Arx Pty Ltd v Lockwood Australia Industries Pty Ltd

[1997] APO 20

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 652160 in the name of ARX PTY LTD

Title:          A Lock Barrel Assembly and Key Therefor

Action:          Opposition by LOCKWOOD AUSTRALIA INDUSTRIES PTY LTD under Section 59 of the Patents Act 1990

Decision:          Issued            .

Abstract

Opposition grounds of non-compliance with section 40, lack of novelty and lack of inventive step considered.

The invention primarily relates to a lock barrel assembly in which one or more disks are rotated to a predetermined position upon insertion of a key.  At least one locking bar operatively associated with each disc moves from a radially outer to a radially inner position when each disc is located in its predetermined position by the key.

On the evidence the specification did not make the nature of the invention clear to the comprehension of persons “having a reasonably competent knowledge of the subject” (Samuel Taylor Pty Ltd v SA Brush CoLtd (1950) 83 CLR 617 followed). There was no disclosure of the contribution made by the features said to characterise the invention in its broadest form to lock operation except in the context of the preferred embodiment. Claim 1 found to lack clarity and fair basis since it went beyond the matter disclosed in the specification (Olin Corporation v SuperCartridge Co Pty Ltd (1977) ALJR 525 followed)

It was not possible to reasonably deduce a problem which is solved by claim 1 and it was therefore appropriate to consider the question of inventive step by following the course adopted in AllsopInc v Bintang Ltd (1989) AIPC 90-615. Claim 1 found to lack an inventive step since on the evidence its only distinguishing feature amounted to a simple reversal in the technical sense of conventional practice.

Claims to a key for operating the lock of claim 1 found to lack novelty.

Opposition succeeds on all grounds.  Applicant afforded an opportunity to propose appropriate amendments.   

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 652160 by ARX Pty Ltd and opposition by Lockwood Australia Industries Pty Ltd under Section 59 of the Patents Act 1990

background

Patent application 652160 by ARX Pty Ltd (“ARX”) was filed on 17 May 1991 as PCT/AU91/00217 claiming priority from provisional application PK 0244 filed on 21 May 1990.  The application was advertised accepted on 18 August 1994.

Lockwood Australia Industries Pty Ltd (“Lockwood”) filed a notice of opposition to the grant of a patent on the application on 18 November 1994 followed by a statement of grounds and particulars on 17 February 1995.

On 17 May and 21 July 1995 Lockwood filed separate requests under regulation 5.9 to amend the statement of grounds and particulars.  ARX objected to both requests.  On 15 June 1995 ARX filed a request for directions under regulation 5.10 which was objected to in part by Lockwood.  Following a hearing on 1 September 1995, the Commissioner’s delegate decided to allow the amendments requested to the statement of grounds and particulars but refused the request for directions.

Lockwood served its evidence in support on 19 May 1995, however, ARX did not serve any evidence in answer within the period allowed by the delegate hearing the requests for amendment and directions, that is, by 3 February 1996.

A hearing to determine the substantive opposition was set down for 18 September 1996 in Canberra.  On 6 September 1996 Ms Kerry Moore Chrysiliou, patent attorney with Chrysiliou Moore Martin, advised that for various reasons representations would not be made on behalf of ARX either at the hearing or in writing.  On 13 September Mr Terrence J Collins, patent attorney with Phillips Ormonde & Fitzpatrick, advised that in the circumstances Lockwood did not intend to appear at the hearing and would instead rely on written submissions.

the specification

The specification commences by indicating that the invention relates to key operable locks.

The specification explains that conventional locks consist of a lock barrel rotatably received within a lock body.  The lock is operable by a key having a key blade which is profiled so as to cause  spring loaded pins provided in the lock barrel to adopt a predetermined position thereby allowing the lock barrel to be rotated relative to the lock body from a locked to an unlocked position.   In some locks rotation of the barrel relative to the lock body is prevented by a side locking bar.  When the pins are properly positioned by the key, the locking bar is allowed to move to a position at which the barrel is free to rotate relative to the lock body.

According to the specification, these conventional locks are prone to tampering and may be “picked” with relative ease.  In addition, the number of possible combinations is limited.  The lock barrel is of complex construction and is therefore expensive to manufacture, repair or alter, requiring a vast number of parts to be held in stock by locksmiths.  The specification then states that it is an object of the invention to overcome or at least substantially alleviate some or all of the aforementioned disadvantages.

The specification ends with fifteen claims in all of which claims 1 and 12 read as follows:

“1. A lock barrel assembly operable by a key and adapted to be received within a hollow lock body, the lock barrel assembly comprising a hollow base having a longitudinal axis, at least one disk rotatably supported in the base and extending generally normal to the axis, the or each disk having an aperture for passage of the key, a key engaging means adjacent the aperture and adapted to engage the key so that the key is capable of locating the or each disk at a predetermined position about the longitudinal axis without rotation of the key, and at least one locking bar operatively associated with the or each disk and adapted to move radially relative to the longitudinal axis from an outer position to an inner position only after the or each disc is located in its predetermined position by the key, characterised in that the or each disc includes a projection or pin adapted to be received in a slot, groove, hole or the like in the or each locking bar.

