ASSA ABLOY Australia Pty Ltd v Ace Products Holdings Pty Ltd
[2024] APO 45
•14 November 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ASSA ABLOY Australia Pty Ltd v Ace Products Holdings Pty Ltd [2024] APO 45
Patent Application: 2016204726
Title:Improved Door Furniture and Method of Installation
Patent Applicant: Ace Products Holdings Pty Ltd
Opponent: ASSA ABLOY Australia Pty Ltd
Delegate: Stephanie Howard
Decision Date: 14 November 2024
Hearing Date: 4th September 2024, via video conference
Catchwords: PATENTS – opposition to the grant of patent – s 59 – clarity – claims are clear – clear enough and complete enough disclosure – claims do not comply with s 40(2)(a) – claims lack support – claims do not comply with s 40(3) – novelty – claims are novel – inventive step – claims are inventive – opposition successful – opportunity to amend – cost awarded
Representation: Patent attorney for the applicant: Philipp Orth from Wynnes Patent and Trade Mark Attorneys Pty Ltd
Patent attorney for the opponent: Mathew Campbel from ET Patents Limited
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016204726
Title:Improved Door Furniture and Method of Installation
Patent Applicant: Ace Products Holdings Pty Ltd
Date of Decision: 14 November 2024
DECISION
The opposition is successful. There is not sufficient support for claims 1-21 in the description, as required under section 40(3). Claims 1-21 do not comply with section 40(2)(a) as there is not clear enough and complete enough disclosure of the claimed invention.
The Applicant has two (2) months from the date of this decision to file suitable amendments.
I award costs according to Schedule 8 against the Applicant, Ace Products Holdings Pty Ltd
REASONS FOR DECISION
Background
Patent application 2016204726 (the application) was filed in the name of Ace Products Holdings Pty Ltd (the Applicant) on the 7th of July 2016, which is also the earliest priority date.
Following two examination reports, the application was accepted and advertised as such on the 1st of December 2022. ASSA ABLOY Australia Pty Ltd (the Opponent) filed a Notice of Opposition under section 59 of the Patents Act 1990 (the Act) on 28th of February 2023.
A first Statement of Grounds and Particulars was filed on 28 May 2023. The Applicant wrote to request the Commissioner direct the Opponent to submit further and better particulars. Upon considering the issues raised by the Applicant, the Commissioner issued a letter directing the Opponent supply further and better particulars in relation to the grounds of novelty and inventive step and gave the parties one week to respond. In response the Opponent requested additional time to file further and better particulars. On the 24th of August 2023, both parties requested the proceedings be stayed for a period of one month and the deadline for filing Evidence in Support be extended under Regulation 5.9(2)(b) while settlement negotiations were discussed. The Commissioner issued a letter directing the opposition to the application be stayed for one month from the 24th of August 2023, with the Evidence in Support and the further and better particulars to be filed two weeks after the expiry of the stay.
On the 8th of October 2023, the Opponent filed a first amended Statement of Grounds and Particulars. The Commissioner refused the amendment to the Statement of Grounds and Particulars. The Opponent filed a second amended Statement of Grounds and Particulars (the SGP) on the 2nd of November 2023. The Commissioner allowed the amendment to the SGP on the 17th of November 2023.
The Opponent filed Evidence in Support (EIS) on the 8th of October 2023, which included a declaration by Aaron Smith (Smith1) dated the 6th of October 2023 with Annexures AS-1 to AS-4. The Applicant filed Evidence in Answer (EIA) on the 8th of January 2024, including a declaration by Philipp Orth (Orth) dated the 8th of January 2024 and Exhibit PSO-1. Evidence in Reply (EIR) was filed on the 8th of March 2024, including a declaration by Aaron Smith (Smith2) dated the 8th of March 2024, thereby completing the evidence. The Opponent filed written submissions on the 21st of August 2024. The Applicant filed written submissions on the 28th of August 2024.
Grounds of Opposition
The SGP identified several grounds of opposition in relation to the Application. At the hearing the following grounds were pressed:
Clarity (s59(c)-s40(3))
Clear enough and complete enough disclosure (s59(c)-s40(2)(a))
Support for the claims (s59(c)-s40(3))
Novelty (s59(b) – s18(1)(b)(i))
Inventive step (s59(b) – s18(1)(b)(ii))
Applicable Law and Onus
The present application is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB Act) as the application was filed after 15 April 2013.
The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to the grant exists. Then, if satisfied, I may refuse the application or, where appropriate, give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per Section 60(3A) & (3B) of the Act.
The Invention as Described
The application relates to door furniture and methods of installation, in particular a door furniture assembly for a rotatable door handle or lever. The specification described the various problems with the prior art. In particular, door furniture can be awkward and time consuming to install; there are often multiple parts that are easy to lose, or require more than one person to manage, and it can be difficult and time consuming for the average person to change a handle between a left hand hung door to a right hand hung door or vice versa.
Under Summary of Invention the specification outlines several aspects of the alleged invention. The first broadly describes a door furniture assembly with features consistent with those presented in claim 1 as accepted. The second aspect of the alleged invention focuses on the features of a hold-in spindle system for a rotatable door handle or lever. The hold-in spindle system includes an elongate spindle, a furniture housing portion for mounting a handle or lever and a spindle retaining member. The spindle retaining member has at least one deformable arm and a rigid engagement portion such that the elongate spindle and the spindle retaining member can snap fit to the furniture housing portion. The third aspect relates to a snap fit mounting assembly for door furniture. The snap fit mounting assembly comprises a first and second furniture housing portion to be mounted on a first and second side of a door respectively, at least a pair of length adjustable connectors and at least one resilient clip seated in a seating groove of the first or second furniture housing portions, wherein the at least one resilient clip engages with an abutment surface in an opposing connector in order to mount the housing portions to each other.
The preferred embodiments and features are described in the subsequent paragraphs of the specification. The features of the alleged invention, best represented in Figure 1 below, is summarised in paragraph [0088]:
“The door furniture assembly illustrated in the Figures includes at least one furniture housing portion 10 adapted to mount a rotatable door handle 11 relative thereto, an operating cassette 12 releasably engageable with the furniture housing portion 10. The cassette 12 of the illustrated embodiment includes a spring housing 13, and a spring housing cover 14, together defining a housing to contain a lever spring 15 and a drive plate 16. The drive plate 16 engages with an elongate spindle 17 indirectly through the engagement of both components with the lever handle and the spindle is also in engagement with a retractable latch (not shown) such that rotation of the handle 11 causes movement of the retractable latch. In use, the handing of the lever door handle will be able to be changed quickly and easily by loosening the operating cassette 12 relative to the furniture housing portion 10 and reorienting the lever handle relative to the operating cassette 12 and the furniture housing portion 10 to change the handedness of the door furniture.”
