ambiguity of the identified phrase the claim is neither clear nor succinct. This position was then highlighted by the opponents discussion of the various possible scenarios outlined in paragraphs 4.1.4 to 4.4 of their written submissions.
49. The opponent first discussed the scenarios outlined at paragraphs 4.1.4 and 4.2 of their written submission with reference to illustrative figures 1 and 2 (reproduced below) to emphasise the fact that the phrase, in their opinion, was unclear. The opponent noted that the scenario as shown in figure 1 has a longer arm to that shown in figure 2. The opponent submitted that the effect of this is that the entire tooth of figure 1 extends from the arm at a distance closer to the rear wall than the free end, by contrast the entire tooth of figure 2 is not closer to the rear wall than the free end.
50. During the hearing I noted that when I look to figures 1 and 2 it does not seem that the shortening of the arm changes the position of the tooth. The tooth of figures 1 and 2 in my view is still positioned near the rear wall. The opponent then submitted that the position of the clamping edges does not change but the edge of the forward-facing ramp of the tooth is closer to the free end of the arm.
51. The opponent then went on to discuss their position as articulated at paragraph 4.3 of their written submissions. There the opponent advances that the location of the entire outward tooth is largely irrelevant to the functionality of the teeth. This point seemingly runs contrary to the position being advanced under 4.1 and 4.2 of the opponent’s written submissions noted above. Given this, I sought clarification from the opponent as to the apparent discord between the argument at 4.3 and the argument advanced under 4.1 and 4.2 of the written submissions. The opponent submitted that the proposition being advanced was that the position of the tooth is not an essential integer of the claim. The function of the tooth is not affected by positioning it closer to the rear wall of the base; its effect on the flex of the legs is the same.
52. In support of this point, the opponent then discussed the two scenarios identified in paragraph 4.4 of their written submissions and depicted in figures 3 and 4 reproduced below. In these scenarios the lengths of the free arms are identical, but the position of the forward-facing ramp edge is altered. In one scenario the ramp has been extended such that the edge where it terminates is near the free end of the arm. The opponent noted that differing positions of the forward-facing ramp edge per the two scenarios posed by the opponent does not alter the flexing of the leg; the leg flexes in the same manner in both scenarios.
53. When I consider the argument presented at 4.4 of the opponent’s written submissions, it is primarily focused on factors that affect when and how the legs flex, which does not necessarily assist the opponent’s case concerning lack of clarity. To my mind the flexing of the legs/arms (during the process of application of the cover over the base) goes more into the functional reasons as to why the tooth is to be positioned closer to the rear wall than to the free end of the arm.
54. Much of the opponent’s argument concerning lack of clarity focuses on the issue of size of the tooth, or the amount it projects from the arm. This is somewhat perplexing, particularly when the phrase is dealing primarily with the position of a particular integer relative to other integers of the base. On a plain reading of the phrase, I do not see it as being ambiguous. The phrase clearly positions the tooth at a point on the arm relative to other integers of the base, namely the rear wall and free end of the arm. Moreover, when I considered the opponent’s arguments, they are more concerned with the postulation of various alternate constructions of the tooth rather than seeking to resolve the perceived ambiguity in the phrase in accordance with the general principles of construction. When one considers the claim and specification as a whole, there is little doubt as to the position and construction of the tooth of the instant invention.
55. Given the above discussion, and considering the phrase in the context of the claim as whole, it is clear that the tooth is positioned near the rear wall of the base. It is also apparent that the tooth must project a sufficient distance to enable the abutment of the rearward-facing clamping edge of the tooth with the forward-facing clamping edge of corresponding tooth of the cover. This abutment is crucial to achieve the necessary interconnection between the cover and base as recited in the remainder of the claim.
Lack of clarity and succinctness
56. The opponent’s case that claim 1 lacks clarity centres on the use of the phrase “an outward tooth projecting from an outer side of the arm at a position closer to the rear wall than to the free arm end of the arm”. The phrase in the opponent’s view is ambiguous. As previously stated, I do not consider the identified to be ambiguous. The phrase clearly defines the position of the tooth relative to other integers of the base. Moreover, as I have detailed above any perceived ambiguity is one that is readily reconcilable in accordance with the general principles of construction.