12. A key for operating the lock barrel assembly as claimed in any one of claims 1 to 11, wherein the key bears at least one longitudinal angled track cut into a curved surface, the track being adapted to receive the key engaging means.”

statement of grounds and particulars

The statement as twice amended indicates that the grounds relied upon by Lockwood are lack of novelty, lack of inventive step, and non-compliance with section 40.

The particulars refer to a number of patent specifications and commercially available lock and key assemblies which are said to either disclose the claimed invention or establish that the features which make up the claimed invention formed part of the common general knowledge, or at least were publicly known, at the priority date of the claims.

The particulars also refer to a number of alleged defects in the specification.

EVIDENCE

The evidence in support consists of two statutory declarations, the first of which has been made by Hans J Esser and includes exhibits HE1 to HE22 and HE25 to HE33.  Mr Esser is the research manager of Lockwood, a position he has held since 1991.   Mr Esser states that since commencing employment with Lockwood in 1972 he has been involved in the design and operation of locks and as a result is familiar with the various types of locks used in Australia before the priority date.  He then comments on the state of the art in Australia as follows:

“7.1 Tumbler locks are the locks most commonly used for general purposes around the world.  Several million such locks would have been in use in Australia before 1990.

7.2 There are several different types of tumbler locks, and the two types which enjoyed predominant use throughout the world and Australia before 1990 are the pin tumbler and the disk tumbler cylinder locks ...

......

7.4 Disk tumbler locks fall into two general categories.  In one category the disks move radially of the barrel axis, whereas in the other the disks rotate about an axis which may or may not be coincident with the barrel axis ... “

I note by way of explanation that the present invention is concerned with disk tumbler locks of the latter type.  Mr Esser goes on to state that the ABLOY lock is one example of a rotatable disk tumbler lock which was well known in Australia before the priority date.  One of the earlier versions of the ABLOY lock is disclosed by exhibit HE8, while exhibit HE5 is said to relate to subsequent forms of the lock in use in Australia prior to 1980.  Although insertion of a key into an ABLOY lock will cause some rotational movement of the disks, it is generally necessary to rotate the fully inserted key to place all disks in the rotational position at which rotation of the lock barrel  relative to the lock body towards the lock release position is possible.

The INGERSOLL lock (exhibits HE9 to HE11) is another example of a well known lock in which the tumblers are correctly positioned through coaction with the key.  However, unlike the ABLOY lock, the tumblers are in the form of plates rather than disks which pivot solely as a consequence of longitudinal movement of the key into the keyway.  In other words, the plates of the INGERSOLL lock adopt their correct position without the need to rotate the fully inserted key.

Still another well known lock is the NORMAN rotatable disc tumbler lock (exhibit HE14) which has rotatable disk tumblers and in that respect is similar to the ABLOY lock, but it is also similar to the INGERSOLL lock in that it relies solely on longitudinal movement to correctly position the disks.

According to Mr Esser, the use of side locking bars in rotatable disk or plate tumbler locks was also well known in Australia before the priority date. When the tumblers in the ABLOY or INGERSOLL lock are placed in the correct position, the side locking bar is able to move into a cavity provided in the outer surface of each tumbler and thereby free the locking bar from its engagement with an opposed edge of the lock body such that the lock barrel can be rotated towards the lock release position.  It was similarly known to use a side locking bar in pin tumbler locks, and an example of such use is the MEDECO lock (exhibits HE12 and HE13).  In this type of lock the side locking bar has a series of projections each of which is locatable within a respective cavity formed in the pin tumblers, and such location enables the side locking bar to move radially inwards and thereby release the lock barrel for rotation.  Mr Esser states that this arrangement of the side locking bar is a development of that initially adopted in disk tumbler locks.  The ASSA TWIN COMBI LOCK (exhibit HE22) and the SCHLAGE PRIMUS pin tumbler lock (exhibits HE25 and HE26) both utilise a “reversed” side locking bar arrangement in which projections formed on the lock tumblers are received in cavities in the locking bar.

After providing a detailed analysis of the present specification, Mr Esser concludes that the invention claimed by claim 1 is distinguished from the prior art disk tumbler cylinder locks referred to in evidence by virtue of the particular manner of cooperation between the side locking bar and the disks whereby the locking bar receives part of each disc.  Mr Esser contends that this is simply a reversal of conventional practice in which the disks are constructed so as to receive part of the locking bar when it is in the unlocking position.  He further contends that the side locking bar arrangement of the present invention formed part of the common general knowledge through its use in pin tumbler locks, and the disk tumbler lock to which that system is applied in accordance with claim 1 also formed part of the common general knowledge. 

As regards the invention claimed by claim 12, Mr Esser offers the following comments:

“7.22 Pin tumbler and disk tumbler cylinder locks are operated by a key, and the key has unique shape characteristics which are designed to suit the combination of the particular lock which it is to operate.  The shape characteristics are sometimes called bittings, and in a key intended to operate a pin tumbler lock the bittings will be usually formed by undulations or peaks and valleys formed along a surface of the key.  The bittings function to move and position the pin tumblers so that when the key is fully inserted into the keyway the tumblers will be held at a position such that the lock barrel can be rotated.

