Assa Abloy Australia Pty Limited v Allegion (New Zealand) Limited - [2023] APO 59

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Assa Abloy Australia Pty Limited v Allegion (New Zealand) Limited [2023] APO 59

Patent Application: 2020201595
Title:Door furniture

Patent Applicant:                   Allegion (New Zealand) Limited
Opponent:   Assa Abloy Australia Pty Limited
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  27 November 2023
Hearing Date:  19 October 2023 via video conference

Catchwords: PATENTS – section 59 – door handle set and installation mechanisms – grounds of novelty and inventive step – construction of claims – no grounds made out – opposition unsuccessful – costs awarded against opponent

Representation: Patent attorney for the opponent: Adrian Crooks, Phillips Ormonde Fitzpatrick
Patent attorney for the applicant: Anthony Pietras, AJ Pietras IP Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020201595
Title:Door Furniture

Patent Applicant: Allegion (New Zealand) Limited
Date of Decision: 27 November 2023
DECISION
The opposition is unsuccessful. No grounds are made out. Subject to appeal, I direct that the application proceeds to grant.
I award costs according to Schedule 8 of the Patents Regulations 1991 against the opponent.
REASONS FOR DECISION
BACKGROUND

This matter relates to patent application 2020201595 in the name of Allegion (New Zealand) Limited (the applicant), having an earliest claimed priority date of 2 May 2018 via a divisional status to application 2018203064. The application was examined and advertised as accepted on 27 January 2022. Following this, a notice of opposition was filed on 27 April 2022 by Assa Abloy Australia Pty Limited (the opponent).
The request for examination was filed on 4 March 2020 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, 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 application.
The case management of the matter has been rather straight forward with the parties filing one declaration in each of the stages of evidence. At the hearing, the opponent pressed the grounds of novelty and inventive step.
THE EVIDENCE
Evidence in support consists of the following:
·A first declaration by Aaron Smith (Smith 1) dated 27 October 2022 with annexures AS-1 to AS-5
Evidence in answer consists of the following:
·A declaration by Murray James Baber (Baber) dated 26 January 2023 with annexures MJB-01 to MJB-03
Evidence in reply consists of the following:
·A second declaration by Aaron Smith (Smith 2) dated 28 March 2023.
SPECIFICATION
The specification is brief, informative, and easy to understand. In eight pages it clearly describes the invention, which if one is to look at the drawings in isolation, may be approached with some caution to understanding due to apparent mechanical complications. The invention relates to what is termed “door furniture” which for those uninitiated is simply a reference to door handles/fittings and the like, and the assembly of components that comprise such fixtures. Figure 1 is a recognisable end on view of a piece of door furniture comprising lever handles and a latch 4.
The specification notes[1] installing door furniture can be time consuming and inefficient and that the present invention seeks to address this problem by providing a useful alternative. After consistory clauses and an introduction to the figures of the specification, the detailed description discusses the key aspects of the present invention initially with respect to Figure 2.
[1] Specification at page 1
The specification[2] describes Figure 2 as follows:
The handles 2, 3 each receive a separate spindle 5 that transmits the turning force from the respective handle. The arrangement may be that each handle/spindle pair turns without moving the other pair, or so that turning one pair turns the other pair correspondingly.
There is an escutcheon in the form of a rose 6 for one side of the door comprising a circular base plate 7 and a bezel 8. There is also an escutcheon in the form of a rose 9 for the other side of the door also comprising a circular plate 10, but without a bezel. In alternative embodiments the escutcheon may have an alternative shape, for example the base plate may be rectangular. When in use the first rose 6 is set against one side of the door and the other rose 9 is set against the opposite side of the door. In each case resilient rubber rings 11, 12 assist in preventing a respective cover plate 19 from coming free in use. The purpose of the cover plate 19 is to aesthetically hide the working components of the furniture.
With further reference to figure 2, a pair of annular disk like rotors 13, 14 and associated circlips 15, 16 help secure each lever-like handle 2, 3 to its respective rose 6, 9. The rotors 13, 14 also serve to retain the spindles 5 within the levers respectively.
Referring again to figure 2, the furniture is held to the door by a pair of screws 20 that pass through each rose 6, 9. The head 21 of each screw can be turned by a screwdriver into correspondingly threaded sleeves 22. More particularly, the sleeves 22 are held in apertures of the circular base plates 7, 10 behind the cover plate 19 at the right hand side so that the leading end of each screw does not need anything further to hide it for good aesthetics.
[2] Specification at page 5 line 14 to page 6 line 4
Figure 4 shows the pre-assembly of the furniture of Figure 2 into two half-sets. Holes are drilled in the door for receipt of components therethrough. In particular, screws 20 are pre-assembled into the half-set for handle 2, with these screws fed through holes 29 to also pass through apertures in the rose of half-set of door handle 3.
Figure 6 shows the bringing together of the two half-sets and the door such that the screw heads 21 protrude through the rose of the half-set that comprises the bezel. Here the screw heads protrude beyond the base plate 7 and the bezel 8. As noted by the specification[3]:
This is possible because the corresponding apertures in the base plate 7 are larger than the diameter of the screw heads 21. It is also possible because the bezel 8 has dual-lobed apertures, one for each screw 20, and in each case one of the lobes has a diameter larger than that of the screw heads 21.