The assembly further includes a snap fit mounting assembly which includes length adjustable connectors that have at least one abutment shoulder that engage with an at least one resilient clip seated in a seating groove of the first or second furniture housing when the first furniture housing portion and second furniture housing portion are forced together from opposite sides of the door.
The rotatable door handle is normally mounted relative to the door using an escutcheon or rose mounting for an aesthetically pleasing assembly.
As best demonstrated in Figure 2 below, the furniture housing has a central bore 24 and a peripheral wall 26 that defines a cavity to receive cassette 12. The housing portion 10 has a number of mounting openings 27 and fastener seating depressions 29 in order to receive fixing or mounting screws, preferably quick fix connectors. The peripheral wall 26 of the furniture housing portion 10 further comprises seating groove 32 to receive a spring clip 23. The cassette 12 has a pair of arcuate protrusions 34 that engage with a cassette guides or alignment grooves in the peripheral wall 26 to prevent rotation of the cassette 12 relative to the furniture housing portion 10.
In use, a matched pair of housing portions 10 is provided for each side surface of the door that align with one another to sandwich the door therebetween. It is preferred that the cassette 12 is provided assembled in order to minimise the number of parts required during assembly. The cassette 12 consists of a spring housing cover 14 and a spring housing 13 that connect together via one or more snap arms 47 in the housing cover 14 in order to contain a drive plate 16 and a lever spring 15.
The biasing mechanism of the internal components is described in paragraph [00103]:
“An internal side of the peripheral wall 36 is preferably provided with one or more abutment shoulders 39 in order to abut parts of the lever spring 15 and/or a drive plate stop 41 provided on the drive plate 16. Typically, a C shaped portion 40 is provided concentrically within the cavity of the spring housing 13, preferably against or as a part of the peripheral wall 26 with an abutment shoulder 39 provided at either end of the C shaped portion 40. Typically the abutment shoulder 39 provided at one end of the C shaped portion 40 will abut one end 42 of the lever spring 15 in order to brace the lever spring 15 against movement and allow the drive plate 16 to be rotated against the spring force of the lever spring 15 and the abutment shoulder 39 at the other end of the C shaped portion 40 will preferably abut the drive plate stop member 41 in the ‘home’ position with the other side of the drive plate stop member 41 abutting the other end 43 of the lever spring 15 in order to bias the drive plate 16 into the ‘home’ position. This mechanism will typically act to return the handle or knob to the home position following use.”
The drive plate 16 additionally includes an abutment arc portion 50 on the opposite side to the drive plate stop member 41 and a central opening 49. The central opening 49 includes a pair of engagement tabs 52 extending into the central opening 49. The engagement tabs 52 engage a portion of the handle or lever which extends into the cassette 12.
The annular wall 44 of the spring housing includes a depression 53 to receive a stop plate 54 in order to hold the cassette 12 into the cavity of the furniture housing portion via use of a fastener 55. To the change the handing, the stop plate 54 is loosened and the lever handle 11 is rotated relative to the cassette 12, engaging only the internal components. After the lever handle 11 is rotated into the desired position, the stop plate 54 is re-tightened.
The assembly also includes a hold-in spindle system which includes an elongate spindle 17 and a spindle retaining member 56 engageable with elongate spindle 17. The spindle retaining member 56 comprising a pair of deformable arms 57 that extend laterally in order to releasably engage the spindle 17 with the furniture housing portion 10. The spindle retaining member 56 further comprising a spindle mounting pin 58 to engage with the elongate spindle 17 such that the elongate spindle 17 and the spindle retaining member 56 can be snap fit to the lever handle 11. The spindle system is secured via engagement between depression 59 in the elongate spindle, the deformable arms 57 and the tabs 52 of the drive plate 16.
The spring clip 23 is substantially C-shaped and normally manufactured of metal. The spring clip 23 is provided with a pair of free ends that converge toward one another to allow the spring clip 23 to engage with the furniture housing portion 10. Quick fix connectors 63 are provided to attach corresponding furniture housing portions 10 relative to one another on opposite sides of the door. Once the quick fix connectors 63 are inserted into housing portion 10 the spring clip 23 rests in seating groove 32 of the furniture housing 10 and the circumferentially extending groove 69 of the quick fix connectors 63, thereby preventing removal of the quick fix connectors. The quick fix connectors 63 may be removed by deforming the spring clip 23.
In an alternative embodiment, the quick fix connectors facilitate a bayonet type fitting such that the enlarged head 83 of the quick fix connector 63 can be inserted into one end of an arcuate mounting opening 85 of the furniture housing portion 10, then the enlarged head 83 is received at, least partially, into a corresponding depression 84 to hold the quick fix connector 63 therein.
The Invention as Claimed
The application was accepted with 21 claims. The claims are directed to a rotatable door handle and are provided in Annex A. Independent claim 1 is provided below.
Claim 1:
A door furniture assembly for a rotatable door handle or lever, the door furniture assembly including a rotatable door handle or lever; at least one furniture housing portion adapted to mount a rotatable door handle or lever relative thereto, an operating cassette releasably engageable with the at least one furniture housing portion, the cassette including a spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate to engage with the rotatable door handle or lever; and an elongate spindle to engage with the rotatable door handle or lever and a retractable latch such that rotation of the door handle or lever causes movement of the retractable latch wherein the rotatable door handle or lever can be reoriented relative to the operating cassette whilst the cassette stays substantially in place to change the handedness of the door furniture, wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion.
The Person Skilled in the Art (PSA)
It is well established that a person skilled in the art (PSA):
“… is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
Furthermore, a PSA is a hypothetical person or team of people versed in the relevant subject matter and possesses the relevant common general knowledge. It is emphasised that a PSA is not a person of exceptional skill and knowledge.
Throughout the hearing, the Opponent relied on evidence in the form of declarations provided by independent expert Aaron Smith. The Applicant relied on a declaration provided by the patent attorney for the Applicant, Philipp Orth.
In the Opponent’s written submissions at [20], they stated that the current application is in the field of door furniture and therefore:
“[t]he person skilled in the art would have knowledge of the construction, installation, or configuration of door furniture. This includes a locksmith or carpenter, as noted at paragraph 4 of the specification.”
Experts
Mr Smith is a qualified locksmith who owns a specialist locksmith company and has been casually teaching Security Technology and Locksmithing at Melbourne Polytechnic since 2010. Mr Smith has over 15 years of experience in the field including residential and commercial security hardware and systems, automotive locksmithing and safe and vault opening and servicing. He states that he is particularly familiar with door furniture products and has a detailed understanding of the design and functionality of those products.