57. The opponents case concerning succinctness is seemingly built on the notion that the identified phrase fails to impart a clear size limitation, a third party would be unable to determine what acts would fall within the scope of the claim. This, however, fails to consider the additional constraints that the claim places on the tooth. These constraints cannot be ignored when considering the overall scope of the claim. Notably the claim further defines the shape of the projection as having a forward-facing ramp edge and a rearward-facing clamping edge. The claim also requires that the rearward-facing clamping edge of the projection abuts the forward-facing clamping edge of the corresponding tooth disposed on the cover. Thus, on a plain reading of the claim as a whole, there is sufficient definition of the tooth in terms of its position, shape and function that would enable a third party to readily determine what tooth constructions would fall within the scope of the claim.
58. I therefore consider claim 1 to be clear and succinct.
Novelty
59. It is well established that the general test for lack of novelty 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; (1977) 137 CLR 228 at page 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
60. It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim. However, if one or more of the essential integers are not disclosed in the citation, the claim is novel (see Nicaro Holdings v Martin Engineering [1990] FCA 40; 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183).
61. It is noted that General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486 (“General Tire & Rubber Co”) stated that:
“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 as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.”,
and that, in order to meet the test for anticipation, the prior art:
“…must contain clear and unmistakeable 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.”
62. In oral submissions the opponent advanced that claim 1 lacks novelty in view of the disclosure of three technical drawings of two-piece battens produced by Chander Trading Co these being D1, D2 and D11 for the purposes of these proceedings. D11 depicts a 65mm by 15mm two-piece batten construction. The batten depicted in D2 is a similar construction to that of D11 with the primary difference being in the size of the batten being a 100mm by 50mm. D1 depicts an alternate two-piece batten including two distinct variants of the cover one being a 50mm by 50mm cover and the other a 150mm by 50mm batten cover. During oral submissions opponent focused their attention on the disclosure of D11.
The nature of the submitted prior art
63. Before proceeding with the consideration of the novelty arguments it is necessary to address the nature of the prior art information being relied upon by the opponent. As noted, D1, D2 and D11 are technical drawings of two-piece battens produced by Chander Trading Co., which has been sold before the priority date (Woodman 1 at paragraph [2.5]). However, the drawings contain very little in the way of written disclosure concerning the construction of the battens as shown.
64. The applicant has not disputed the fact that products, made in accordance with the technical drawings disclosed in D1, D2 and D11, were in the public domain before the priority date. Despite the ambivalence of the applicant as to the availability of the products shown in the drawings, the onus remains on the opponent to show that the prior art of record in these proceedings rises to the necessary level to anticipate the claims.
65. In the present circumstances the opponent’s case for lack of novelty hinges on a particular interpretation of number of technical drawings that lack comprehensive supporting information. It is also worth noting that no expert evidence has been submitted to aid the interpretation of the drawings in question. Given the scant information and the lack of corroborating evidence, it is difficult to see how the figures alone rise to the level of disclosure required to anticipate the claim as outlined in the identified authorities. While there is doubt as to whether D1, D2 and D11 contain an adequate disclosure to anticipate the claims, the adequacy of the disclosure of the prior art references relied upon by the opponent was not called into question by the applicant. As such, I will consider these documents for novelty purposes.
Consideration of novelty
Consideration of D11 and D2
66. As noted, the opponent, in presenting their case for anticipation, primarily focused on the disclosure of D11. D11 is a set of technical drawings depicting components of a two-piece batten having a cover labelled “Section no YLJ0A0757” and a base labelled “Section no YLJ0A0756”. As noted above D2 depicts similar two-piece batten construction to that of D11 the only discernible difference being in the sizing of the batten cover and base. During oral submissions the opponent focused their discussion on an excerpt of the drawings (reproduced below) depicting the interconnection of the cover and base of the batten of D11. For ease of reference, I will refer to this version of the batten as the “65mm batten”.