[3] Specification at page 6 line 23 to 27
Figures 7, 8 and 9 provide a clear depiction of how the lobed bezel is used via rotation to provide for fixing of the door handles to the door through the use of a force applied by the screws to the bezel. The specification[4] notes:
Figure 7 shows the way that the screw heads 21 engage with the bezel 8 in more detail. As illustrated, the screw heads 21 are in the wider lobe of each dual lobed aperture. If the screws were tightened while in that position they would pass into, and through, the bezel 8 and base plate 7, and therefore fail to hold the furniture against the door.
Referring to figure 8, rotation of the bezel 8 anti-clockwise causes the screws 20 to pass into smaller lobes of each dual-lobed aperture. They each have a smaller diameter than the screw heads 21 and so when the screws are tightened in that position the screw heads press against the bezel 8 and pull the furniture into a tight fit against the door.
Figure 9 illustrates the bezel 8 without the screws 20. As shown, in each case one lobe 31 is significantly wider than the other 32. The smaller lobes are tapered so that the screw heads 21 can countersink into the bezel 8 for a flush finish. The lobes are curved in this embodiment although in other embodiments they may have an alternative shape, for example they may be square, rectangular or hexagonal, etc.
[4] Specification at page 6 line 29 to page 7 line 8
The specification continues to discuss some other features and preferred embodiments but for the purposes of understanding the invention and particularly claim 1, I need go no further at this stage. Usefully however, at the end of the specification[5] the benefits of the described arrangement are discussed as follows:
An advantage of preferred embodiments of the invention is that the process of installing door furniture is simplified and the time required for this is reduced compared with at least some known products. For example previously installation involved drilling holes in a door as described above, feeding screws through and then adjusting them side to side and lengthways to get them to engage female threads of furniture components on the other side of the door. This can be tedious and time consuming particularly when installing furniture on many doors. However with the preferred embodiments the screws 20 come already fitted to a furniture half-set as described above. The screws 20 can simply be feed through the screw apertures 29 and easily engaged with the rose 6 / bezel 8 on the opposite side of the door. There is therefore no need for such precise initial alignment because the bezel 8 can be rotated into a fixing disposition after the screws have passed through its wider lobes 31. Preferably each half-set is factory assembled so that there is no, or minimal, need to assemble components for installation.
[5] Specification at page 8 lines 10 to 23
The claimed invention
Claim 1 as accepted is as follows. There is only 1 independent claim. Given the description provided in the specification that I have outlined above, claim 1 is rather straight forward to understand.
Door furniture comprising:
           · a pair of door handles;
           · transfer means for conveying turning force from the handles to retract a latch;
           · fasteners, each having a fixing head;
           · a first escutcheon comprising:
oa base (the first base); and
oa bezel; and
· a second escutcheon comprising:
oa base (the second base);
the furniture being such that:
  · the transfer means is, or is formed to be, engaged with the handles;
· the fasteners are adapted to pass into a door and connect the two bases, one base on either side of the door;
· the bezel is formed to enable it to be turned by hand with respect to the first base to a position where subsequent tightening of the fasteners causes the fixing head to press against the bezel to pull the furniture into a tight fit against the door;
· the furniture is formed substantially in two half-sets;
· one of the half-sets comprises the second base and threaded sleeves, the fasteners having been screw turned into the sleeves;
· one of the half-sets comprises a pre-assembly of the first base and bezel, with a main face of the bezel substantially exposed; and
· the transfer means comprises a spindle held and extending outwards of one of the half sets.
THE PERSON SKILLED IN THE ART
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 Root Quality v Root Control Technologies Pty Ltd[6] Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
[6] [2000] FCA 980
It is clear that a skilled addressee will have a practical interest in door handle installations. The opponent’s expert, Aaron Smith, is a qualified locksmith and casual teacher of locksmithing at Melbourne Polytechnic[7]. It is clear to me that through his education and experience, Mr Smith is a person skilled in the relevant art with expertise in the mechanical function of door opening mechanisms. Mr Smith notes that he is familiar with door furniture products also known as “passage or privacy sets and [has] a detailed understanding of the design and functionality of those products”[8]. While the applicant argues Mr Smith’s experience focusses on a background in locksmithing without particular experience designing or improving relevant products, I don’t see this as providing any basis, prima facie, to consider his evidence any less relevant than the applicant’s expert discussed below.
[7] Smith 1 at [1]
[8] Smith 1 at [5]
The applicant’s expert, Murray James Baber is a businessman and inventor of door and security hardware. He notes that he has been “involved in designing, marketing and distributing such products for and in New Zealand, Australia, the UK, the USA and other markets for over 35 years. These products include locking and non-locking latch sets and handle sets for mortice locks”. He notes he is a self-taught engineer when it comes to these items[9]. Mr Baber discusses how he began making his own door and window hardware around 1970 before going into business himself.[10] In terms of his experience he adds[11]:
“In terms of installing latch sets and other door passage hardware, an important part of my role in business since starting out has been developing expertise in the advantages and disadvantages of the sorts of products it sold, including what made them easy or difficult to install. I have personally spent much time over the years educating customers on these products sold by my business, including how to install them. To facilitate this I write installation instructions, including with illustrations, to guide customers such as locksmiths during installation.
As part of my role in my businesses, including in educating locksmith and other customers, I have installed locking and non-locking latch sets and other door passage hardware numerous times and have developed expertise in doing so.”
[9] Baber at [3]
[10] Baber at [5]
[11] Baber at [13] and [14]
Both experts are clearly worthy of being considered skilled in the relevant art. To the extent that any particular piece of evidence may be preferable, I will deal with this if and when such issues arise.
THE COMMON GENERAL KNOWLEDGE
In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited[12], 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."
