ASSA ABLOY Australia Pty Ltd v Pacific Enterprises (Aust) Pty Ltd - [2013] APO 58

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ASSA ABLOY Australia Pty Ltd v Pacific Enterprises (Aust) Pty Ltd
[2013] APO 58
Patent Application: 2008200245

Title:Window Winder

Patent Applicant:  Pacific Enterprises (Aust) Pty Ltd
Opponent:  ASSA ABLOY Australia Pty Ltd
Delegate:  Matt Kraefft
Decision Date:  14 November 2013
Hearing Date:  29 August 2013
Catchwords:  PATENTS – section 59 – opposition to grant of a patent – priority date – novelty – whether there is inventive step in light of common general knowledge alone – whether the invention is useful – opposition successful on the principal grounds of lack of novelty and lack of inventive step

Representation: Patent applicant: Ms Helen Rofe, counsel, instructed by Mr Martin Earley, Baxter IP, Sydney.
Opponent:Mr Tom Cordiner, counsel, instructed by Mr Adrian Crooks, Phillips Ormonde Fitzpatrick, Melbourne.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008200245

Title:Window Winder

Patent Applicant: Pacific Enterprises (Aust) Pty Ltd
Date of Decision: 14 November 2013
DECISION
Claims 1, 18 and 20 are not clear. Claims 1, 3, 6, 17 and 19 are not novel. Claims 1, 2, 3, 6, 17 and 19 do not have an inventive step.
The applicant is allowed 60 days from the date of this decision in which to propose suitable amendments to overcome the above deficiencies.
REASONS FOR DECISION
Background