67. The key points raised by the opponent during oral submissions is that the circled regions of the referenced drawing of the 65mm batten (see above) are the stop portions as claimed. It can also be seen that, on the interconnection of the cover and base, the free ends of the arms of the base are adjacent to, or abutting, the stop portions. The opponent also pointed out that the base includes a tooth that is disposed closer to the rear wall of the base. The opponent also noted that the cover, when engaged with the base, acts to conceal the base. In the opponent’s view D11 discloses all the essential integers of the claim and as such the claim lacks novelty.
68. The applicant’s counter argument was that D11 did not disclose the stop portions that are discrete and separate members, each having a free end and projecting inwardly from the inner side of each leg as claimed. The applicant also submitted that D11 does not disclose a tooth positioned closer to the rear wall of the base as claimed. The opponent responded, submitting that the requirement for the tooth to be located at a specific location along the arm is not an essential integer of the claim, as the position of the outward tooth has no significant effect on the invention.
69. Based on my construction, as detailed above, I am of the view that the stop members are discrete members projecting inwardly from each leg. D11 does not show such features. Moreover, from a practical standpoint, while D11 discloses the provision of an interior wall, there is nothing in the disclosure of D11 to suggest that the wall is a stop member. To me it appears that the provision of the interior wall is to provide additional rigidity to the cover. I can appreciate the point being pressed by the opponent that, given the positioning of the wall, it may, in certain instances, act to stop further movement of the cover owing to the fact that the free ends of the arms of the base may come into contact sections of the wall. However, it remains the case that there is insufficient evidence within the disclosure of D11 to conclude the wall as identified by the opponent is in fact a stop member.
70. Even if I were to agree with the opponent that the wall is indeed a stop member, although this is by no means certain, then I cannot see how these regions could be said to project inwardly from each leg when they are integral parts of the continuous wall. Moreover, there is nothing in D11, or in the evidence lead by the opponent, to conclude that the regions as identified by the opponent would be regarded by the skilled addressee as being the claimed stop portions.
71. The opponent sought to argue that D11 discloses that each arm of the base includes a tooth positioned near the rear wall (noting that the claim does not preclude multiple teeth being present on each arm). When I look to D11, I do not come to the same view. The drawings of D11 include a number of measurements (not shown in the figure above) relating to the length of the arms the positioning of the teeth, etc. Taking these measurements into account, the arms of the base as depicted have a length of approximately 18.5mm with the tooth closest to the base being positioned close to the midpoint of the arm at 9.92mm. While it is appreciated the that the term “closer” and its synonyms like “nearer”, etc, are relative terms and do not provide specific measure of distance between this tooth and the rear wall, I do not believe that the PSA would consider this tooth of D11 to be disposed closer to the rear wall than to the free end of the arm. It is plain from D11 that the tooth is positioned approximately equidistant between the rear wall and the free end of the arm.
72. As noted above, the opponent is of the view that the position of the tooth is inessential. The question of essential and inessential elements was considered in Catnic Components v Hill & Smith Ltd (1982) RPC 183, at page 243 it was stated:
“The question in each case is: whether persons with practical knowledge … would understand … a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention ...
The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked.”
73. With respect to the opponent’s argument that the position of the tooth is not an essential integer, the argument is premised in terms of the effect on the biased flexing of the legs of the cover and not the function of the tooth per se. Even if it could possibly be accepted that there may be little or no impact on the biased flexing of the legs due to the position of the tooth, this does not mean that the position of the tooth as claimed is inessential to the invention. The opponent has not provided any evidence that the position of the tooth is wholly inessential. In the present circumstances the claim has been drafted to specify a particular position of the tooth, the claim then elucidates functional requirements imposed on the tooth given its position. On the face of the claim, it is evident that the feature is an essential feature. Moreover, there in nothing in the specification to suggest that the position of the tooth is inessential. I therefore do not see how the positioning of the tooth in the manner recited in the claim can be considered anything but essential.