[12] (1980) 144 CLR 253 at page 292
As a starting point, the opponent points to Smith 1[13] as setting out the common general knowledge in the art before May 2018. The applicant does not take contention with any of these paragraphs. As such, it appears that the common general knowledge includes the following:
[13] at [13] to [20]
·Door furniture known as a passage set typically includes a knob or handle on either side of the door and a latch which interacts with a strike on a door frame. When the door is closed, the latch projects into an opening in the strike, holding the door in place whereby rotation of the handle enables opening of the door.[14]
·A passage set may include a locking mechanism activated by a push button or turn snib, wherein locking can be enabled from one side of the door.[15]
·Rotation of the handles typically causes retraction of the latch via a spindle. A spindle may pass from the handle on one side of the door, through an opening in the latch mechanism and into the handle on the other side of the door. Rotation of either handle will cause corresponding rotation of the spindle and retraction of the latch.[16]
·The spindle will typically be formed of two parts, one associated with each handle allowing locking of one handle against rotation while leaving the other handle able to be rotated to release the locking snib on that side of the door.[17]
·Installing a typical passage set in a door generally requires the creation of two bores in the door. The first bore receives the latch mechanism extending from an edge of the door and the second extends through the door from one face to the other, the bores intersecting each other. Elements of the handle mechanism including the spindle extend through the second bore.[18]
·Regarding installation, Smith 1 provides the following detail which also appears common general knowledge[19]:
“Commonly, the two handle mechanisms on either side of the door are fixed to each other and held in place with respect to the door by opposing rose bases, one on each side of the door. In one well know (sic) arrangement, one rose base would include internally threaded mounting posts which extend from the rose base into the second bore of the door. The opposing rose base would include openings aligned with the mounting posts so that threaded fasteners could be inserted through the openings and secured within the mounting posts to hold the two rose bases together. The mounting posts are frequently designed to pass through the second bore on either side of the latch mechanism.”
[14] Smith 1 at [13]
[15] Smith 1 at [14]
[16] Smith 1 at [15]
[17] Smith 1 at [16]
[18] Smith 1 at [18]
[19] Smith 1 at [19]
The above information on my reading is consistent with common door handle mechanisms I have myself observed in operation, and at times installed. In addition to the information above, the opponent argues that paragraphs of Smith 1[20] identify a product known as the Velocity Passage Set[21] as being part of the common general knowledge. Mr Smith states[22]:
“I became aware of the Velocity passage set in about 2010 when I was seeking to install passage sets in my own home. I was attracted by the simple installation process for the Velocity passage set as described below. I recall that the Velocity passage set was available to be purchased through major retail hardware stores as well as through locksmiths. I understand that the Velocity passage set remains available for sale in Australia and has been widely used in the house building industry for many years.”
[20] at [21] to [31]
[21] Smith 1 Annexure AS-2
[22] Smith 1 at [21]
The opponent adds that the applicant’s expert, Mr Baber, knew of the Velocity Passage Set. In his declaration Mr Baber noted that[23]:
“I do know of the product. I first heard of it some years ago in the course of my work. To the best of my recollection, I have not seen or heard of anything of it (sic) the product in recent years.”
[23] Baber at [16]
Responding to the allegation that the Velocity Passage Set is part of the common general knowledge the applicant has argued that the fact that both witnesses knew about the Velocity set does not make it common general knowledge. They identify that no sales or advertising data has been provided to support an argument of adoption of the Velocity Passage Set as part of the common stock of knowledge in the art via broad sweeping distribution and market take up. I agree with the applicant that the opponent has not established the Velocity Passage Set to be common general knowledge in the art. While the product may have been available for a reasonably significant period of time before the priority date, this does not mean that it is part of the background knowledge that constitutes common general knowledge.
CLAIM CONSTRUCTION
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[24], 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[25]:
"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."
[24] [1988] FCA 399
[25] [2009] FCAFC 70

I note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim"[26]. Additionally, Flexible Steel Lacing Company v Beltreco Ltd[27] notes:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
[26] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59
[27] [2000] FCA 890 and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121
No issues of clarity are raised by the opponent, however there are a number of key terms that warrant careful construction as they directly relate to the opponent’s case, particularly with respect to their argument as to a lack of novelty.
“Door furniture”
The specification identifies components such as door handles and the like as being an example of door furniture. More broadly, a quick Google search reveals “door furniture” or “door hardware” to be an umbrella term for all items that attach to a door including such things as locks, hinges, handles, and door knockers, for the purpose of enhancing functionality or appearance of a door. Clearly the presently claimed invention is directed to the subset of door furniture being the physical construction and operation of a set of door handles that mount on either side of a door, connect and cooperate to provide a secure opening and closing mechanism. It is with an understanding of such door handle sets that the claim should be construed.
“Escutcheon”
Neither of the parties specifically sought to discuss the construction of this term. According to the Macquarie Dictionary[28] an escutcheon is:
1.  the shield or shield-shaped surface, on which armorial bearings are depicted.
2.  a plate for protecting the keyhole of a door, or to which the handle is attached.
3.  the panel on a ship’s stern bearing its name.