Mr Orth is an Australian Registered Patents and Trademark Attorney at Wynnes Patent and Trade Mark Attorneys who is acting on behalf of the Applicant. Mr Orth has a background in mechanical engineering and has experience drafting and prosecuting patent applications for door furniture since 2009.
Submissions
In their written submissions, the Opponent raised concerns that Mr Orth had limited experience in the field of door furniture and that any specialised knowledge was due to work on the current application. They argued that Mr Orth had more generalised knowledge in the field mechanical engineering rather than door furniture and thus could not reliably comment on what might be understood at the priority date of the Application in Australia. Furthermore, the Opponent submitted that Mr Orth’s evidence may be tainted by hindsight, and therefore unreliable, due to his knowledge of the application prior to giving evidence. They argued, since Mr Smith gave evidence regarding the prior art without prior knowledge of the application and in light of his specialised knowledge in the field, that Mr Smith’s evidence should be given greater weight than that of Mr Orth.
In response, the Applicant highlighted Mr Orth has experience working with door furniture technology since 2009. Additionally, the Applicant questioned Mr Smith’s experience, arguing that he is not reliably qualified as he does not understand how the handing is changed in the current invention. At the hearing the Opponent argued that a lack of understanding is not indicative of Mr Smith’s reliability, but rather points to a lack of sufficient information in the application.
Consideration
I have considered the relevant background and experience of the declarants from the relevant evidence. While Mr Orth would have garnered some understanding of the common general knowledge in the art from his work with patent applicants on patent applications, I do not believe that this should be given the same weight as practical experience in the field, particularly with regards to the design of door furniture. Mr Smith has a practical understanding of the design and functionality of a broad range of door furniture products. As such he is well-placed to assess what a person skilled in the art would or would not do in light of common general knowledge before the earliest priority date of the application. Where necessary, if there are differences between the evidence of Mr Orth and Mr Smith, Mr Smith’s evidence should be preferred.
Claim construction and clarity
As provided for in s40(3) of the Act, the claims must be clear and succinct. To satisfy the requirements of clarity the claims need not have a precise definition as long as they have a common-sense meaning. See in particular, Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229 (Austal Ships)):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use … The consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, common sense manner … Absurd constructions should be avoided … and mere technicalities should not defeat the grant of protection …”
The claims are considered to provide a workable standard if a third party could, without difficulty, determine whether an act falls within the scope for the claim; see Monsanto Company v commissioner of Patents (1974) 48 ALJR 59 (Monsanto) at 60-61:
“There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim … For these reasons I do not regard the use of the adjective ‘substantial’ as giving rise to any uncertainty.”
Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (Lundbeck) at [118]-[120] discussed how to approach claim construction:
“…the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification, including the claims, are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification… construction of a specification, including the claims, is ultimately a question of law for the Court… 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… However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification...”
Clarity
Claim 7
A door furniture assembly as claimed in any one of the preceding claims wherein the drive plate has a central opening with an opposed pair of engagement tabs extending from a periphery defining the central opening of the drive plate into the central opening and extending in the same plane as the drive plate to engage a portion of the handle or lever which extends into the cassette.
The Applicant responded, arguing that the feature of “a drive plate” was clearly introduced in claim 1, upon which claim 7 depended. They submitted that the language in claim 1 is that the depression is “…to contain…a drive plate…” not “for containing” as contended by the Opponent.
Consideration
I agree with the Opponent’s construction of claim 1. Claim 1 recites “…cassette including a spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate to engage with the rotatable door handle or lever”. While the language does not include “suitable for” it still reads as such. In particular, the passage describes the features of the spring housing and the spring housing cover that together define a space to, or that can, contain a lever spring and drive plate. However, I do not think this renders claim 7 unclear. While claim 7 defines further features of the drive plate, which may or may not be present in claim 1, it is clearly saying that if the drive plate is present, it has the described features.
Claim 8
A door furniture assembly as claimed in any one of the preceding claims wherein in use the stop plate is at least loosened to free the cassette from the furniture housing portion to allow the handle or lever to be moved to change the handing.
The Applicant submitted that “a stop plate” was clearly introduced in claim 1, upon which claim 8 depended. They argued that the language in claim 1 is “…to receive a stop plate…” rather than “for receiving” as submitted by the Opponent.
Consideration
Claim 1 recites ‘…wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion’. For similar reasons provided above, I agree with the Opponent that the stop plate may or may not be a feature of the assembly described in claim 1. More specifically, the outlined passage describes the features of the cassette which has a depression designed to, or that can, receive a stop plate. However, this does not create ambiguity in claim 8. While the stop plate may or may not be present in claim 1, claim 8 clearly suggests that if the stop plate is present, it is to be in a loosened state to permit the handing to be changed.
Claim 10
The Opponent argued that reference to “the central opening of the drive plate” renders claim 10, as provided below, unclear as claim 10 already refers to the central opening as being part of the door furniture housing portion.
A door furniture assembly as claimed in claim 9 wherein the at least one door furniture housing portion having the drive plate associated therewith has a central opening with an opposed pair of engagement tabs extending from a periphery defining the central opening of the drive plate into the central opening and extending in the same plane as the drive plate to engage the spindle.
Consideration
Claim 10 recites “…the at least one door furniture housing portion having the drive plate associated therewith has a central opening…”. From this passage alone, I agree with the Opponent that it reads as if the central opening is associated with the housing portion rather than the drive plate. This is because the subject of this passage is the housing portion and thus the subsequent features of the drive plate and central opening read as if they are associated with the housing portion. Ambiguity arises from reading the claim as a whole, where it further recites “the central opening of the drive plate”. There is some uncertainty as to whether, due to antecedent, there is a central opening of the housing portion in addition to one associated with the drive plate, or if there is just one central opening associated with either the housing portion or the drive plate.
Claim 11
A door furniture assembly as claimed in claim 10 wherein the spindle has a depression provided in a pair of opposed side walls of the spindle in order to receive the engagement tabs provided on the drive plate.
Consideration
Referring back to claim 10, claim 10 recites “…furniture housing portion having the drive plate associated therewith has a central opening with an opposed pair of engagement tabs extending from a periphery…”. For the same reasons provided above, this passage reads as if the central opening, and thus the opposed pair of engagement tabs, are associated with the furniture housing portion. As discussed above, in light of the claims and specification as a whole, it is clear that the central opening, and therefore the engagement tabs, are associated with the drive plate.
Conclusion
I conclude that the claims 7, 8, 10 and 11 do not lack clarity in accordance with s40(3) of the Act. This ground of opposition has been unsuccessful.
Clear Enough and Complete Enough Disclosure
S40(2)(a), as introduced with the RTBAct, requires that the “a complete specification must disclose the invention in a manner which is clear enough and compete enough for the invention to be performed by a person skilled in the relevant art”.