Pacific Enterprises (Aust) Pty Ltd (“the applicant”) filed patent application 2008200245 on 17 January 2008. The application is a divisional application based on application 81432/01. The earliest priority date of the applications is 18 October 2001. Application 2008200245 was advertised accepted on 2 December 2010.
ASSA ABLOY Australia Pty Ltd (“the opponent”) filed a notice of opposition on 2 March 2011. A statement of grounds and particulars in support of the opposition followed on 2 June 2011. The opponent subsequently amended this statement under Patent Regulation 5.9. This amendment was allowed on 17 October 2011.
The stages of serving evidence-in-support, evidence-in-answer and evidence-in-reply, with several allowed extensions of time, were all completed on 28 March 2013.
The specification
The specification states the invention relates to a window winder that uses a chain connected to a hinged window such that varying the length of the chain varies the degree of openness of the window. The invention is further stated to be particularly relevant to lockable window winders but is not limited to such.
These types of window winders are generally used on windows that are pivotally hinged at the top. The window winder is attached to a window sill and a chain extends from the winder and is attached to the bottom of the window so that the window is able to pivot outwards around the top hinge.
The specification mentions the difficulty in securing a window, having such a window winder, as a particular problem. Undue forces applied to the window may cause excessive forces on the opening mechanism, cause the chain to skip or cause the mechanism to free-wheel.
A proposed solution is to use a worm drive which is a high ratio gearing. However this has the substantial disadvantage of requiring an excessive number of turns of the operating handle to achieve significant movement of the window. Another problem is the structural complexity of prior art window winders and the complexity of parts.
An object of the invention is stated to be to provide a substantially improved window winder that provides lockable characteristics, overcomes at least some of the problems of the prior art, and provides a cost effective and readily useable apparatus. Another object is stated to be the same as the above object absent the lockable characteristics.
The specification, as accepted, ends with twenty claims. There are two independent claims, the second of which is an omnibus claim. The first claim reads as follows:
1.A window winder having a housing with an open bottom cavity and a closing plate to close the cavity; wherein the housing is mould constructed or cast as a single outerbody with the open bottom cavity for receiving a chain or linear cord, a side opening allowing the chain or cord to extend out of the housing when attachable to a window such that the amount of chain or cord extending out of the housing varies the openness of the attached window, and the window winder including a drive means including a worm gear connectable to a handle at one side and to a cog means for engaging and driving the chain or cord at the other and able to be received substantially within the cavity of the housing with the handle connected on an outer side for selectively driving the chain or cord in or out of the housing; the window winder further including a locking means including a detent means for preventing the chain from being further extended from the housing and including an activation means, such as a key lock, which activates the detent means, the activation means including a sliding member; and the closing plate being substantially planar to provide a substantially closed window winder structure.
Statement of Grounds and Particulars
As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012, there are substantial changes to the Patents Act 1990. In the case of the present application the grounds of opposition are governed by the Patents Act in force before 15 April 2013.
The opponent’s grounds of opposition were that the claimed invention was not novel, lacked an inventive step, was not for a manner of manufacture, lacked utility, was insufficient, did not define an invention, was not clear and was not fairly based. The opponent also provided particulars against these grounds.
The grounds pressed at the hearing were lack of fair basis, clarity, utility, novelty, and inventive step in the light of the common general knowledge alone.
Evidence-In-Support
The opponent served evidence-in-support from Mr Maxwell Colin Cherry. At that time, Mr Cherry was a senior educator and coordinator of the Locksmithing and Security Technology course at Northern Melbourne Institute of TAFE. He has about 40 years of experience in locksmithing and security. Mr Cherry states he is familiar with window winders or chain winders and has a detailed understanding of how those products operate.
Evidence-In-Answer
The applicant served evidence-in-answer from Mr Martin Gerard Earley, Mr Rana James Waitai and Mr Graeme Byrne. Mr Earley is a registered patent attorney acting on behalf of the applicant. In his first declaration Mr Earley provided the basis in the parent application, 81432/01, for all the features of claim 1 of the present application. In his second declaration Mr Earley outlines some of the prosecution history of the application and exhibits extracts from two dictionaries defining detent means. Mr Watai was experienced in the design and development of door and window hardware and fittings since about 1993 and prior to the earliest priority date. He states he has a strong knowledge of window winders, their functionality including their winding and locking mechanisms, and their manufacturing and installation. Mr Byrne has been employed by the applicant since 1993, chiefly as principal designer and manufacturing consultant. He is also named as one of the inventors of the present application.
Evidence-In-Reply
The opponent served evidence-in-reply from Mr Cherry and Mr Prashanth Lingarajappa. Mr Lingarajappa is the intellectual property manager for the opponent.
Fair Basis and Priority Date
Subsection 43(2) of the Patents Act at the relevant time provided that the priority date of a claim is either the filing date of the specification or a date otherwise determined by the Patent Regulations. Sub-regulations 3.12(1)(c) and 3.12(2C) relevantly provided that a claim of a divisional application, if fairly based on matter disclosed in the parent application, would take the priority date that the claim would have had if it had been included in the parent application.
Subsection 40(3) of the Patents Act at the relevant time required that the claims of a specification must be fairly based on the matter described in the specification. The Lockwood Security Products Pty Ltd v Doric Products Pty Ltd decision, [2004] HCA 58, 217 CLR 274, at [69], put this as a requirement that there be a real and reasonably clear disclosure of what is claimed.
The Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth decision, [2011] FCAFC 132, at [65], stated the same principle applied to a determination of external fair basis. That is, the claims must be fairly based on matter disclosed in a parent patent or a priority document.
The opponent challenged the entitlement of several claims of the application to the earliest priority date. The determination of the appropriate priority date is necessary since it affects the relevance of at least one citation raised by the opponent. The opponent’s challenge of the claimed priority date was for two reasons.
The first was that the parent application 81432/01 disclosed no engagement of the locking mechanism other than where the detent means directly engages the chain of the window winder. The summary statement on page 2, particularly line 13, is directed to a locking means including a detent means for directly engaging the chain. The opponent asserted that the absence of a feature of direct engagement of the detent means with the chain from claims 1, 3 and 6 of the present application meant that those claims were not fairly based. The applicant referred to page 2 lines 19-30 of the parent application to note that preferable forms of the detent means were described such as a wedge, a clamp, and a detent means extending outwards to engage an inner surface of the chain. Page 3 further described a detent member able to engage the chain and moving between chain engaging and disengaging positions. The applicant submitted that there was no limitation that the engagement be direct.
It is difficult to see the applicant’s statements supporting any arrangements other than direct engagement. The preferred forms mentioned above all involve direct engagement. The summary statement or consistory clause on page 2 of the parent application, as originally filed, similarly supports this restriction. While it is also correct that the detent means selectively prevents or allows the chain being further extended from the housing, this does not alter the position that the only contemplated method in the parent application of preventing such extension is where the detent means directly engages the chain. At the very least, the detent means must be able to engage the chain. Claim 1 of the present application covers more than this in scope.