[28] The Macquarie Dictionary, 8^th ed.2022, >
Clearly the definition invokes the necessity for an escutcheon to be some kind of flat plate like structure. In the context of door furniture, it appears to me that the term takes on a meaning so as to be an ornamental and/or functional type of plate that may protect a keyhole or may operate as a plate to which the handle is attached. In the present claims and specification it is clear that the escutcheon is not seeking to protect a keyhole so it would appear more appropriate to take on board the understanding that the claim includes some kind of ornamental or functional plate to which a handle attaches. There is a sense in which the handle of the present invention attaches to a plate, and this is well represented in the figures provided above. The specification also provides the following discussion of an escutcheon[29]:
There is an escutcheon in the form of a rose 6 for one side of the door comprising a circular base plate 7 and a bezel 8. There is also an escutcheon in the form of a rose 9 for the other side of the door also comprising a circular plate 10, but without a bezel. In alternative embodiments the escutcheon may have an alternative shape, for example the base plate may be rectangular. When in use the first rose 6 is set against one side of the door and the other rose 9 is set against the opposite side of the door. In each case resilient rubber rings 11, 12 assist in preventing a respective cover plate 19 from coming free in use. The purpose of the cover plate 19 is to aesthetically hide the working components of the furniture.
[29] Specification at page 5 lines 19 to 27
Clearly the specification contemplates the escutcheon as a plate. Two escutcheons are present, one including a base plate and a bezel, and the other simply a base plate. In the description the escutcheons are set against the door however no such limitation is present in the claim. The claimed invention is simply directed to the inclusion of escutcheons, which I consider to be a plate structure (which may or may not be a composite structure) which in some way attaches to a door handle. The base and bezel features of claim 1 are clearly part of an escutcheon.
“Base”
As to the meaning of a base, the opponent submits the following:
“Claim 1 defines a first escutcheon comprising a first base (integer 1.4.1) and a second escutcheon comprising a second base (integer 1.5.1). Claim 1 also defines fasteners adapted to pass into a door and connect the two bases, one base on either side of the door (integer 1.7). Further, claim 1 defines a bezel formed to enable it to be turned by hand with respect to the first base (integer 1.8). The second base forms part of a half-set along with threaded sleeves (integer 1.10) and the first base forms part of another half-set as a pre-assembly with the bezel (integer 1.11). Claim 1 does not define any other functional requirements for either the first or second base, nor does it require the first or second base to take any particular physical form other than as necessary to meet the above functional requirements (Smith 2 [15]). Any structural elements of door furniture which exhibits the functional requirements set out in claim 1 may be considered a “base” for the purpose of that claim. The bases defined in claim 1 should not be construed narrowly in a manner which incorporates physical features of the preferred embodiments of AU595 which are not recited in the claim.”
I largely agree with the opponent’s contentions. The claimed invention in terms of a first and second base, is limited by certain functional requirements of the base. These include:
·     Fasteners pass into a door and connect the two bases, one base on either side of the door.
·     A bezel can be turned by hand with respect to a first base (this bezel and base forming part of an escutcheon) such that tightening of the fasteners pulls two half sets into a tight fit with the door.
·     One half set comprises a base and fasteners and the other half set comprises a pre-assembled first base and bezel (escutcheon)
I agree that a base should not be construed narrowly in a manner that glosses elements of physical features in preferred embodiments and I agree that there are no other explicit physical/functional requirements defined in the claim other than those identified above. It may be the case that the term ‘base’ has a specific technical meaning in the relevant art of door handle technology that the skilled addressee would apply, however the experts do not seek to identify such a meaning. With this in mind I note that the applicant points to the meaning of a base as invoking connotations “of a primary or foundational supporting role for the door furniture overall”. They point to a dictionary definition which is consistent with that in the Macquarie Dictionary being:
1. the bottom of anything, considered as its support; that on which a thing stands or rests.
The claim comprises two bases that are each part of a separate plate (escutcheon), wherein the bases each are at the bottom of a half set proving support upon which the half set is to rest.
“Bezel”
Regarding the construction of the term ‘bezel’ the opponent submits as follows:
“Claim 1 defines a first escutcheon comprising a first base (integer 1.4.1) and a bezel (integer 1.4.2). The bezel is formed to enable it to be turned by hand with respect to the first base to a position where subsequent tightening of the fasteners causes the fixing head to press against the bezel to pull the furniture into a tight fit against the door (integer 1.8). In the context of a passage set, the term bezel is typically used to describe an annular trim or cover plate, usually close fitting to surround and hold other components in place (Smith 1 [60]). As used in the specification of AU595, the person skilled in the art would understand the word bezel to be used to describe a component of the handle assembly designed to be rotated relative to a base to capture the screw heads (Smith 2 [18]). Any structural elements of door furniture which exhibits the functional requirements set out in claim 1 may be considered a “bezel” for the purpose of that claim. The bezel defined in claim 1 should not be narrowly construed in a manner which incorporates physical features of the preferred embodiments which are not recited in the claim.”
I do not disagree with anything particular said here by the opponent. It is clear that a bezel must be part of the first escutcheon along with a base. According to the Macquarie Dictionary a bezel is:
1.  a sloping face or edge of a chisel or other cutting tool.
2.  the upper oblique faces of a brilliant-cut gem.
3.  the grooved ring or rim holding a gem or watch crystal in its setting.
In literal isolation none of these definitions are particularly helpful. However, definition 3 clearly provides a relevant meaning when considered purposively in light of the invention a hand. In this context, to perform the function identified by the opponent in claim 1 the bezel must possess some characteristic of being a ring, rim or trim (potentially annular) for holding the door furniture in its setting. The claims define that the bezel must rotate by hand with respect to the first base and via subsequent tightening of fasteners pull the furniture into a tight fit against the door. This is consistent with the evidence of Mr Smith identified by the opponent. It is a further necessity of the bezel that it forms a part of a composite plate by way of being part of an escutcheon.