74. Considering the above, the opponent has not established that the disclosure of D11 rises to the necessary level to anticipate claim 1. D11 fails to disclose the provision of the discrete stop portions, or that each tooth is positioned closer to the rear wall than to the free arm end of the base as recited in claim 1. Accepting that D2 depicts similar versions of the 65mm batten disclosed in D11, it follows that the batten of D2 also fails to anticipate claim 1 for the reasons discussed above.
Consideration of D1
75. D1 discloses two variants of a two-piece batten, for ease of reference I will refer to these as the “150mm batten” and “50mm batten”.
76. When I consider the 150mm of D1 the base is a of a similar construction to the base as recited in claim 1. Notably the base of D1 includes a pair of arms projecting outwardly from the rear wall. Each arm of the base of D1 includes multiple teeth wherein a tooth on the arm is positioned nearer the rear wall of the base than the other teeth. As I noted above with respect to D11, claim 1 as currently presented does not preclude the presence of multiple teeth on each arm. I also note that the applicant accepts (at paragraph 7.7 of their written submissions) that the base of D1 includes a tooth disposed closer to the rear wall as claimed.
77. While D1 discloses a base that is of a construction that reads onto the base of claim 1, the cover is of a similar construction to that discussed above in relation to D11 and D2. The cover of the 150mm batten fails to disclose the provision of two discrete stop portions. The cover for the 150mm batten again includes a continuous wall which is disposed between the front wall of the cover and the free ends of the legs. As in the case of D11, discussed in detail above, there is insufficient evidence within the disclosure of D1 to conclude the wall acts as, or is, a stop member.
78. During oral submissions, the opponent focused the majority of their discussion concerning D1 on the depiction of the cover of the 50mm batten which is reproduced below. The opponent submitted that the circled areas clearly show the stop portions as recited in the claim.
79. The opponent then submitted that the stop portions as highlighted are positioned between the front wall and the inwardly projecting tooth. At this stage I sought clarification from the opponent concerning this construction and how the stop portion could be viewed as being spaced between the front wall and the tooth. The opponent’s response was that the exterior face of the end of the 50mm batten could be viewed as the front wall and, as a consequence, the interior face carrying the stop portions could then be viewed as being positioned between the front wall and the tooth. In the opponent’s view, such a construction is plausible given that claim does not expressly require the stop portions and the wall to be distinct and separate members.
80. As I have noted above, the stop portions are discrete elements that project inwardly from each leg. These elements are not part of a singular cross member or wall. That is, they are separate elements to the wall. This is further emphasised by the use of the term “between” within the claim. There is little doubt that “between” is being used in its traditional prepositional form. Used in this way the term clearly refers to space separating two or more points, objects, etc. That is, there is a spatial separation between the stop portions the front wall. Thus, contrary to the opponent’s position, the claim does require the stop portions and the wall to be distinct and separate members. Such a separation is not present in the construction imposed on the figures of D1 by the opponent. It is clear to me that D1 fails to disclose the stop portions as claimed.
81. I am satisfied the that the battens as depicted in D1 fail to disclose the provision of the discrete stop members as claimed. D1, in my view, fails to anticipate claim 1.
Conclusion on novelty
82. The opponent’s case that claim 1 lacks novelty is based on a particular construction of the claim. The opponent’s construction is not supported based on the plain meaning of the words of the claim in accordance with the general rules of construction. As I have noted above, based on a plain reading of the claim, the cover is provided with two discrete stop members. This feature is not disclosed in any of D1, D2 and D11. Moreover, with the exception of the 150mm batten of D1, the battens as depicted in these documents also fail to disclosure the particular arrangement of the tooth on the base as claimed. Consequently D1, D2 and D11 fail to disclose all the essential features of claim 1. I therefore find claim 1 to be novel over the disclosure of these references.
Inventive step
83. The statutory basis for inventive step for this opposition is set out at s7(2) and s7(3) of the Act as it stood after commencement of the Raising the Bar Act, and is reproduced below:
(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 (whether in or out of 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:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
84. The question of obviousness has been extensively considered by the courts. In particular Aickin J stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; [1981] HCA 12; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“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.”
85. In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [53], the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] where Graham J posed the reformulated Cripps question:
“Would the notional research group at the relevant date, in all the circumstances, ... directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?” (emphasis in the original)
86. Moreover, the relevant authorities have also made it clear that the question of obviousness is a question of fact that is to be determined by evidence.