......

7.24 A key for a disk tumbler will function in generally the same manner as a key for a pin tumbler lock, but the unique shape characteristics of the two keys may be formed differently for the purpose of achieving control of tumbler position.  Examples of such differently formed keys are the ABLOY and OGDEN keys which are disclosed by documents HE5 and HE20 respectively.  Each of those keys has angularly arranged surfaces which coact with the tumblers in such a way as to place each tumbler in a predetermined position when the key is correctly located in the keyway, and in that respect they function in the same manner as the typical key for a pin tumbler cylinder lock as shown by HE4.”

Mr Esser then asserts that the keys discussed above are examples of keys which were well known and widely used in Australia before the relevant date.  According to Mr Esser it is a common feature of those keys that lock tumbler position is controlled by surfaces of the key which are arranged angularly relative to the longitudinal axis of the key blade.

Mr Esser’s declaration additionally serves to introduce the majority of the particularised patent specifications into evidence and to establish their relevance to claim 1 (the lock invention) and/or claim 12 (the key invention).

The second declaration filed as evidence in support has been made by Mr Collins, the patent attorney representing Lockwood, which exhibits and provides comment on the disclosures of the remaining particularised patent specifications.

The evidence in support is supplemented by written submissions from Mr Collins.  I will refer to both in more detail later in this decision.  I note here in passing that in the absence of any evidence in answer there is nothing before me to counter any assertions or submissions made on behalf of Lockwood.

decision

Section 40

The main criticism levelled against the specification under this ground revolves around the passages

“at least one locking bar operatively associated with the or each disk and adapted to move radially relative to the longitudinal axis from an outer position to an inner position only after the or each disk is located in its predetermined position by the key”

and

“characterised in that the or each disk includes a projection or pin adapted to be received in a slot, groove, hole or the like in the or each locking bar.”

in claim 1 and the consistory statement on page 2.

Mr Esser argues that while establishing that some form of cooperation occurs between the disks and the locking bar, the second passage does not qualify whether such cooperation takes place when the locking bar is in its inner or outer position, nor does it identify the purpose of such cooperation.  He says with regard to the latter point that

“I assume that the cooperation is to enable the lock assembly to adopt an unlocked condition at which the barrel can be rotated relative to the lock body, and I make that assumption purely on the basis that some kind of cooperation occurs between the disks and the locking bar for that purpose in previously known lock assemblies of the same kind.” (my emphasis)

Mr Esser then submits that despite having made this assumption he still finds difficulty in giving a clear meaning to the passage in question.  Mr Esser explains that whereas previously known tumbler locks typically utilise an arrangement in which movement of the locking bar to the radially inner position places the lock in an unlocked condition to enable rotation of the lock barrel assembly within the lock body, such an arrangement is described and claimed by the present specification as being merely preferred.

I am guided when considering Mr Esser’s submissions by the principles of construction which were summarised by Sheppard J in Decor Corp v Dart Industries 13 IPR 385. In particular I note that although the specification must be read as a whole in approaching the task of construction, it is not legitimate to narrow or expand the scope of words in a claim by adding glosses from other parts of the specification. On applying these principles to the present circumstances I find myself in agreement with Mr Esser since claim 1, construed in isolation, does not make clear the purpose to be served by the cooperation between the disk(s) and the locking bar(s) defined in the characterising portion of the claim or the circumstances under which such cooperation takes place. In fact the characterising portion of claim 1 does not impose any clear limitation at all on the parts of the claim which precede it. I am further of the view that claim 1 is still unclear even if reference is had to the body of the specification. On page 7 it is stated:

“As indicated above, the locking bar has two positions.  In the first or outer position, the locking bar is preferably retained in a groove in the hollow lock body and while the locking bar is in this position, the lock cannot be opened.  The locking bar is retained in this position by external projections or pins on the disks.

When the correct key is inserted in the lock barrel assembly, the disks are rotated so that the external projections or pins align with the slots, grooves, holes or the like in the locking bar.  By turning the key, the locking bar is pushed from its groove in the hollow lock body and meshes with the projections or pins.  Thus the lock barrel assembly can rotate, permitting unlocking.”

It is evident from the specification that the features described above, which are central to the issue at hand, are not essential to the invention but have instead been referred to only in the context of a preferred embodiment of the invention. There is no suggestion that claim 1 is to be confined to these preferred features and from the evidence of Mr Esser I am satisfied that a skilled reader of the specification would not restrict claim 1 in this way.

Although not specifically raised by Lockwood, there is another matter of concern which has arisen by virtue of Mr Esser’s evidence.  I have already mentioned that the interpretation which Mr Esser has placed on claim 1 in the light of his background knowledge of the art, both as regards the circumstances under which the locking bar(s) cooperate(s) with the disk(s) and the result achieved, is not in keeping with statements made elsewhere in the specification and claims.  As a result of this incongruity Mr Esser draws the conclusion that claim 1 and the corresponding consistory statement extend to arrangements in which inward movement of the locking bar does not necessarily free the lock barrel assembly for rotation, and is permitted by means other than the cooperation mentioned in the second passage above.  Mr Esser states that “I cannot determine what those other arrangements might be.”