As discussed in the Explanatory Memorandum (EM) to the RTB legislation at Schedule 1, item 8, enablement amounts to a requirement that “...sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”. As per Schedule 1, item 8, of the EM, the intention is for s40(2)(a) be given the same effect as corresponding provisions of UK legislation and the European Patent Convention.
Recently, Burley J confirmed the approach taken by the delegates of the Commissioner in both CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) and Evolva SA [2017] APO 57 (Evolva) in Cytec Industries Inc. v Nalco Company [2021] FCA 970 (Cytec) at [143]-[144]:
“In CSR Building Products Limited v United States Gypsum Company [2015] APO 72, Dr S D Barker considered at [95] that is involved the following three steps:
1.construe the claims to determine the scope of invention as claimed,
2.construe the description to determine what it discloses to the person skilled in the art, and
3.decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
In the present case, the delegate (at [54]) added to these further questions to be considered, citing Evolva SA [2017] APO 57 at [45]:
1.Is it plausible that the invention can be worked across the full scope of the claim?
2.Can the invention be performed across the full scope of the claim without undue burden?”
Submissions
The Opponent submitted that the invention as claimed in claims 1-21 is not disclosed in a manner which is clear enough and complete enough as required under s40(2)(a) of the Act. They submit that the specification provides insufficient disclosure of how the handedness of the invention is changed while the door furniture assembly remains substantially in place.
The Opponent referred to declarations provided by Mr Smith where he states that, in his opinion, it would not be possible for the handing of the door furniture, as described in the specification, to be changed without completely disassembling the cassette. In Smith1 at [78]-[81], [83], he explains:
“From the state of Figure 2, the drive plate 16 cannot rotate clockwise to change the handing of the door furniture. This is because drive plate stop member 41 must abut abutment shoulder 39A of the C shaped portion 40 (as described in paragraph 103 on page 19). Drive plate stop member 41 cannot pass through the solid C shaped portion 40 to rotate clockwise.
The drive plate 16 also cannot rotate anti-clockwise to change the handing of the door furniture. This would cause the drive plate stop member 41 to force end 43 of the lever spring 15 towards end 42 of the lever spring 15. I would expect this to cause a mechanical clash between ends 42 and 43 that would prevent a full 180- degree rotation of the drive plate 16.
Even if this mechanical clash were avoided somehow, the resulting position would cause the handle to be urged clockwise towards an opening position due to the end 43 urging the drive plate stop member 41 clockwise. This is the same as before the change of handing. Consequently, in both alleged handing settings, the drive plate stop member 41 (and therefore ultimately the handle) is urged to rotate in the same direction.
I do not consider this a change in handing. To properly change handing, the biasing direction must also be changed. This is because a lever spring 15 should bias the handle towards its home position. This is described in paragraph 103 on page 19, but also reflects a universal understanding in the field: if a handle were biased away from its home position, it would be considered faulty and non-functional.
…
To properly change the handing, I would consider that drive plate stop member 41 must move from its position intermediate the abutment shoulder 39A and the end 43, into a new position intermediate the abutment shoulder 39B and the end 42. There is no information in AU726 as to how this is done, but in my opinion, I do not consider this possible without completely disassembling the cassette.”
Annotated Figure 2 referred to in Smith1 is provided below.
The Opponent concluded that the invention was not described in a clear enough and complete enough manner since Mr Smith was unable to work the invention across the full scope or without undue burden.
At the hearing the Applicant clarified that drive plate stop member 41 slides around the central most face of C-shaped portion 40 and thus would not get stopped by the abutment shoulder 39 or 39A, the drive plate stop member 41 abuts the abutment shoulder 39 or 39A by sitting adjacent thereto in the home position. When the stop plate 54 is secured to the assembly, rotation in one direction is prevented via abutment arc 50 of the drive plate 16 abutting a portion of the stop plate 54. When assembled, spring ends 42 and 43 of the lever spring 15 are long enough to abut both the drive plate stop member 41 and an abutment shoulder 39 or 39A. In a right-hand configuration, as the handle or lever turns anticlockwise spring end 43 of the lever spring is forced upwards while the spring end 42 pushes down on abutment surface 39. In order to change the handing of the door furniture to a left-hand configuration, the stop plate 54 is loosened or removed such that drive plate 16 can rotate in a clockwise direction before the stop plate 54 is re-secured to the assembly, thus preventing rotation in the anticlockwise direction. The cassette stays substantially in place when the stop plate is removed and as the drive plate is rotated to change the handing. In the left-hand configuration, as the handle or lever is rotated in a clockwise direction drive plate stop member 41 pushes up spring end 42 and spring end 43 pushes downwards on the other abutment shoulder 39A. The Applicant pointed to images provided in Exhibit PSO-1 as further evidence that the handing can be changed while the cassette remains substantially in place.
The Opponent responded that the Applicant’s description of how the invention works may be an accurate representation of the physical product, however having the drive plate stop member 41 slide along the inner face of the C-shaped portion 40 is contrary to what is described in the specification.
The Opponent referred to paragraph [00103] which states:
“…the abutment shoulder 39 at the other end of the C shaped portion 40 will preferably abut the drive plate stop member 41 in the ‘home’ position with the other side of the drive plate stop member 41 abutting the other end 43 of the lever spring 15 in order to bias the drive plate 16 into the ‘home’ position.”
They argued that a plain reading of the above paragraph would lead a PSA to configure the assembly such that the drive plate stop member 41 is sandwiched between the top of the abutment shoulder 39 and end 43 of the lever spring 15. They argue that, based on this construction, a PSA would not be able to work the invention across the full scope as it would not be possible to change the handing of the door furniture while the cassette remains substantially in place.
The Applicant submitted that the Opponent’s construction of paragraph [00103] would be absurd and should be rejected.
Consideration
It is apparent that the location of the drive plate stop member 41 is central to whether or not the handing of the door furniture can be changed whilst the cassette remains substantially in place, as required by claim 1. With this in mind, the issue appears to be whether paragraph [00103] provides for a drive plate stop member 41 that is sandwiched between the abutment shoulder 39 and an end 43 of the lever spring, or if the paragraph could, and would, be construed such that the drive plate stop member 41 is located inside the C-shaped portion 40 to “abut” the abutment shoulder in an adjacent configuration.
Consistent with the definition provided in the Macquarie Dictionary I consider “abut” to be synonymous with “adjacent to”. This construction does not immediately discount either party’s interpretation of paragraph [00103]. However, I consider a PSA would interpret the location of the drive plate stop member 41 to be as described by the Opponent, and only as such.