It is appropriate then to notionally divide claim 1 of the present application. In one aspect, the claim includes in scope the direct engagement of the detent means with the chain. In another aspect, the claim includes in scope the indirect engagement of detent means with the chain as well as the detent means being able to be engaged with other devices of the window winder for preventing the chain from being further extended from the housing. For the first aspect, there is clearly a real and reasonably clear disclosure in the parent application. The claim is thus entitled to the earliest priority date, at least for this aspect. For the second aspect, there is no real and reasonably clear disclosure in the parent application. This aspect must, at the earliest, take the filing date of the present application as the priority date.
The corollary is that, either way, the parent application is unable to destroy the novelty of the claims. In the first aspect, claim 1 is entitled to the earliest priority date thereby negating the parent application as prior art. In the second aspect, that subject matter is not disclosed in the parent application and so claim 1 must be novel over the parent application on this aspect. The same applies to claims 3, 6 and 17-20 with the same outcome.
The opponent’s second challenge on entitlement to the earliest priority date was that the parent application is limited to the housing having an integral defined channel for receiving the chain. Claims 1 to 13 and 17 to 20 of the present application are not so limited.
The parent application, as originally filed, makes several references to the housing being mould constructed or cast with an integral defined channel. Amongst other places, the summary statement at the top of page 3 and in the paragraph bridging pages 3 and 4 mentions such a channel. On the other hand, other statements describe this as preferred. For example, page 2 lines 28 and 29 describe the chain preferably extending in at least part of a loop in a chain channel. The window winder broadly requires the chain to be able to be withdrawn into the housing, positioned therein or extended therefrom. At a minimum, that would be achievable by enabling free movement of the chain within the housing. There would appear to be no departure from the spirit of the invention whether that is achieved by a defined channel, or some other sort of guide, or a means that simply prevents snagging or entanglement of the chain. I regard the above-mentioned claims 1 to 13 and 17 to 20 to be fairly based on the parent application on this point.
Clarity
Subsection 40(3) of the Patents Act provides that the claims must be clear.
At the hearing I indicated that claim 1 appeared unclear. There is no clear juxtaposition of the locking means with the rest of the features of the window winder that precede the locking means. The locking means is principally defined as including a detent means with the object of preventing the chain from being further extended from the housing. There is no clearly defined link between the locking means and the rest of the window winder to achieve this object. A similar issue applies in respect to the sliding member. There is no linkage with other features of the window winder or functionality defined for the sliding member. In the absence of substantial submissions from the parties on these points, I conclude claim 1 is not clear.
Claims 18 and 20 define the drive means including a block mount. The mount is defined with a top opening and internal cavity of first and second dimensions. These features are stated to extend from a top side and a side opening, respectively. Furthermore the worm gear is defined with a head and a neck of sizes related to the first and second dimensions. At the hearing I mentioned the interrelationship and orientation of all these features with each other and with other aspects of the window winder were not readily apparent. The corresponding Figures 7, 8A, 8B and 8C do not readily assist either. In response the applicant chose not to defend these claims but indicated a willingness to delete these claims. I conclude claims 18 and 20 are unclear.
Patentable Invention
Section 18 of the Patents Act relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a)    is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)   when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c)    is useful; and …….
Novelty
In referring to several earlier decisions in respect to novelty, the Bristol-Myers Squibb Company v FH Faulding & Co Ltd decision, (2000) 46 IPR 553 at 576, states that what the authorities contemplate is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention.
There may be circumstances where a document can deprive a claimed invention of novelty even though it does not expressly make that complete disclosure of all the integers of the claimed invention. One example is where the skilled reader would understand the disclosure of the prior publication to include a missing integer. Another is where the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Danisco A/S v Novozymes A/S (No.2), [2011] FCA 282 at [248]).
AU 81432/01 – Parent Application (“D1”)
As concluded earlier in the discussion of priority dates, the parent application is unable to destroy the novelty of the claims. The notional division of claim 1 presented two aspects of the relationship between the detent means and the chain. In the first aspect, claim 1 is entitled to the earliest priority date thereby negating the parent application as prior art. In the second aspect, that subject matter is not disclosed in the parent application and so claim 1 must be novel over the parent application on this aspect. All other claims are narrower than claim 1, or at least not outside the scope of claim 1, and so are also novel over D1.
AU 200037804 (“D2”)
This document was published on 6 December 2001, between the earliest priority date and the filing date of the present application. Depending on which aspect is applied by the notional division of the claims, D2 is potentially citable under Subsections 7(1)(a) or (c).
D2 is by the same applicant as for the present application. The document discloses many of the features of claim 1 of the present application. These include a window winder with a housing with an open bottom cavity for receiving a chain, and a side opening allowing the chain to extend out of the housing when attachable to a window.
The specification describes a drive means including a winder handle connected to gearing which is able to move the chain within the coiled path within the housing (page 5 lines 14-16). The specification has no further details about the drive means.
The opponent referred to Mr Cherry’s first declaration at [93] to submit the worm gear and cog means arrangement of claim 1 were inherent in D2. Mr Cherry stated that he understood the described window winder to have a typical window winder drive mechanism. Earlier at [20], Mr Cherry described various known forms for linking the handle and chain, one being a worm gear, helical gear and sprocket arrangement. However the document is wholly silent in respect to the nature of the drive means. It would be a stretch to suggest a particular form is inherently disclosed in D2 out of several possibilities. There is no disclosure in D2 of the worm gear and cog means arrangement of claim 1 of the application. I conclude claim 1 is novel over this document. All other claims are narrower in scope than claim 1, or at least not outside the scope of claim 1, and are therefore also novel over D2, irrespective of the priority date of the claims.
WO 97/32101 (“D3”)
This document discloses a lockable chain winder or window winder having a sprocket rotatably mounted in a housing. The teeth of the sprocket enter into chain links to push or pull the chain out of or into the housing depending on the rotational direction of the sprocket. The sprocket is turned by an external handle which is attached to a shaft (not shown in the drawings) which extends into the housing. The shaft is provided with an external spiral thread which engages with the sprocket to turn the sprocket. A stop member is provided within the housing. In one embodiment the stop member is a resilient length of wire bent in a particular configuration. In a second embodiment (Figures 6-11), the stop member is a moving metal locking plate 46. The locking plate has a forward nose portion 47 and a rear portion 48. The locking plate is spring biased by a spring 49 to push the locking plate into engagement with sprocket 44. In this way, the locking plate has a natural bias towards the chain locking position where sprocket 44 is prevented from rotating in one direction. When the locking plate is in the retracted position, the sprocket is free to rotate in either direction leaving the chain free to wind into or out of the housing.