Section 40(2)(a) requires that a complete specification must describe the invention fully, including the best method known to the applicant of performing the invention. The applicable principles are stated in Samuel Taylor Pty Ltd v SA Brush Co Ltd (1950) 83 CLR 617 at 624-5 in the following terms:

“On the one hand, the patentee must make the nature of his invention, and how to perform it, clear and intelligible; on the other hand, it is not necessary for him to instruct persons wholly ignorant of the subject matter to which his invention relates, in all that they must know before they can understand what he is talking about.  The patentee is adding something to what was known before, and he does all that is necessary as regards the language that he uses, if he makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which his patent relates, and having reasonably competent skill in the practical mode of doing what was then known.”

There is no question here of the best method of performing the invention not having been described.  Nevertheless I note that the specification is almost entirely devoted to setting out various preferred aspects of the invention and, as indicated above, it is only in this context that the specification provides guidance on how the features to which Mr Esser has referred, and which are in fact said to characterise the invention, contribute to its operation.  Apart from the preamble and the consistory statement (which is itself  deficient for the reasons I have already discussed in relation to claim 1), there is no other description which is possibly of assistance in determining     what departures from the preferred embodiment are envisaged by the invention in its broadest form as regards the manner in which these features relate to each other in operation of the present lock barrel assembly.   Given these circumstances and the evidence of Mr Esser which is uncontested by ARX, I am led to believe that the information given in the specification does not suffice to make the nature of the invention clear to the comprehension of persons “having a reasonably competent knowledge of the subject”. 

Furthermore, it seems to me from the way the specification has been drafted that the present invention does not extend to a lock barrel assembly which operates other than in the manner set forth in the detailed description. Having regard to the issues already discussed in relation to section 40, claim 1 in my opinion includes within its scope lock barrel assemblies which have been neither described nor exemplified and, as a consequence, “travels beyond the matter disclosed in the specification” (Olin Corporation v Super Cartridge Co Pty Ltd (1977) ALJR 525). Claim 1 therefore lacks fair basis.

It was also argued for Lockwood that it is not clear from the first passage above whether there is a separate locking bar for each disk if more than one disc is present, or if there is more than one locking bar each such bar is associated with the or each disk.  I agree and note in passing that while the specification contains the following statement on page 3

“Preferably, two or more disks are used ... However, it is to be understood that the invention is operable with only one disk.

......

For the sake of economy, it is convenient if there is only one locking bar in the assembly of the invention.”

nowhere does it identify what other disk/locking bar permutations are contemplated by the present invention or how these may be put into effect.

There are a number of additional matters listed in the statement of particulars under this ground of opposition which require discussion.  Regarding particular 3.2(g), I agree that due to its indefinite nature claim 10 introduces an apparent inconsistency when read in conjunction with claim 1 and would add that in my opinion this claim lacks fair basis since it is evident from the description of the “anti-pick” option illustrated in Figure 5 of the accompanying drawings that the “means” of claim 10 only prevents rotation of the disks by picking, ie, rotation without insertion of the key.  There is no disclosure of any other arrangement in which means are provided to prevent the disks from rotating.  I also agree that claim 6 is not clear as a result of its failure to specify either the purpose or the location of the disk-like washer(s).  Similar coments apply to claim 13 as regards the relative location of the second track.

Of the remaining section 40 matters raised only one has presented Mr Esser with any difficulty, namely, the meaning of the wording “angle supporting the arc of rotation” which appears in the body of the specification between lines 20 and 22 of page 4.  However although lacking in precision this wording in no way affects the description of the general nature of the invention or its best method of performance and so does not give rise to an objection under section 40. 

In summary, I have found that:

. claims 1, 6, 10 and 13 are not clear
. claims 1 and 10 are not fairly based on the matter described in the specification
. the specification does not fully describe the invention.

Consequently, I conclude that the specification does not comply with section 40(2) and (3). 

Novelty

The basic test for anticipation or lack of novelty is the so-called reverse infringement test  - see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 and Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at 235. In applying this test I must ascertain whether “each and every one of the essential integers” of the present claims are taken by any one of the patent specifications upon which Lockwood relies (Rodi Wienenberger AG v Henry Showell Ltd [1969] RPC 367). I will now consider these specifications in detail.

The Lock Invention

GB 1254482

This specification discloses one example of the ABLOY rotatable disc tumbler lock which differs from the lock barrel assembly claimed by claim 1 in two respects.  Firstly, in the ABLOY lock the key must be rotated in order to effect rotation of the discs whereas in accordance with claim 1 the discs can be located at their predetermined positions about the longitudinal axis of the base by the key without rotation of the latter.  And secondly, the locking bar used in the ABLOY lock is not adapted to receive a projection or pin formed on each disc as required by claim 1; rather, the locking bar is itself received in notches formed in the discs.