Paragraph [00103] recites that “abutment shoulder 39… will preferably abut the drive plate stop member 41 in the ‘home’ position with the other side of the drive plate stop member 41 abutting the other end 43 of the lever spring” (my emphasis added). To my mind, the use of “the other side of the drive plate stop member” is inconsistent with the construction provided by the Applicant. The use of “other side” suggests that an opposite, or at least a different side, of the drive plate stop member 41 interacts with the end 43 of the lever spring. If it were the case that the drive plate stop member 41 was to sit adjacent to the abutment shoulder 39 where, in the “home” position, end 43 of the spring lever would sit against both the drive plate stop member 41 and the abutment shoulder 39, there would be no need to reference an alternative side of the drive plate stop member 41 as the same side would be interacting with both parts. I further note that the same language is used in other paragraphs, such as [0030], of the specification. As such, a PSA, would read the language used in paragraph [00103] as intentional rather than an obvious mistake.
Furthermore, as the Opponent noted at the hearing, the Applicant’s construction of “abut” is inconsistent with how it is used in the rest of the specification. The specification uses “abut” to refer to components that interact or engage in some way. For example, paragraph [00103] recites “…abutment shoulder 39 provided at one end of the C shaped portion 40 will abut one end 42 of the lever spring 15 in order to brace the lever spring 15 against movement…”. A further example can be seen from paragraphs [0117]-[0119], with reference to Figure 10, where spring clips 23 abut, or sit in, an abutment shoulder located in the connector barrel 67 or the shank 66 in order to secure the quick fix connector 63 to the furniture housing portion 10. If the drive plate stop member 41 were to sit “adjacent to” the abutment shoulder 39 and on the inside face of the C-shaped portion 40, there would be no engagement or interaction between the abutment shoulder 39 and the drive plate stop member 41.
Finally, I do not consider this construction of paragraph [00103] to be absurd, as the Applicant submitted. Paragraph [00103] discusses the internal features of the assembly that permit the biasing of the lever or handle to the home position in the right-hand configuration. As Mr Smith suggested in Smith1 at [76], this appears to be functionally appropriate. The assembly, as construed in paragraph [00103], would function such that, following use, the handle or lever would be biased back to the “home” position. It is not apparent that there are any problems until the PSA attempts to change the handing whilst the cassette remains substantially in place, as described in paragraph [0103]. There is no mention of the location of drive plate stop member 41 in paragraph [0103] nor is it apparent from Figure 2 that the interpretation of paragraph [00103] provided above is inconsistent with how the invention is intended to work.
Based on the above construction of the specification, the drive plate stop member 41 would not be able to turn clockwise beyond the abutment shoulder 39 in order to change the handing of the door furniture without disassembling the cassette. Therefore, there is insufficient information to work the invention across the entire scope without undue burden on a PSA.
Conclusion
Given that the requirement for the cassette to stay substantially in place during a change of handedness is common to all claims, and no dependent claim introduces features which would permit this to happen, claims 1-21 do not comply with s40(2)(a) of the Act as there is not clear enough and complete enough disclosure of all things falling within the scope of the claims.
Support for the Claims
The claims must be supported by matter disclosed in the specification as per sub-section 40(3) as amended by the RTB Act. As discussed in the EM to the RTB legislation at Schedule 1, item 9, the objective of the amendment is to align the requirements with those of overseas jurisdictions like the United Kingdom and Europe. TCT Group v Polaris [2022] FCA 1493 expressly endorsed European patent decision Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) which provided guidance regarding the requirements for “support” at 659:
“the claims must be supported by the description, in other words it is the description of the invention in the claims that needs support. In the Board’s judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in decision T 26/81 (OJ EPO 1982, 211, point 4 of the reasons), the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention” (emphasis in the original).
To summarise, support requires “the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.” This means that, as quoted above, “the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.”
More recently, Burley J outlined the approach to be taken when assessing support for the claims in Merck Sharp & Dohme Corporation v Wyeth LLC (Merck Sharp) (No 3) [2020] FCA 1477 at [546]-[547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
... to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
Claim 1
A.Handedness
The Opponent submitted that claim 1 is not supported because it requires “the rotatable door handle or lever can be reorientated relative to the operating cassette whilst the cassette stays substantially in place to change the handedness of the door furniture”. For similar reasons under s40(2)(a), they argue there is not sufficient information in the description and thus the claims extended beyond the technical contribution of the description.
Consideration
A.Stop plate
Consideration
For the reasons provided previously when discussing clarity of claim 8, claim 1 does not expressly require the stop plate to be present. Claim 1 recites ‘wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion’ (my emphasis added). Within the scope of claim 1, the stop plate may be secured to the assembly, loosely secured to the assembly or not present at all. It is apparent from the specification that the stop plate secures the cassette relative to the furniture housing, see for example paragraph [0040] and [0103]. While the stop plate needs to be either secured or loosened to keep the cassette substantially in place (see [0103]), it is apparent that the stop plate needs to be removed in order to allow the cassette to be released from the furniture housing. The description provides support for the cassette being releasably engaged with furniture housing portion, see [0009], [0024] and [0088], and thus for the stop plate to be not present.
The features of the stop plate, as presented in claim 1, is supported by matter disclosed in the description.
Claim 9
Claim 9 recites “the elongate spindle and spindle retaining member can be snap fit to the at least one furniture housing portion”. The Opponent was of the view that there is no support for the elongate spindle and spindle retaining member to be snap fit to the at least one furniture housing portion as the description only provided for “the elongate spindle 17 and spindle retaining member 56 can be snap fit to the level handle 11” (sic).
Consideration
Claim 10
In the Opponent’s written submissions, they argued that the feature “at least one door furniture housing having a central opening with an opposed pair of engagement tabs” is not supported as the description is silent with regards to this feature.
Consideration
Claim 15
Claim 15 recites “each connector being length adjustable”. The Opponent pointed out there were two references to length adjustable connectors in the specification, however argued that the specification merely mentioned this feature without discussing how a length adjustable connector might be used in embodiments without a snap fit assembly.
Consideration
Claim 21
Claim 21 requires a ‘bayonet wall’. The opponent argued that this feature was not explicitly or implicitly in the description and thus was not supported.
Consideration
Act.
Conclusion
Claims 1-21 do not comply with s40(3) the Act as they are not fully supported by matter disclosed in the description for the reasons provided above.
Novelty
Novelty is determined using the reverse infringement test. The reverse infringement test is outlined in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (‘Meyers Taylor’)t:
“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.”
Further, guidance on can be sought from General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at pages 485-486 (‘General Tire & Rubber’):
“...if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee’s invention will not suffice.”