“Engaged with the handles”
The relevant feature of claim 1 is that the transfer means is, or is formed to be, engaged with the handles. The opponent proffers a meaning to this term in that claim 1 does not define the nature of the engagement between the transfer means and the handles. They argue that:
“The functional purpose of the engagement between the transfer means and the handles as defined in integer 1.6, is to cause the transfer means to convey turning force from the handles to retract a latch. Claim 1 does not require a direct connection between the handles and the transfer means to achieve that functional outcome (Smith 2 [16]). Any mechanical arrangement by which turning force from the handles is conveyed by the transfer means to retract a latch will exhibit the engagement between the handle and the transfer means as defined in claim 1. The engagement of the transfer means and the handles defined in claim 1 should not be narrowly construed in a manner which incorporates physical features of the preferred embodiments which are not recited in the claim.”
In short, the opponent suggest that engagement can be either direct or indirect between the transfer means and the handles. In response the applicant suggest that the word ‘engaged’ in engineering parlance means “to be in contact with”. They point to a dictionary meaning as being to “bring or come into working contact”.
I again turn to the Macquarie Dictionary which defines engage, in the context of mechanical elements, as:
10.  Machinery
a.  to cause to become interlocked: engage first gear.
b.  to interlock with: the cogs engage those of a second wheel.
…..
17.  Mechanics to interlock.
In the claim the transfer means is, or is formed to be, engaged with the handles. This feature is clearly directed to the act of engagement, or the capability for engagement between two components. Definition 10b. identifies engagement as the interlocking of components as in cogs of wheels engaging. Definition 17 suggests that ‘to engage’ means ‘to interlock’. I then turn to the accompanying definition of ‘interlock’ which is as follows:
1.  to engage with each other: interlocking branches.
2.  to fit into each other, as parts of machinery, so that all action is simultaneous.
3.  (of railway points, signals, etc.) to arrange and operate in an interlocking system.
4.  to lock one with another.
5.  to fit the parts of (something) together so that all must move together, or in the same way.
I am satisfied that these definitions point to the idea that mechanical engagement of parts requires them to come together directly, thus becoming in contact.
NOVELTY
For the purposes of subsection 7(1) of the Patents Act (1990), an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information. Subsection 7(1) also states that two or more documents can be read as a single piece of prior art information if the relationship between those documents is such that a person skilled in the art would treat them as a single source. Furthermore, prior art information includes a “prior use” constituting information made publicly available before the priority date through the doing of an act.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd[30]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
[30] [1977] HCA 19 at [20]
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed[31]. To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented”[32]:
“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”.
[31] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]
[32] The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]
United States patent document US 6745602 B2 (US602)[33] published in 2004 is the sole document cited by the opponent as depriving the claimed invention of novelty. US602 discloses door furniture comprising interior and exterior lock assemblies (half-sets). Analogously to the present invention which involves the function of screws passing from one half-set and through a door for connection to screw head retaining portions of the other half-set, the abstract of US602 discloses that:
The exterior lock assembly includes a pair of threaded fasteners extending through a preformed hole in a door, and the interior lock assembly includes a rose liner configured to rotatably engage the fasteners to connect the interior and exterior lock assemblies. The interior lock assembly rose liner includes a pair of raised contoured portions having openings for receiving the fasteners and ramps for guiding the fasteners to the openings.
[33] Smith 1 Annexure AS-4
The exploded view provided in FIG. 1 shows the componentry construction of the invention described in US602.
The way in which this invention works is that the exterior lock assembly to the left of the figure mounts on the outside of a door and holes in the door enable screws to pass through to the other side along with a half-round 16 which serves to deliver turning force from the doorknobs. Screw heads are captured by the interior rose liner 36 and can be accessed for tightening/loosening via holes in rose cover 40. Other componentry forms part of the complete interior assembly 14. The interior knob assembly includes a turn piece 24, a knob 26 having a sleeve 27, a turn piece spring 30, a knob insert 32 staked into the sleeve 27, a turn piece guide 34, a rose liner 36 with a decorative cover 40, and a retainer ring 44. The operation of the rose liner and decorative cover are discussed more clearly in FIG. 3.
Document US602 explains this figure as follows:
…the interior rose liner 36 includes a central aperture 46, a pair of internally extending tabs 48, and a pair of raised contoured sections 50 configured to capture the screws 22. Each contoured section 50 includes a ramp 54 that leads to an opening 56 for receiving one of the screws 22. During installation, the ramps 54 help to guide the screws 22 to the opening 56. Each opening 56 includes a coined recess 58 and a detent 62. Detent 62 aids in the initial installation, holding the interior assembly in place while the Screws are tightened down. The coined recess 58 and the detent 62 help prevent the interior rose liner 36 from rotating loose over time. The rose liner 36 further includes anti-rotation features 64 to prevent the rose cover 40 from rotating relative to the rose liner 36 and alignment notches 66 formed in the central aperture 46 to aid in the proper alignment of the rose cover 40 on the rose liner 36.
Clearly present in this document is the disclosure of: a pair of door handles; a transfer means including a spindle for conveying turning force from the handles to retract a latch; fasteners having a fixing head in the form of screws; the fasteners passing through the door to connect bases of two half sets; and pre-assembly of half-sets. In contention in regard to the content of the claim and its disclosure is the disclosure of the first escutcheon as including a base and a bezel that functions in the manner whereby the bezel is formed to enable it to be turned by hand with respect to the base to a position where tightening of screws against the bezel pulls the door furniture into tight fit against the door. Also in contention is whether the transfer means of the cited document is, or is formed to be, engaged with the handles.