The evidence and submissions for Lockwood are to the effect that the differences identified above are of no practical consequence, which I interpret as an assertion that the features in question do not materially affect the way the invention works (as per Catnic Components v Hill & Smith Ltd (1982) RPC 183) and are therefore not essential features of claim 1.

In applying the reverse infringement test the courts have held that a limitation expressed in a claim prima facie must be given full effect, as indicating a deliberate exclusion of everything not within the words of the claim (see eg CatnicComponents v Hill & Smith Ltd (supra) and Yamazaki Mazak Corp v Interact Machine Tools 22 IPR 79). I am also mindful of the comments of Hill J in AdvancedBuilding Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) AIPC 91-017 at 39,543:

“ The determination of what is an essential or inessential integer of an invention will involve, where the question arises in relation to a patent specification, the interpretation of the patent itself.”

and I note in this regard that the construction of patent specifications is ultimately the responsibility of a tribunal of this type.  In the present case there is nothing in the specification (subject to my discussion above when considering the specification against section 40) to suggest that any of the features claimed by claim 1 do not materially affect the way the invention works, that is, are inessential.  As a result I conclude that all the features of claim 1 are essential to the invention.

On the basis of the foregoing, GB 1254482 does not disclose all the essential features of claim 1.  GB 1256794 and 2173852, and AU 62093/80 similarly fail to disclose all the essential features of claim 1.

GB 641072

This specification, which is said by Mr Esser to disclose a lock of the kind employed in INGERSOLL locks, was not expressly listed by the statement of grounds and particulars and thus cannot be used in these proceedings as a basis for arguing lack of novelty (Mobay Corporation vDow Chemical Company (1992) AIPC 90-895). In any event, the lock disclosed by GB 641072 does not include rotatable discs which cooperate with a locking bar as required by claim 1 but instead incorporates a number of pivoted levers and a pivoted talon adapted to enter a series of slots in the levers when the latter are properly positioned by a key. Consequently, GB 641072 falls short of disclosing all the essential features of claim 1.

AU 77173/81

This specification discloses an example of the ABLOY rotatable disc tumbler lock in which projections on each disc are adapted to be received in corresponding apertures formed in the locking bar.  The specification indicates that in accordance with conventional practice the key turns each disc through a certain predetermined angle, but is not clear as to whether this occurs without rotation of the key.  Mr Esser states that in the lock disclosed by AU 77173/81

“there must necessarily be some disc rotation as the key is moved longitudinally into the keyway, but assuming the key is of the standard ... type I would expect that final rotation of at least some of the discs into their predetermined positions would occur only after turning movement of the fully inserted key.”

Given the evidence of Mr Esser and his relevant expertise, I conclude that AU 77173/81 does not disclose a lock in which each disc is properly located without rotation of the key and, consequently, this specification omits an essential feature of claim 1.

AU 86467/82

The rotatable disc tumbler lock disclosed by this specification includes one of the features of claim 1 missing from the ABLOY lock of GB 1254482, namely, a key which is capable of properly locating the discs without rotation of the key.  Nevertheless there is again no disclosure of each disc having a projection or pin adapted to be received in a slot or the like in the locking bar. Similar comments apply in respect of FR 2384922, and US 1616255 and 1589256.
AU 13901/88

The lock disclosed by this specification is said by Mr Esser to be representative of the ASSA TWIN COMBI lock referred to in his evidence in support.  The tumblers used with this lock are not comprised of rotatable discs as required by claim 1, nor do the tumblers include a projection or pin adapted to be received in a slot or the like in the locking bar.   The tumblers are instead in the form of locking pins which are non-rotatably guided for linear movement to a predetermined position where a series of projections on the locking bar are received in corresponding recesses in the pins.  As a consequence, AU 13901/88 does not provide all the essential features of claim 1.

BE 859334

This specification is of little assistance to my consideration of the question of novelty since it has not been accompanied by a verified translation.  Even if I were to assume that the submissions put forward by Mr Collins regarding the alleged disclosures of BE 859334 were based on an accurate translation from the French language, those submissions would merely serve to establish that there is no more disclosure in BE 859334 of the invention claimed by claim 1 than as already stated for GB 1254482 or AU 86467/82.  I therefore conclude that this specification does not disclose all the essential features of claim 1.

EP 0088012

Whilst this specification has not been translated into English, it is evident from the accompanying drawings that the lock they depict comprises a number of discs which are rotatable to a predetermined position by a key.  It is, however, also apparent that the discs do not cooperate with the locking bar in the manner specified by claim 1, and there is nothing to suggest that the discs may be rotated without rotation of the key.  Consequently, EP 0088012 fails to disclose all the essential features of claim 1.

Exhibit HE25

This exhibit comprises a number of pages reprinted from the December 1991 edition of Keynotes Magazine which disclose the SCHLAGE PRIMUS lock referred to in evidence.  Apart from the fact that this lock differs from claim 1 at least with regard to the nature of the tumblers, it is clear that the material in question was not published before the priority date (or for that matter before the filing date) which is of course an essential prerequisite to a finding of lack of novelty.  I therefore give no further consideration to exhibit HE25 or, for the same reasons, exhibit HE22.