87. In the present case, the opponent argues that the invention as defined in claim 1 lacks an inventive step in light of the disclosure of D1, D2, and D11 taken alone or in combination. The opponent also argues that the claimed invention lacks an inventive step in light of the disclosure of D4 and D5 taken alone or in combination with D1.
Assessment of inventive step
88. A common approach to determining inventive step is the problem-solution approach as per Wellcome Foundation. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious can then be addressed.
89. Moreover, the Full Bench of the Federal Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]-[203], effectively stated that when formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The problem being addressed
90. In written and oral submissions, the opponent summarised the problems being addressed by the instant invention as follows:
· The problem of weak interconnection.
· The problem of the base not being concealed.
· The problem of the cover sliding down a wall mounted base.
· The problem of the batten not being of light weight.
· The problem of damage occurring to the wall it is mounted on.
91. The applicant did not dispute the opponent’s summary of the problems being addressed by the instant invention. Rather the applicant sought to introduce an additional problem addressed by the invention this being the problem as to the ease of interconnection per page 1 lines 10-12 of the specification. The applicant also submitted that the claimed invention solved the problems identified by both parties.
92. In oral submissions the opponent noted that the notion of easiness was vague there was no mention in the specification as to what aspect is not easy to achieve. The applicant responded that the notion of easiness was in relation to the interconnection of the base and cover, and it was to be assessed relative to the systems of the prior art.
93. During the course of these proceedings, it became clear that there was no apparent dispute as to the nature of the problem being addressed. Nor was it disputed that the prior art under consideration was directed to the same or similar problems. Given the general agreement of the parties as to the nature of the problems being addressed, further consideration of the above identified problems is of little benefit.
The common general knowledge in the art (CGK)
94. Before proceeding further with the assessment of inventive step it is necessary to address the elephant in the room; this being the distinct lack of any evidence to substantiate or otherwise corroborate the state of the common general knowledge in the art. As I have previously noted, Mr Woodman and Mr Beattie would seem well placed to attest to what information was part of the CGK as at the relevant date. However, neither Mr Woodman nor Mr Beattie sought to tender any evidence or opinion concerning the state of the CGK in the art.
95. While there is a distinct lack of material concerning the CGK, the parties did agree in both written and oral submissions that the use of outwardly extending teeth was known in the industry (opponent’s written submissions at [7.3] and applicant’s written submission at [7.7]). When I look to the two-piece battens exhibited in evidence, I note that there are some features that are common to their construction. Such commonality is suggestive that such features may well be common knowledge, this is however superstition on my part, the relevant authorities make it clear that what constitutes the CGK is a question of fact to be determine on evidence. Given the information before me all that can be said of the state of CGK in the art is that use of outwardly extending teeth was known.
Consideration of inventive step
96. The opponent’s case for lack of inventive step centres on the disclosure of D1, D2, D11, D4 and D5. The opponent’s position was that both the prior art and claimed invention are conceptually the same and the only difference lies in the mere rearrangement of known elements. Consequently, the claimed invention constitutes nothing more than a technical equivalent or mere workshop improvement.
97. The applicant advanced that the approach taken by the opponent neglects the fact that the legs of the cover of the invention as claimed have increased flexibility over that of the arrangements of the prior art. This increase in the flexibility being provided by the separation of the inward stop members. Thus, the present invention offers an alternate solution which provides an improvement over that of the prior art.
Consideration of D1, D2 and D11 in view of the CGK
98. As has been noted, the opponent’s primary focus was on the construction of the stop portions and how these could be viewed as a part of a singular member. In oral submissions the opponent advanced that should this construction be rejected, then the provision of separate inward stop members on the legs was nothing more than a technical equivalent or workshop improvement to the singular cross member utilised by the arrangements of the battens of the prior art. As has been discussed at length above, on a plain reading of the claim it is clear that the stop portions are two separated members.