The opponent argues that document US602 discloses a first escutcheon in the form of feature 14 of FIG.1 (interior knob assembly), and with further reference to this figure argues that the document discloses a first base as the combination of knob insert 32 and turn piece guide 34. They then argue that a bezel is the combination of rose liner 36 and decorative cover 40. By reference to item 12 (exterior knob assembly) the opponent argues for the disclosure of a second escutcheon comprising a base.
I summarise the applicant’s arguments addressing these points as follows:
·     The “pipe-like insert” in the form of items 32 and 34 is not a base. A base is something that plays a primary or foundational supporting role in the door furniture.
·     The combination of rose liner 36 and decorative cover 40 is not a bezel. They argue that “a bezel” does not comprise two components adding that the decorative cover does not capture the screw heads as would be required by the document for disclosure.
·     They argue that the liner 36 is the base, and if it is the base, it cannot be the bezel at the same time.
·     If the cover plate is part of the bezel, it does not have the quality whereby it can be turned by hand to a position where subsequent tightening of the screw causes pressing against the bezel.
In addressing this issue, I first turn back to my understanding of the meaning of an escutcheon, and in particular the first escutcheon in the claim. Earlier in this decision I laid out my understanding of such a feature as being a plate structure which in some way attaches to a door handle, which in the context of the first escutcheon would need to be a composite plate structure comprising a base (a component at the bottom of a half set proving support upon which the half set is to rest) and a bezel (a ring, rim or trim for holding the door furniture in its setting).
Turning to the opponent’s argument, it is suggested that a first escutcheon is the entirety of feature 14 being the interior knob assembly of US602. The first problem I encounter here is that I cannot see how the entirety of the interior knob assembly can be considered an escutcheon. I understand an escutcheon to be a plate structure and that the claims define it as a composite plate structure that comprises at least a base and a bezel. With this in mind I consider that at most, items 36 and 40 together may be considered an escutcheon. While one may loosely label items 32 and 34 a ‘base’, I simply do not consider that they form part of an escutcheon.

Having identified items 36 (the rose liner) and 40 (the decorative cover of the rose liner) as being part of an escutcheon I consider it quite reasonable to equate the rose liner 36 with a first base of claim 1, and the decorative cover of the rose liner 40 with a bezel of claim 1. In other words, I consider US602 to disclose a first escutcheon with a first base and a bezel, and a second escutcheon with a base 12. Essential to claim 1 is the function of the bezel with respect to the door furniture whereby the bezel is turned by hand with respect to the first base to a position where subsequent tightening of the fasteners causes the fixing head to press against the bezel to pull the furniture? into fit against the door. Clearly the operation of the base (rose liner 36) and bezel (decorative cover 40) of the disclosed invention involves the fixing head of fasteners pressing against the base and not the bezel to ensure fitting against the door as required by claim 1.
Therefore, I find the claims novel in view of US602.
For completeness I also note the point of contention over whether a transfer means, comprising a spindle, is or is formed to be engaged with the handles. I am satisfied that feature 16 is a spindle which is part of a transfer means which is held and extends outwards from one of the half-sets. This spindle transfers turning forces from the handles in order to retract a latch and open a door. The spindle translates force to door handles (for example knob 26) via componentry 34 (turn piece guide), 30 (turn piece spring), 32 (knob insert) and 27 (sleeve) which is all part of a transfer means. The transfer means, which comprises a spindle and other components, clearly directly connects and therefore engages with the handles.
INVENTIVE STEP
Pursuant to subsection 7(2) of the Patents Act (1990), an invention is 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 before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
Subsection 7(3) provides that 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.
A test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd[34] as follows:
“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.”
[34] [1981] HCA 12 at [45]
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd[35]; approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd[36] in which Graham J had posed the 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 invention] in the expectation that it might well produce a useful [desired result]?”
[35] [2002] HCA 59 at [51]- [53]
[36] [1970] RPC 157 at 187
The usual approach to determining inventive step is the problem-solution approach. 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 must be addressed.
The Problem
The problems discussed in the specification are rather general and point to the desire for door set mechanisms which provide for simplified installation. In the words of the specification[37]:
Installing door furniture, for example including handles and the like, often involves assembling components on site and fixing them to a door. When furniture has to be applied to many doors the task can be undesirably time consuming or otherwise inefficient.
I am comfortable that the problem involves the search for door set mechanisms which improve the installation process.
[37] Specification at page 1 lines 12 -15
Prior Art Base
I have decided above that the Velocity passage set has not been demonstrated by the opponent as forming part of the common general knowledge. The Velocity passage set is, however, clearly prior art for the purposes of s7(2) of the Patents Act. The prior art documentation relevant for consideration of inventive step in the present matter is the Velocity Passage Set along with United States patent document US 5118152 A published in 1992[38] (US’152). The opponent alleges that the claimed invention is obvious in light of the combination of these two pieces of prior art considered together with the common general knowledge.
[38] Smith 1 Annexure AS-3
Was the invention obvious?