The Key Invention

AU 62093/80

The key disclosed by this specification has a circular cross-section from which cylindrical segments are removed to form surfaces which operate to rotate the locking discs upon rotation of the key.  Although I agree with Mr Collins that these surfaces may be regarded as having been formed or “cut into” a curved surface, I do not see that they are equivalent to the longitudinal angled track(s) of claim 12 particularly when account is taken of the meaning ascribed by both Mr Collins and Mr Esser to the terms “longitudinal” and “angled” in the context of the specification.
In any case it must be remembered that claim 12 is directed to a key “for” operating the lock barrel assembly as claimed in any one of the preceding claims.  As stated in paragraph 10.8.9 of the Manual of Practice and Procedure (Vol 2), the word “for” when used in claims directed to a product or apparatus places a limitation on what is claimed to the extent that it must be suitable for the purpose specified.  As acknowledged by Mr Collins, that suitability imposes the following limitations on the key claimed by claim 12:

(i)  the key must be engageable with the key engaging means of the rotatably supported discs so as
     to be capable of locating the discs in a predetermined position ; and
(ii) the above disc location requirement must be achievable without rotating the key.

The locking discs disclosed by AU 62093/80 are said to be “turnable [to the lock release position] with a key” (emphasis added) which I take to mean that the second functional requirement identified above is not satisfied by the key of AU 62093/80.  Consequently, this specification does not disclose all the essential features of claim 12.  Similar comments apply in respect of US 4109495 and 4109497.

AU 60221/80

The key disclosed by this specification does not have a track which is formed in a curved surface, nor is there any suggestion that the key is capable of properly locating rotatably supported discs as  required by claim 1.  Similarly for AU 13901/88 and 15796/34.

AU 86467/82

This specification discloses a key having a key blade which is twisted along at least part of its length.  However, contrary to the argument pressed on behalf of Lockwood, the twisted section of the key blade does not in my view form at least one angled track adapted to receive key engaging means since on page 13 it is stated that rotation of the discs is effected by cooperative engagement between “the camming surfaces 43 of the blade 33 and the camming faces 17 of the discs 2”.  As a consequence I conclude that AU 86467/82 does not disclose all the essential features of claim 12.

GB 1260511

The key disclosed by this specification comprises a pair of tumbler control surfaces which project from opposite sides of a central rib.  Aside from the fact that the control surfaces only partly extend at an angle to the longitudinal axis of the key blade, I am not convinced that each of these surfaces constitutes a “track cut into a curved surface” which is adapted to “receive” key engaging means on the lock tumblers.  Furthermore, the key of GB 1260511 serves to lift a number of plate tumblers and there is no suggestion that it may also be used to locate rotatably supported discs at predetermined positions about the longitudinal axis of the lock as required by claim 1.  I therefore consider that this specification does not disclose all the essential features of claim 12.

FR 2384922

Mr Esser declares that exhibit HE19 is a translation of FR 2384922, but has not filed any evidence verifying that exhibit HE19 is in fact a true and accurate translation of that document (cf regulation 8.6(2)).  Although exhibit HE19 does not include any drawings which can be compared with the drawings accompanying FR 2384922, I note that the layout (including the relative location of figure references and reference numerals) of both documents is the same.  There are two other factors which favour Lockwood here.  Firstly, FR 2384922 was cited as a document of particular relevance to the claimed invention (a so-called “X” category document) in the international search report which issued in respect of the present application prior to its entry into the national phase, and thus ARX was clearly aware of the existence of this specification and its disclosure well before these proceedings.  And secondly, a translation of FR 2384922 conducted pursuant to regulation 5.11 has revealed that exhibit HE19 is indeed an accurate translation from the French language.

In view of the above considerations, and the absence of any contrary evidence from ARX, I accept exhibit HE19 as being a translation of FR 2384922 and will proceed on that basis to consider its disclosure for novelty purposes (as per Toyota Jidosha Kabushiki Kaisha v Orbital Engine Company (Aust) Pty Ltd, unreported decision on application 638054, issued 28 December 1995).

The key disclosed by this specification bears a sinuous groove in its shank which receives key engaging means to locate a number of rotatable discs at predetermined positions about the longitudinal axis of the lock without rotation of the key.  Mr Collins has argued that a “multi-angled” track such as a sinuous groove is embraced by the language of claim 12, and with this I agree.  Furthermore, although the disks do not include a projection or pin adapted to be received in a slot or the like in a locking bar when the discs are located at their predetermined positions, the means by which the discs and locking bar cooperate is quite distinct from the operation of the key and therefore does not confer a capability on the key claimed by claim 12 which is not found in the key of FR 2384922.

On the basis of the foregoing, I consider that this specification discloses all the features of claim 12.

Claim 15 is an omnibus claim which claims a key “as claimed in claim 12 substantially as herein described with reference to Figure 2”, and is therefore restricted to the essential features of claim 12 insofar as they are described with respect to that figure of the accompanying drawings.  The specification in referring to Figure 2 does not add anything of substance beyond what is already claimed by claim 12 and, consequently, I consider that FR 2384922 discloses all the essential features of claim 15. 