US 7,152,891 B2 (D1)
In their submissions the Opponent stated that claims 1, 2, 6 and 8 were not novel in light of the disclosure of D1.
D1 is directed towards a lockset for use in a door furniture assembly. The door furniture assembly is designed to accommodate either a left or right-handed door. The handing can be changed via rotational adjustment of a spindle assembly relative to a first and second escutcheon. The internal components of D1 are best represented in Figure 5, as shown below.
The problem being addressed by D1 is summarised in column 1:
“Therefore, a lockset that provides for installation on either a right-handed or a left-handed door, without requiring extensive disassembly of the lockset, is desirable in the industry. Furthermore, a lockset that is easily moveable between a right-handed and a left-handed configuration while concurrently enabling a plurality of escutcheon, knob, and lever designs is also desirable.”
The mechanism in which the handing is changed in D1 is described at columns 5-6:
“To rotate the housing 20, sleeve 24, and spindle assembly 16 relative the escutcheon 18, a force is applied to the bearing 120 against the bias of the compression spring 118. Sufficient compression of the spring 118 will disengage the first locking tab 85 from the first slot 72 and the second locking tab 87 from the second slot 74. Once disengaged, as shown in FIG. 3, rotation of the bearing 120 will cause the engagement surface 125 of the projection 124 to engage the first and second tabs 88, 90, thereby rotating the housing 20 as the bearing 120 rotates. Rotation of the bearing 120, once engaged with the housing 20, will cause the housing 20, sleeve 24, and spindle assembly 16 to rotate 180[deg.] until the first locking tab 85 is seated in the second slot 74 and the second locking tab 87 is seated in the first slot 72. Once properly aligned with the slots 72, 74 the compressive force applied to the bearing 120 may be released, thereby locking the housing 20 to the retainer shield 22 once again. It should be understood that by rotating the spindle assembly 16 180°, the orientation of the half-round spindle 94 may be reconfigured relative to the escutcheon 18.”
Submissions
In their written submissions, the Opponent addressed each feature of claim 1 individually. After verifying the features disclosed in D1, in dispute is whether D1 discloses the following features of claim 1:
I.A spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate to engage with the rotatable door handle or lever; and
II.wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion.
I will consider each of the above features of claim 1 in turn.
A spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate to engage with the rotatable door handle or lever
In the Opponent’s written submissions at [51] they outline that:
“D1 teaches a retainer shield 22a and retaining ring 132. A torsion spring 100a and housing 20 are located in the retainer shield 22a. The retaining ring 132 covers part of the opening of retainer shield 22a, and therefore defines, in part, a housing to contain the torsion spring 100a and housing 20.”
At the hearing the Opponent argued that, while the retaining ring 132 is not similar to the spring housing cover of the current application, the retainer shield 22a and retaining ring 132 acts as a housing since the combination inherently covers the spring 100a. They claimed that the torsion spring 100a and housing 20 acts as the lever spring and drive plate, noting that claim 1 does not specify the form of the drive plate. The Opponent further submitted that housing 20 functionally engages with the assembly 112 via the sleeve 24a and that, since claim 1 does not specify that the engagement needs to be direct, this indirect engagement is within the scope.
In contrast, the Applicant argued that there is no disclosure of the above features in D1. They submitted that the retaining ring 132 in D1 is not a cover or a housing and does not hold the spring together with the lock mechanism. They referred to Column 6 lines 26-28 of D1 to highlight that the retaining ring 132 is instead used to attach sleeve 24a to escutcheon 18a. Furthermore, they argued that retainer shield 22a could not be considered a spring housing. Claim 1 requires that the spring housing is designed to contain the drive plate and the lever spring. The Applicant argued that the retainer shield 22a could not be a spring housing as provided for in claim 1, since the torsion spring 100a sits outside of the retainer shield 22a, as shown in Figure 6, and thus is not contained therein. Instead, they submitted that housing 20 could be considered the spring housing as defined in claim 1, but that it could not also be the drive plate. Lastly, the Applicant contended that housing 20 is not a drive plate, as provided for in claim 1, as it does not engage with assembly 112.
At the hearing the Opponent responded that the assertion that it is the combination of the spring housing and spring housing cover that contain the lever spring and the drive plate is not consistent with the figures of the current application. They argue that it is the spring housing alone that contains the components which is similar to D1. They highlighted that retainer shield 22a has an annular wall which they argued inherently contains the torsion spring 100a. Furthermore, while retaining ring 132 does not interact with the retainer shield 22a, the retaining ring 132 functions as a spring housing cover.
Consideration
Claim 1 requires “…a spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate…”. It is clear that the spring housing and spring housing cover, together, form a housing that is to contain both a lever spring and a drive plate. I note that, in the context mechanical devices, the Macquarie Dictionary defines a “housing” as “a frame, plate or the like, that encloses a part of a machine, etc., e.g. a bearing housing”. That definition is apt here. In other words, claim 1 provides for a spring housing and a spring housing cover that together interact such as to create a container or enclosure. This is consistent with the Applicant’s use of “housing” in the specification. For example, from Figure 2 it is clear that spring housing 13 and spring housing cover 14 interact such as to contain and retain both the drive plate 16 and the lever spring 15 therein. In particular, the spring housing cover 14 has snap arms 47 that engage with an outer portion of the annular wall 35 of the spring housing 13, which assemble such as to form a container or enclosure. With this in mind I do not consider D1 to disclose “a spring housing and a spring housing cover, together defining a housing”. While I agree that retaining ring 132 covers part of the opening of the retainer shield 22a, it does not interact with the retainer shield 22a to aid in retaining both the torsion spring 100a and housing 20. As highlighted by the Applicant, the retaining ring 132 is instead used to attach sleeve 24a to escutcheon 18a, and there is no interaction with retainer shield 22a that facilitates the containment of 100a and housing 20.
D1 does not disclose “a spring housing and a spring housing cover, together defining a housing”.
Turning to the feature of “a drive plate to engage with the rotatable door handle or lever”. As discussed previously, the drive plate is not necessarily part of the claim, however I note that the conditions for suitability are sufficiently narrow that disclosure is needed. In other words, claim 1 requires a housing and a rotatable door handle or lever that is designed to permit engagement between a drive plate located within the housing and the rotatable door handle or lever. There is a question, then, of whether this engagement needs to be direct, as suggested by the Applicant, or functional, as suggested by the Opponent. I note that the Macquarie Dictionary relevantly defines “engage” as:
“to cause to become interlocked: engage first gear.
to interlock with: the cogs engage those of a second wheel.”
These definitions are consistent with the use of “engage” throughout the specification. For example, as per paragraph [0033], snap arms on the spring housing cover “engage” with the annular wall of the spring housing cover to interlock the two components. Additionally, indirect engagement was specified for components where this was intended, such as between the drive plate and the spindle at [0024]. Consequently, I have construed “engage” to be synonymous with interlock or directly interact.