99. As I understand it, the case being put by the opponent concerning technical equivalence is that the cross member of the 150mm batten of D1 and the 65mm battens of D2 and D11 functions as a stop and prevents the cover from being forced beyond the base. The stop portions as claimed in the opponent’s view are functionally the same and thus are nothing more than a mere technical equivalent.
The question of what constitutes a technical equivalent has been considered in Allsop v Bintang 15 IPR 686, (1989) AIPC 90-615; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1993) AIPC 90-984; Winner & Anor v Ammar Holdings Pty Ltd 25 IPR 273, (1993) AIPC 90-971 and May v Higgins (1916) 21 CLR 119. From these decisions the following considerations are useful in determining whether a substitution of a particular integer of the claim is a technical equivalent:
· the characteristics of the replacement are part of the common general knowledge of the person skilled in the art and provide the same functionality in the context of the problem;
· the replacement of the prior art feature would occur at once to the person skilled in the art;
· the combination as a whole retains the same functionality in the context of the problem; and
· there are no problems or difficulties to be overcome in making the replacement.
I note there is no evidence to support the opponent’s view that the cross member of the above identified battens of D1, D2 and D11 acts in functionally the same manner to that of the stop portions as claimed. Therefore, it cannot be reasonably asserted that the characteristics of the stop portions as claimed formed part of the CGK. In addition, when I look at the various materials entered into evidence, the teaching is toward the provision of a singular cross member. In view of the prevailing teaching in the art, and lacking any evidence to the contrary, I do not think it can be reasonably said that replacement of the singular cross member with two discrete members would occur at once to the person of skill in the art. Outside the assertion that the provision of two stop members is a technical equivalent to that of a singular cross member, the opponent has failed to offer anything to substantiate their claim. The opponent has therefore failed to establish that such a substitution would in fact be considered as technically equivalent by one of skill in the art.
As I have noted above the opponent contends that the difference between the claimed invention in the prior art are nothing more than a mere workshop improvement. The expression "workshop improvement" refers to an alteration to an existing device which the person skilled in the art would have come to as a matter of routine, "proceeding along previous lines of inquiry and having regard to what was known or used" per Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545.
In the present case the opponent’s argument concerning workshop improvement is predicated on the notion that it would be obvious to remove a piece of the cross member. There is nothing in the evidence before me that suggests that the PSA would, as a matter of routine, have sought to alter the singular cross member to produce the stop portions of the invention as claimed. The opponent appears to be employing ex post facto reasoning. The various examples of the two-piece battens entered into evidence, having what can possibly be considered stops, all utilise a singular cross member. As such the battens of the prior art seemingly teach away from the provision of discrete stop portions.
Another factor that weighs against a finding that the provision of the discrete stop portions is nothing more than a technical equivalent or mere workshop improvement is the effect they have on the flexibility of the legs as opposed to the use of a single cross member. The applicant, in both written and oral submissions, noted that the single cross-member restricts the degree to which the legs of the cover of such prior art battens can flexibly move, both inwardly and outwardly. As a result, the flexing of the legs is limited to the short length of the legs between the single cross-member and the free end of the legs in such prior art battens.
The opponent in written and oral submissions did not directly address the issue of increased flexibility of the legs with respect to the battens of D1, D2 or D11. However, the opponent in written submissions did opine, during their discussion concerning the location and functionality of the teeth, on the factors that affect the bias flex of the legs. At paragraph 4.5.2 of their written submissions the opponent noted, regarding the distance from the clamping edge of the tooth on the cover to the front wall of the cover, that a longer distance from the front wall creates a larger torque on the legs and causes more flexing of the legs. To my mind the instant invention seemingly provides for a longer flexing length to that of the prior art arrangements where the flexing of the legs is limited to the short length of the legs between the single cross-member and the free end of the legs. As such the point being made by the opponent seemingly affirms the applicant’s position that greater flexibility is created in the legs of the cover of the claimed invention over that of the battens of the prior art. In oral submission the opponent conceded that greater flexibility was created in the legs of the cover of the instant invention.