By the same reasoning, I conclude that US 1616255 and 1589256 disclose all the essential features of claims 12 and 15.

The key disclosed by each of the above-referenced documents does not, as implied by Mr Esser, include two tracks as claimed by claim 13.  Nevertheless it is not evident from the claim or the body of the specification that the simple addition of a second track materially affects the way the key works and, consequently, this feature does not in my view constitute an essential feature of the present invention.

Summary

I have found that none of the documents relied on by Lockwood disclose all the essential features of claim 1.  Consequently, and having regard to the reverse infringement test, I conclude that none of these documents deprives claim 1 of novelty.

I have also found that FR 2384922, and US 1616255 and 1589256, disclose all the essential features of claims 12 and 15, and differ from claim 13 only in respect of an inessential feature.  I therefore conclude that claims 12, 13 and 15 are not novel over these specifications.

Inventive Step

Admissibility of Evidence

As a procedural issue I note that there are a considerable number of documents in evidence which were not raised in the statement of particulars in support of this ground of opposition.  However in my opinion the documents concerned have been relied on to exemplify the particularised common general knowledge in the art and, accordingly, are admissible as evidence (see Cooper Industries Inc vMetal Manufactures Ltd (1994) AIPC 91-051).

Even so, the documents comprising exhibits HE4 to HE6 and HE10 to HE13 provide very little detail of the locks they disclose and/or have not been accompanied by confirmation of their publication dates and the extent of their circulation within the lock industry in Australia.  I note with regard to the latter that some of these documents appear to be of US origin.  Furthermore, exhibit HE7 merely presents some unsubstantiated assertions regarding the so-called ABLOY lock made by a person who does not qualify themself as having had any experience in the art, and I fail to see the relevance of exhibits HE32 and HE33 given that the present invention is not characterised in terms of a removable lock barrel assembly.   I am therefore of the view that this material is not of any assistance to Lockwood in these proceedings.

The Lock Invention

It is clear from section 7(2) of the Patents Act 1990 that the question of inventive step has to be considered against the background of the common general knowledge in the field of the invention. As to what constitutes common general knowledge, in his judgement in Minnesota Mining andManufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292, Aickin J stated:

“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”

The extent of the common general knowledge is largely determined by the evidence of experts in the field (see Molnlycke AB v Proctor & Gamble (1994) RPC 49), and in the present case I am satisfied that Mr Esser is qualified to comment on the state of the common general knowledge in the art in Australia before the priority date.

There seems no doubt from the evidence and submissions that disk tumbler cylinder locks, including those having a number of disk tumblers which adopt a predetermined rotational position within the lock barrel assembly upon insertion of a key, were commonly known to those working in the field of the invention before the priority date of the claims. The weight of the evidence further indicates that rotatable disk tumbler locks in which the disks are properly positioned without the need to rotate the key also formed part of the common general knowledge at the relevant time.  In stating this I am conscious of the fact that the evidence in this regard relies in part on a number of patent specifications which do not necessarily constitute common general knowledge (see the 3M case, supra).  However the statements made by Mr Esser in relation to the feature in question seem to be based on relevant first-hand knowledge and so, when read in conjunction with the disclosures of exhibit HE14 which I accept is widely read among those in the lock industry, provide prima facie credible evidence of what may be regarded as part of the body of knowledge of those engaged in the art.

I am not convinced that this is the case with locking bar arrangements wherein projections formed on the discs are received in cavities in the locking bar.  There are no documents in evidence disclosing the use of such an arrangement in disk tumbler locks as per the present invention, nor any express indication that these arrangements were well known to Mr Esser himself before the relevant date.  In addition I note that exhibits HE22 and HE25 on which considerable reliance has been placed are dated April 1992 and December 1991, respectively, which is after the filing date of the present application.  As a consequence these exhibits could not possibly have constituted matters of common general knowledge at the priority date.   

On the basis of the foregoing I find that not all the individual features of claim 1 are common general knowledge as alleged.  As an apparent fall-back position Mr Collins submitted, and I agree, that the disclosure of a single prior document can be taken together with the common general knowledge when assessing whether an invention involves an inventive step so long as the person skilled in the art could be reasonably expected to have ascertained, understood, and regarded it as relevant to solving the problem addressed by the invention.  This is in effect one of the steps involved with the so-called “problem/solution” approach which is sometimes followed by the courts when determining whether an inventive step exists.  However such an approach is of little assistance in the present situation since while the specification identifies a number of disadvantages associated with conventional pin tumbler locks, the solution to this problem (ie, the claimed invention) involves a disc tumbler lock and there is nothing before me to suggest that the use of discs as opposed to pin tumblers plays any role in solving the identified problem.  Furthermore, page 9 of the specification states that

“... the use of a locking bar instead of key pins as in the prior art locks enables rapid and economic alteration.  All that is required is the generation of a new key/locking bar combination and the replacement of the old locking bar with the new one.  Whereas a skilled locksmith is needed to alter the combination on prior art locks, an average handyman will be able to change the locking bar in the case of the lock barrel assembly of the present invention.”

but there is no indication that the locking bar of claim 1 offers these benefits.  I also note that the reference above to “the use of a locking bar instead of key pins as in the prior art locks” is not consistent with the opening paragraph on page 1 of the specification in which some of the prior art locks are said to include both locking bars and pin tumblers.