The opponent fundamentally argues that the starting point for obviousness of the present invention is the Velocity Passage Set. Documentation describing the construction and operation of the Velocity Passage Set is provided as Annexure AS-2 to Smith 1. Useful images are as follows:
The Velocity Passage Set has some very clear similarities to the presently claimed invention. Present is a pair of handles and a transfer means comprising a spindle extending from one of two half sets, the transfer means engaging with the handle. Fasteners in the form of two screws come pre-assembled with one half set using threaded sleeves, these screws passing through a door to connect two bases on either side of the door. Each half set comprises an escutcheon including a base. It can be seen that the base of one of the half set contains lobes and sink holes for capturing screws such that the screws can be tightened to pull the sets into a tight fit with the door. Furthermore, one of the half sets can be assembled with an outwardly facing covering annular trim (see 10, 10a). What is clear from the figures of the Velocity Passage Set is that the means pulling the furniture into tight fit against the door is not via a separate mechanism (bezel) to the base. It is the base of the escutcheon in the Velocity Passage Set that performs the feature whereby the base is formed to enable it to be turned by hand to a position where subsequent tightening of the fasteners causes the fixing head to press against the base to pull the furniture into fit. The claim requires that the bezel is turned by hand with respect to the base and it is a force applied to the bezel that pulls the furniture into fit.
To remedy this lack of disclosure by the Velocity Passage Set, the opponent points to patent document US 5118152 A (US152)[39]. The operation of the invention disclosed by this patent document is best depicted in FIG. 1.
[39] Smith 1 Annexure AS-3
This door set comprises a first escutcheon with a base 3 (inner plate) and a bezel 4 (position plate). Clearly the described invention, like the Velocity Passage Set, is similar to the invention described in claim 1 and thereby discloses of many of the features of claim 1. Of key relevance is the operation of the inner plate and position plate during installation and capturing and tightening of screws 12. As per US152[40]:
The position plate 4 has a central opening 41 to movably fit around the central tubular shaft 31 in the inner plate 3, two opposite gourd-shaped holes 42 whose large diameter sections can be passed through by the heads of the screws 12, and whose small diameter sections cannot be passed through by the heads of the screws 12, a projection 45 passing through the curved hole 35 in the inner plate 3 and possible to move therein and usually stopped at one end of the hole 35, a swelled up hole 46 for the other end of the replacing spring 5 to stick in such that the position plate 4 can be moved by the spring 5. In addition, the plate 4 has a sideway projection 47 extending from the circumferential edge of the opening 41 near the left gourd-shaped hole 42 to limit the movement of the replacing spring 5.
A replacing spring 5 is shaped as a coil to fit around the outer surface of the tubular shaft 31, having two ends, one hanging at the sideway projection 38 in the inner plate 3 and the other sticking in the swelled-up hole 46 in the position plate 4 such that the position plate 4 always receives the elasticity of the replacing spring 5, letting the projection 45 normally stopping at the lower end of the curved hole 35 as shown in FIG. 1 and keeping the small diameter sections of the gourd shaped holes 42 facing to the holes 32.
To finish assembling this unit in a factory, the position plate 4 has to be rotated to make the projection 45 to move to stop at the upper end from the lower end of the curved hole 35. And then the locating pin 6 has to be made its end tip passing through the side hole 24 in the inner bearing plate 2, the holes 37, 36 in the inner plate 3 and stopping the projecting 45 at the upper end of the curved hole 35. At the same time, the large diameter sections of the gourd-shaped holes 42 in the position plate 4 are facing to the opposite holes 32 in the inner plate 3 and to the opposite holes 22 in the inner bearing plate 2. Therefore, the heads of the screws 12 can be pushed to pass through the gourd-shaped holes 42 to reach in the opposite holes 22.
[40] US152 at column 2 line 33 to column 3 line 3.
In short US152 teaches a bezel (position plate) which is formed to enable it to be turned with respect to the first base to a position where subsequent tightening of the fasteners causes the fixing head to press against the bezel to pull the furniture into a tight fit against the door. This document clearly teaches that the turning is enabled by the releasing of a pin to facilitate turning by force of a spring. The document does not teach turning of the bezel by hand.
With reference to the evidence of Mr Smith, the opponent submits that:
·     “A person skilled in the art with knowledge of the Velocity Passage Set and seeking to remove the need to rotate the entire handle assembly during installation would appreciate that elements of information disclosed in US152 could be used to achieve that outcome.”
·     “In light of the overall complexity of the mechanism of US152, the person skilled in the art would not simply adopt the whole of that mechanism or the whole of one handle assembly as disclosed in US152 [but] would appreciate that US152 discloses the concept of having a fixed part through which the screw posts can pass and a rotating part through which the screw heads can initially pass and which, after rotation, prevents the screw heads from passing back through it.”
·     “The person skilled in the art would understand that an aspect of the complexity associated with the mechanism of US152 is caused by the need for position plate 4 to be spring biased. This is because when the inner handle assembly is placed against a door as part of the installation process, position plate 4 is covered by inner bearing plate 2 and cannot be directly manipulated by a person performing the installation.”
·     “The person skilled in the art would appreciate that if an installer was able to directly manipulate position plate 4, it would remove the need for spring 5 and retaining pin 6. In the context of the mechanism of US152, the elimination of inner bearing plate 2, leaving only position plate 4 rotatably mounted on inner plate 3, would leave the fixing mechanism exposed and present both a potential hazard and a visually unappealing outcome.”
·     “The person skilled in the art would understand that modifying the Velocity Passage Set so that it included a fixed inner plate and a rotating positioning plate (“the Modified Velocity Set”) would both remove the need to rotate the whole of one handle assembly as part of the installation process, while simplifying the mechanism of US152. Further, the implementation of such a modification would not cause the problems of a potential hazard and a visually unappealing outcome because the mechanism would ultimately be covered by the rose trim of the Velocity Passage Set.”