When I look to D1, D2 and D11, it is apparent that flexing of the legs of the cover shown in these documents is restricted by the fact that the legs are “tied” together by the single cross-member. By contrast the legs of the cover of the claimed invention are not so restricted and are therefore provided with a greater degree of flexibility. While it is appreciated that the stop portions and the singular cross member may both act to prevent movement of the cover beyond the base, it is clear that the provision of the discrete stop portions provides additional functionality; this being increased flexibility in the legs to allow for an easier snap on engagement between the cover and base comparative to the arrangements of the prior art. Consequently, the provision of such stop portions is significantly more than a technical equivalent or mere workshop improvement.
Given the above discussion, and based on the evidence before me, I am satisfied that the invention so far as claimed involves an inventive step over the disclosure of D1, D2 and D11.
Consideration of D4
D4 is an installation manual entitled “Innoscreen concealed snap in installation manual” published August 2017. An extract from D4 illustrating the various components of the batten is reproduced below.
As shown the batten is composed of 3 parts; these include an aluminium wall fixing strip (i.e. base), a profiled fixing clip and a cover member. The fixing strip has a rear wall and arms extending from the wall, the arms each including a tooth disposed near the free end of the arm. The clip includes a base and legs extending from the base, the legs including teeth positioned near the free end of the legs. The cover includes a cross member to which the clip is fixed by a suitable fastener. The cover also includes a pair of legs that extend outwardly from the cross member. In use the teeth on the base and clip interconnect to secure the cover over the base such that the legs of the cover conceal the base.
In written and oral submissions, the opponent advanced that PSA would have been led as a matter of course and/or taken it as a matter of routine to combine the clip and cover into a single member to create a two-piece batten. The opponent did not offer any evidence to substantiate or otherwise corroborate this statement.
When I consider the modification of D4 proposed by the opponent it is clear that it has been done with the claimed invention in mind. The question of inventive step is not whether it is possible to modify D4 to produce something that seemingly aligns with the claimed invention. The proper question is, given the disclosure of D4 and the CGK, is what is claimed obvious? D4 clearly teaches the provision of a three-piece batten. There is nothing in the teaching of D4 that would lead or otherwise motivate the PSA to modify the three-piece batten in the manner suggested by the opponent. In addition, even if the PSA were inclined to make such a modification to D4, it would not result in the claimed invention as there is nothing in D4 that would point the PSA toward the provision of discrete stop portions as presently claimed.
In light of the above it is apparent that significant input would be required on the part of the PSA to modify the disclosure of D4 to produce an arrangement similar to that of the claimed invention. Such an effort goes well beyond what could be considered to be a simple matter of routine. On the basis of the evidence before me, I am satisfied that the invention as claimed involves an inventive step over D4.
Consideration of D5
D5 is an extract from a website (i.e. obtained from the internet archive, and entered along with it are references to two YouTube presentations, referenced on the website, having posted dates of 21 May 2018 and 9 November 2017 respectively. The opponent in oral submissions focused on a screen capture from one of the YouTube videos as reproduced below.
S
In written and oral submissions, the opponent noted that the batten as shown in the above figure is a two-piece batten which includes a base and a cover which conceals the base. The base includes outwardly extending arms, each arm including a tooth disposed at the free end. The cover includes a pair of legs each including an inwardly projecting tooth and an inwardly projecting stop portion, being the lip identified as integer S in the above figure. The inward stop portion engages with a section of the base. The opponent submitted that the inward stop portions prevent the cover from being pressed over the base such that the free ends of the legs are unable to contact or damage the mounting surface.
The opponent also noted that D5 does not disclose the provision of inward stop portions between the inward tooth and the front wall of the cover. The opponent’s submission is that the difference between D5 and the claimed invention resides only in the positioning of the inward stop portions. The difference in the opponent’s view concerns nothing more than a mere matter of routine design choice. I note here that the argument advanced by the opponent concerning design choice is similar to the position advanced in relation to technical equivalent and workshop improvement discussed above.
The applicant at paragraph 10.2 of their written submissions accepts the opponent’s summary of the disclosure of D5. The applicant, in both written and oral submissions, points out that no evidence has been provided as to what would be considered a matter “routine” or “routine or design choice” by the PSA. Without such corroborating evidence the argument advanced by the opponent is speculative and does not satisfy the statutory test for inventive step.