In view of these circumstances it is not possible to reasonably deduce a problem which is solved by the claimed invention.  The course to be adopted in this situation is, as indicated by paragraph 4.2.4.2.5 of the Manual of Practice & Procedure, supra, that followed by Cohen J (and approved by the Full Court) in Allsop Inc vBintang Ltd (1989) AIPC 90-615 where the question of inventive step was decided “upon the evidence before me, rather than upon the basis of an inferred unsolved difficulty of which there is no direct evidence.” To this I would add that as Mr Esser’s evidence has not been challenged by ARX, it must be given considerable weight (BodenseewerkPerkin-Elmer v Varian Australia 32 IPR 110).

There are a substantial number of documents in evidence which in my opinion relevantly support Mr Esser’s contention that the use of locking bars in disk tumbler locks was widespread in the art before the priority date.  In particular, exhibits HE3, HE15, HE21 and TJC6 for example show that it was common practice to employ a locking bar which following rotation of the disks to their predetermined position by insertion of the key is received in a recess of each disk to release the lock.  By contrast, claim 1 as stated earlier in this decision requires a projection or pin on each disk to be received in a recess or the like of the locking bar.  Thus it will be seen that the only feature of claim 1 which was not already to be found in known rotatable disk tumbler locks is this “reversed” arrangement of the disks and locking bar. 

I also believe on the basis of the evidence before me that the simple reversal of a previously existing arrangement within a lock barrel assembly of the type according to claim 1 would provide the same functionality in the context of that assembly and, therefore, would not alter its essential character.  As put by Mr Collins, “the lock release consequences are the same whether the reversed arrangement or the more conventional is adopted”.  Furthermore, the present specification does not contain any suggestion that the reversed arrangement overcomes a technical prejudice, or that there are any practical difficulties to be overcome in implementing such reversal.  Indeed I note that the reverse arrangement has been incorporated in the rotatable disk tumbler lock disclosed by AU 77173/81 which, as stated in my discussion on the question of novelty, possesses every feature of claim 1 apart from the requirement that disc position be achieved without rotation of the key.   Consequently, it seems to me that what the invention claimed by claim 1 does is simply replace one feature in known rotatable disk tumbler locks with an equivalent one.  Accordingly, the claimed invention cannot be regarded as other than “an old combination which has been, at most, subjected to slight variations” (Elconnex Pty Ltd v Gerard Industries (1993) AIPC 90-984) and therefore lacks an inventive step.

Of the dependant claims, only claims 5 and 9 introduce features which have not been specifically disclosed by the documents in evidence.  However there is no evidence which indicates anything inventive in using a particular number of disks or in providing anti-picking recesses in the locking bar instead of the disks as is conventional practice.  Omnibus claim 14 does not add anything of substance beyond what is already claimed by claim 1 and, as a consequence, does not involve an inventive step for the reasons discussed above.  Claim 10 as it stands is ambiguous and so I do not propose to consider it any further at this time.  Rather I merely observe that if appropriately amended consequent upon my finding of lack of fair basis claim 10 would, I believe, be directed to matter which is not an obvious development of the prior art.

In summary, I find that claims 1 to 9, 11 and 14 lack an inventive step.  

The Key Invention

Having already decided that claims 12, 13 and 15 are not novel, the question of whether these claims involve an inventive step becomes mute. 

However in his written submissions Mr Collins asserts as an alternative line of attack that claim 13 lacks inventiveness since (it is alleged) the addition of a second track does not result in any unexpected or surprising result.  This issue was not raised in the statement of grounds and particulars.  Nevertheless I note pursuant to section 60(3) that it is not evident from the specification that the provision of an additional track materially affects the operation of the key (see my comments under “Novelty” above) and, consequently, this feature cannot give rise to an inventive step.

Even if I were to assume otherwise there is no identified problem solved by claim 13, nor any evidence to the effect that the skilled worker would not as a matter of routine have been led from the “multi-track” or “angled-track” keys disclosed by a number of the documents in evidence to the invention claimed by claim 13.      

Priority Date

Mr Collins submitted that claims 1 to 13 are not fairly based on the disclosure of associated provisional application PK 0244 and, consequently, are not entitled to a priority date earlier than the date of filing of the present application, namely, 17 May 1991. This issue was not foreshadowed by the statement of grounds and particulars and in any event it is not necessary for me to decide whether the claims in suit are entitled to an earlier priority date since it is clear that my findings with regard to the opposition grounds of lack of novelty and inventive step are not dependant upon it.

conclusion 

I have found that the opposition succeeds on all grounds relied upon.  As I believe that the specification could be amended to overcome these grounds, I will allow ARX a period of 60 days from the date of this decision within which to propose amendments accordingly.

In the circumstances, I award costs against ARX and in favour of Lockwood.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Chrysiliou Moore Martin, Sydney

Patent attorneys for the opponent    Phillips Ormonde & Fitzpatrick, Melbourne