In light of the above, D1 does not disclose “a drive plate to engage with the rotatable door handle or lever”. As agreed by both parties, D1 only discloses an indirect engagement between the housing 20 and the assembly 112 via the sleeve 24a.
Wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion
In their written submissions, the Opponent stated that D1 disclosed an attachment aperture 152 and a fastener 154 which hold the retainer shield 22a to the escutcheon 18a, and these corresponded to a depression and a stop plate as defined in claim 1. While the attachment aperture 152 and the fastener 154 are different from the depression and stop plate of the current application, the Opponent argued that the form of these components is not specified in claim 1. Furthermore, they submitted that, even though the fastener 154 of D1 is designed to secure components, it can still be releasable and nothing in claim 1 requires this to be done during re-handing of the door furniture.
At the hearing the Applicant argued that there is no stop plate or a depression to receive a stop plate in D1. They argued that, while it could be of any shape, claim 1 defines a “plate” and a fastener cannot be considered a plate. In their written submissions, they further argued that fasteners 154 are inserted through the attachment apertures 152 to fixedly secure the retainer shield 22a to the escutcheon 18a. They submitted that claim 1 requires a “a stop plate in order to releasably hold the cassette relative to the furniture housing portion” and, therefore, the fasteners do not function as the claimed stop plate.
Consideration
I agree with the Applicant that D1 does not disclose a “at least one depression therein to receive a stop plate”. While the shape of the “stop plate” is not defined in claim 1, it still needs to be a “plate” shaped member, which are substantially flat or of uniform thickness; in particular a “a thin, flat sheet or piece of metal or other material, especially of uniform thickness” as per the definition provided in the Macquarie Dictionary. The fasteners 154 of D1 are not substantially flat and thus cannot be considered to be plates. Furthermore, the apertures 152 are designed to receive fasteners and are not suitable to receive a plate shaped member.
Conclusion
Claims 1-21 are novel in light of the disclosure of D1. The Opponent has failed to make a case against novelty.
Inventive Step
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claims, involves an inventive step. Subsections 7(2)-(3) state:
“(2) For the purposes of this Act, 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 art in light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
The test to determine whether a feature is obvious or not was summarised in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (‘Wellcome Foundation’) at [45] (my emphasis added):
“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.”
Further guidance on what constitutes “a matter of routine” is found in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)
That approach should be accepted.” (original emphasis, reference(s) omitted).
Importantly, inventive step is a question of fact that is best established by evidence.
Submissions
As outlined above, D1 does not disclose:
i.A spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate to engage with the rotatable door handle or lever; and
ii.wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion.
The Opponent relied primarily on a finding against novelty for claim 1, however at [78] of their written submissions, they argued that:
“If there are any differences between D1 and the subject matter of these claims, such differences would be considered obvious to a skilled person or mere design choices in view of the common general knowledge. For example, as noted in Smith 1, any features of D1 which are functionally equivalent to those in claim 1 would be readily substituted for the solution in claim 1 without any exercise of inventive ability.”
In response, at [44] of the Applicant’s written submissions they submitted:
“The Opponent’s evidence fails to demonstrate why the specific combination of features in each claim of the Application would have been obvious based on the common general knowledge at the priority date. Merely identifying individual elements within the claims and asserting their prior existence does not meet the standard required to prove obviousness of the combination as a whole. The Opponent’s method effectively invites the Commissioner to engage in speculation, lacking a solid evidentiary basis. Such an approach is inappropriate in this case, as it would not provide a reasoned or principled foundation for ruling against the Applicant.”
With regards to common general knowledge, at [96] of Smith1, Mr Smith states:
“I note that the stop plate is not defined in the claim as being a separate fastener and rectangular stop plate, like that shown in Figure 2 of AU726. However, I would consider that whether to use a rectangular plate similar to that shown in Figure 2 of AU726 or a fastener directly is a matter of design choice by the manufacturer: they are functionally equivalent in terms of releasably holding two components together. Both approaches are commonly known and used, along with grub screws and other fasteners, and could be freely substituted based on manufacturing needs.”
Neither of Mr Smith’s declarations appear to discuss whether it would be obvious to add a spring housing cover which, together with a spring housing, is designed to contain a lever spring and a drive plate.
Consideration
I agree with Mr Smith that stop plates are common general knowledge, however it is still unclear why it would be obvious to add one into the cassette of D1. A stop plate would still require some kind of fastener to secure it to the assembly and, as such, would serve no functional purpose in D1. Although claim 1 does not outline a functional relationship between the stop plate and how the handing is changed, a PSA would have no need to add a stop plate to the cassette of D1 given how the assembly functions. D1 is configured to change the handing by rotating the spindle assembly 16 to align it relative to the latch bolt mechanism 15. This is facilitated by applying and removing a force to a bearing 120 thereby disengaging and re-engaging locking tabs 85 and 87 from various slots, thus permitting or restricting rotation of the housing 20, sleeve 24, and spindle assembly 16 relative the escutcheon 18. In other words, locking and unlocking of the assembly does not occur due to a feature of the cassette. In light of the above, considerable reworking of D1 would be required to include a cassette with a depression to receive a stop plate, otherwise the stop plate would have no functional purpose and thus would not be added as a matter of routine.
Additionally, there is not sufficient evidence to establish that it would be common general knowledge or obvious to include a spring housing cover that together with a spring housing defines a housing for a spring lever and a drive plate in D1.
Conclusion
For the reasons outlined above I consider claims 1-21 to involve an inventive step.
Conclusion and Costs
The opposition is successful. There is not sufficient information provided to enable the whole width of the claims 1-21 to be performed by the skilled person without undue burden. There is not sufficient support for claims 1-21 in the description as there is insufficient information on how to change the handing while the cassette remains substantially in place. Moreover, claim 9 further lacks support as the feature wherein the elongate spindle and spindle retaining member is snap fit to the furniture housing is inconsistent with the description.
I will allow the applicant two (2) months from the date of this decision to propose suitable amendments.
The normal approach is that costs follow the event, and I see no reason to depart from this. I will award costs, according to Schedule 8, against the Applicant, Ace Products Holdings Pty Ltd.