On consideration of the opponent’s argument, they appear to have employed a degree of hindsight in their analysis of the question of inventive step. It seems that they have sought to mount their case for inventive step starting from the claimed solution. Armed with this information the opponent then seeks to determine how one could then manufacture the invention of the instant application from D5. In addition to this the opponent’s argument also ignores that D5 does not appear to disclose each arm having an outward tooth projecting from an outer side of the arm at a position closer to the rear wall than to the free arm end of the arm. Consequently, more than a simple modification to the position of the stop member would be required to align the batten of D5 with the batten as claimed. This additional input weighs against a finding in favour of the opponent’s case in relation to a lack of inventive step.
In any event D5 clearly discloses a specific arrangement of features to interconnect the base with the cover. There is nothing in the teaching of D5 that would lead or otherwise motivate the PSA to modify the specific arrangement of features in the manner suggested by the opponent. The lack of any evidence as to what would be considered routine in the art also weighs against a finding in favour of the opponent’s case.
Moreover, when I look to the materials in evidence before me, the bulk of the exemplified two-piece battens are of a similar construction, i.e. all use some form of base/mounting plate which includes one or more teeth that interconnect with a corresponding structure on the cover. The covers of each of the battens in evidence are also of a similar construction, consisting generally of a rectangular hollow section and including a cross member positioned between the front wall of the cover and free leg ends. The cross member may in some cases act as a stop to prevent further movement of the cover over the base. It therefore appears that the conventional or routine thinking in the art tends toward the provision of a singular cross member between the front wall and the free leg ends. This suggests that the arrangements such as that disclosed in D5 run contra to what would be considered as the routine design for such battens.
In light of the forgoing, the opponent has not sufficiently demonstrated that the difference between D5 and the invention as claimed constitutes nothing more than a mere routine design choice. I am satisfied on the evidence before me that the invention as claimed involves an inventive step over the disclosure of D5.
Combination of D1 with any one of D2, D11, D4 and D5
In their submissions at the hearing the opponent pressed that the invention, so far as claimed, lacks an inventive step in light of the combination of D1 with any one of D2, D11, D4 and D5. I note, however, that the opponent, neither in written nor oral submissions, sought to address the question of whether such a combination would be made by the PSA.
In order for a valid combination of documents to be made for the purposes of inventive step it must be shown that there is a reasonable basis or some motivation, either in the references themselves, or in the knowledge generally available to the person skilled in the art, to modify the reference or to combine reference teachings. In the present case the bulk of the documents relied upon are simply technical drawings showing various measurements and tolerances. There is nothing in these documents that could be considered to provide the necessary motivation to lead the PSA to combine or otherwise modify the references as suggested by the opponent.
Consequently, the opponent has failed to establish that the various documents would be combined by one of skill in the art in the manner suggested. Even if the combinations proposed by the opponent per their written submissions were made, the resulting combination would not produce the claimed invention. As I have discussed above, the documents in question fail to disclose a number of salient features of the claim. The combination of the references in the manner suggested by the opponent fails to remedy these deficiencies.
Consequently, the opponent’s case that the invention lacks an inventive step in light of D1 when combined with any one of D2, D11, D4 and D5 fails.
Conclusion
I consider that claim 1 is clear and succinct. The opponent has not established that the documents relied upon contain sufficient disclosure to render claim 1 as lacking novelty. Nor has the opponent established based on the evidence submitted in these proceeding that the invention as defined in claim 1 lacks an inventive step. Since claim 1 is the only independent claim, it follows that the dependent claims are also, clear, novel and inventive. Consequently, the opposition fails on all grounds.
Subject to appeal, I direct that the application proceed to grant.
Costs
Neither party made submissions as to costs. The normal approach is that costs should follow the event. I see no sufficient reason to depart from this approach. The opposition is unsuccessful. Accordingly, I award costs in accordance with Schedule 8 against the opponent AliWood Pty Ltd.
Neil Miller
Delegate of the Commissioner of Patents
0
3
4