Fundamentally the above arguments lead to the opponent’s position that the skilled addressee would take from the information disclosed in US152 the concept of having a fixed part through which the screw posts can pass and a rotating part through which the screw heads can initially pass and which after rotation prevents the screw heads from passing back through it. The opponent thus arrives at a position that the Velocity Passage Set is supplemented with this concept from US152 and common general knowledge thereby obviously arriving at the claimed invention. The opponent refers to evidence of Mr Smith as supporting this position.
The evidence of Mr Smith appears on its face to not be tainted by hindsight. His declaration makes clear that he did not see the claimed invention before providing evidence as to the above points[41]. Regardless, I must still assess the evidence against the appropriate test for inventive step which involves a consideration of whether routine steps would have taken the skilled person to the invention from the prior art, or whether there is a direct leading to as a matter of course to try the invention.
[41] Smith 1 at [6] to [11]
Mr Smith’s evidence of most relevance is as follows[42]:
“If it was desired to remove the need to rotate the handle assembly which carries the screw fasteners as part of the installation of the Velocity passage set, a mechanism of the type used in US152 could be incorporated into the Velocity passage set. If I had been asked to modify the Velocity passage set in this manner, I would not simply adopt the same mechanism as shown in US152. As described above the mechanism of US152 involves a number of parts and also requires the use of a pin to retain position plate 4 against the force of a spring. I consider it would be advantageous to avoid the need to spring bias position plate 4 and the need for a retaining pin.
In the mechanism described in US152, position plate 4 needs to be spring biased because when the inner bearing unit is placed against a door, position plate 4 is covered by inner bearing plate 2 and cannot be directly manipulated by a person performing the installation. If an installer was able to directly manipulate position plate 4, it would remove the need for spring 5 and also retaining pin 6. This could be achieved for example, if the mechanism of US152 was reduced to position plate 4 rotatably mounted on inner plate 3. In the context of US152, the elimination of inner bearing plate 2 would leave the fixing mechanism exposed and present both a potential hazard and a visually unappealing outcome. However, if such an arrangement were adopted as part of the Velocity passage set, it would ultimately be covered by the rose trim as shown in step 16.
I consider that a modification of the Velocity passage set to incorporate a rose base being a combination of an inner plate and position plate of the type described in US152 would both remove the need to rotate the handle assembly which carries the screw fasteners as part of the installation while simplifying the mechanism of US152.”
[42] Smith 1 at [44] to [46]
Before diving into analysis of this evidence a striking point before me in terms of disclosure of features by the Velocity Passage Set and US152 is that neither document teaches the formation of a bezel enabled to be turned by hand with respect to the first base, and thereby function to fix the door furniture as claimed. Such a feature is also not proven to be common general knowledge. The opponent suggests that US152 discloses the concept of having a fixed part through which the screw posts can pass and a rotating part through which the screw heads can initially pass and which, after rotation, prevents the screw heads from passing back through it. While somewhat true, it is critical that the disclosure of this is in the context of a spring-loaded bezel, and there is no disclosure of the concept in the context of hand turning. With this in mind it would appear that the debate ends here. There is no evidence to suggest it is routine to create an escutcheon with a base and a bezel that functions in the manner claimed such that it would be added to the disclosures of the relevant prior art. In the same breath, without evidence of this feature as being common general knowledge, I fail to see how one can be directly led to add such a feature to the prior art in the expectations that it would provide for simplified installation.
Turning now to the evidence of Mr Smith it is first clear to me that if he were to try to improve the prior art, he might like to avoid the need to use a pin and a spring bias. He says this could be achieved “if the mechanism of US152 was reduced to position plate 4 rotatably mounted on inner plate 3”. He then says that elimination of plate 2 from US152 would leave the mechanism exposed and so in adoption in the Velocity Passage Set, the trim shown in step 16 of that disclosure would be used. In taking this approach, Mr Smith begins by suggesting the problem may be the desire to remove the need to rotate the handle assembly, which carries the screw fasteners, as part of the installation of the Velocity passage set.
Firstly, it seems to me that the starting point/problem posed by Mr Smith does not align with the problem I have identified and does not appear to be a known starting point for the skilled addressee. With this in mind, I simply cannot be satisfied that the evidence of Mr Smith serves to demonstrate that a person skilled in the art would have been directly led to the claimed invention. At best, Mr Smith appears to embark on an exercise of considering what “could” be done to the disclosures of the Velocity Passage Set and US152 without supplementing his logical statements with probative evidence to the question of what “would” be done. The evidence he provides appears more an exercise in invention by a person with knowledge in the art, and not an exposition of what steps, as a matter of routine, would have been taken by an uninventive skilled addressee.
The applicant speculates that Mr Smith has been asked leading question as to how he might modify the relevant prior art. While this may or may not be the case, what is most critical in my eyes is the failure to show that the addition of relevant features and operation of the first escutcheon having a particularly constructed and functioning base and bezel would have been a matter of routine. There is insufficient evidence to suggest such hand rotation of the bezel was obvious to the uninventive skilled addressee.
I find the claims inventive.
CONCLUSION
I conclude that the opposition is unsuccessful. The opponent has not established the claims as obvious or lacking novelty.
COSTS
The applicant has successfully defended the application. It is normal in such matters before the Commissioner for costs to follow the event. As such I see insufficient reason to depart from the normal approach, and I award costs against the opponent.
Dr N. R. Madsen
Deputy Commissioner of Patents