Stephanie Howard
Delegate of the Commissioner of Patents
ANNEXURE A – Claims as accepted
1.A door furniture assembly for a rotatable door handle or lever, the door furniture assembly including a rotatable door handle or lever; at least one furniture housing portion adapted to mount a rotatable door handle or lever relative thereto, an operating cassette releasably engageable with the at least one furniture housing portion, the cassette including a spring housing, and a spring housing cover, together defining a housing to contain a lever spring and a drive plate to engage with the rotatable door handle or lever; and an elongate spindle to engage with the rotatable door handle or lever and a retractable latch such that rotation of the door handle or lever causes movement of the retractable latch wherein the rotatable door handle or lever can be reoriented relative to the operating cassette whilst the cassette stays substantially in place to change the handedness of the door furniture, wherein the cassette has at least one depression therein to receive a stop plate in order to releasably hold the cassette relative to the furniture housing portion.
2.A door furniture assembly as claimed in claim 1 wherein the at least one furniture housing portion has an annular outer wall surrounding a central bore with a peripheral wall extending from the outer wall to define a cavity on one side thereof to receive the cassette therein allowing a portion of the door handle extending through the central bore, to engage with the cassette.
3.A door furniture assembly as claimed in claim 2 wherein a number of mounting openings are provided through the annular outer wall in order to receive fixing or mounting fasteners to mount the at least one furniture housing portion relative to the door surface allowing both vertical screw fixing and horizontal screw fixing.
4.A door furniture assembly as claimed in claim 2 wherein the peripheral wall of the at least one furniture housing portion is provided with a seating groove into which a spring clip can be at least partially received.
5.A door furniture assembly as claimed in any one of the preceding claims wherein the spring housing and the spring housing cover clip or snap together.
6.A door furniture assembly as claimed in any one of the preceding claims wherein the cassette is provided with at least one engagement portion and a corresponding portion is provided on the at least one furniture housing portion in order to seat the cassette relative to the at least one furniture housing portion and to prevent rotation of the cassette relative to the furniture housing portion once properly fitted.
7.A door furniture assembly as claimed in any one of the preceding claims wherein the drive plate has a central opening with an opposed pair of engagement tabs extending from a periphery defining the central opening of the drive plate into the central opening and extending in the same plane as the drive plate to engage a portion of the handle or lever which extends into the cassette.
8.A door furniture assembly as claimed in any one of the preceding claims wherein in use the stop plate is at least loosened to free the cassette from the furniture housing portion to allow the handle or lever to be moved to change the handing.
9.A door furniture assembly as claimed in claim 1 further comprising a spindle retaining member engageable with the spindle and having at least one deformable arm with a portion extending laterally beyond the spindle in order to releasably engage the spindle with the at least one furniture housing portion and at least one rigid engagement portion to engage with the spindle such that the elongate spindle and spindle retaining member can be snap fit to the at least one furniture housing portion to be held there by the spindle retaining member
10.A door furniture assembly as claimed in claim 9 wherein the at least one door furniture housing portion having the drive plate associated therewith has a central opening with an opposed pair of engagement tabs extending from a periphery defining the central opening of the drive plate into the central opening and extending in the same plane as the drive plate to engage the spindle.
11.A door furniture assembly as claimed in claim 10 wherein the spindle has a depression provided in a pair of opposed side walls of the spindle in order to receive the engagement tabs provided on the drive plate.
12.A door furniture assembly as claimed in claims 10 or claim 11 wherein the spindle has a divided tail having a pair of spaced apart portions to be received between the opposed pair of engagement tabs, and to receive a part of the spindle retaining member therebetween, each of the spaced apart portions having a laterally extending opening in order to receive the at least one rigid engagement portion thereinto.
13.A door furniture assembly claimed in claims 9 to 12 wherein the spindle retaining member includes a pair of opposed deformable arms.
14.A door furniture assembly as claimed in claim 13 when dependent from claim 11 wherein when the spindle retaining member is assembled with the spindle, the deformable arms are positioned such that they can be deformed inwardly to sit within the depressions provided for the engagement tabs with the free end of each deformable arm standing proud of the spindle surface unless deformed.
15.A door furniture assembly as claimed in claim 1 wherein a first furniture housing portion of the at least one furniture housing portion is adapted to be mounted on a first side of the door, a second furniture housing portion of the at least one furniture housing portion is adapted to be mounted on a second side of the door, , at least one of the first furniture housing portion and second housing portion having a seating groove at least partially about a circumferential surface thereof and at least a pair of connectors associated with one of the first furniture housing portion and second furniture housing portion, each connector being length adjustable and each including at least one abutment shoulder and at least one resilient clip seated in the seating groove and deformable to engage with the at least one abutment surface of each of the connectors when the first furniture housing portion and second furniture housing portion are forced together from opposite sides of the door in order to mount the housing portions to each other.
16.A door furniture assembly as claimed in claim 15 wherein each connector has at least two parts namely a fastener portion having an enlarged head and an external thread provided on a shank and a connector barrel portion including a barrel which is internally threaded in order to engage with the external thread provided on the shank of the fastener portion.
17.A door furniture assembly as claimed in claim 16 wherein at least one circumferentially extending groove is provided towards an outer end of the connector barrel portion defining a pair of spaced apart abutment shoulders against which the at least one resilient clip can abut.
18.A door furniture assembly as claimed in claim 16 or 17 wherein an outer end of the connector barrel portion is tapered in order to force deformation of the at least one resilient clip as the connector abuts the at least one resilient clip.
19.A door furniture assembly as claimed in any one of claims 16 to 18 wherein at least one circumferentially extending groove is provided towards the head of the fastener portion but spaced therefrom defining a pair of spaced apart abutment shoulders against which the at least one resilient clip can abut.
20.A door furniture assembly as claimed in any one of claims 15 to 19 wherein the connectors are set at an approximate length for use and attached to the first furniture housing portion using the at least one resilient clip, aligned with the second furniture housing portion on an opposite side of the door with the connectors extending through the door and the first furniture housing portion pushed toward the second furniture housing portion which forces deformation of the at least one resilient clip to allow a portion of the connectors to pass until the at least one resilient clip abuts the abutment shoulder to hold the respective furniture housing portions to one another.
21.A door furniture assembly as claimed in claim 1 wherein a first furniture housing portion of the at least one furniture housing portion is adapted to be mounted on a first side of the door, a second furniture housing portion of the at least one furniture housing portion is adapted to be mounted on a second side of the door, at least one of the first furniture housing portion and second furniture housing portion having at least a pair of arcuate openings therein, each arcuate opening having a shaped portion and at least one bayonet wall provided therein and at least a pair of connectors associated with one of the first furniture housing portion and second furniture housing portion and removeably detachable from the other of the first furniture housing portion and second furniture housing portion, each connector being length adjustable and each including at least one enlarged shaped head such that the enlarged head of each of the connectors are insertable into one of the arcuate openings and upon relative rotation of the first furniture housing portion and second furniture housing portion, the enlarged head passes into in a bayonet fitting into the shaped portion to be held preventing rotation of the enlarged head.
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14
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