The locking plate is able to be retained in the retracted position by a lock button 50. Depression of the lock button causes the locking plate to move into engagement with the sprocket. While the sprocket is thus unable to rotate to drive the chain out of the housing, the sprocket is able to pull the chain into the housing. In this rotational direction, the nature of the nose portion of the locking plate and the sprocket teeth enables the nose portion to ride along the periphery of the sprocket teeth. The locking plate is thus caused to reciprocate between its retracted and engaging positions. The lock button does not prevent the locking plate from exhibiting reciprocating motion.
The applicant submitted that several features of the claimed invention were not disclosed in D3. Firstly there is no stated or shown closing plate and furthermore there is no obvious flat structure as such a plate would be. On the other hand, the opponent noted page 5 lines 27- 29 of the document describes Figures 1 and 2 showing a lockable chain winder with the top removed (the figures show the winder turned over) to allow the internal components to be seen. Mr Cherry indicated at [83] of his first declaration that he understood this to mean that the window winder has a closing plate. I would agree. The indication of there being a removed top section (from the turned-over perspective) suggests a plate-like structure. Moreover, Mr Cherry stated that, as the window winder is to be mounted on the window sill, he would understand the underside, including the closing plate, would be substantially flat to sit flush against the sill. I conclude a substantially planar closing plate is disclosed.
Secondly the applicant submitted that D3 does not disclose a mould or single cast construction. For example, Figures 3 and 4 appeared to show a two-part construction. The opponent noted the bottom of page 2 and the top of page 3 describe the housing to be of conventional type. Mr Cherry at [83] indicated he understood that a reference to a housing of conventional type referred to a casing usually cast from metal, most commonly zinc.
The passage referred to by the opponent discusses the housing being of conventional type generally in terms of its structure. That is, the housing typically is elongate and can contain an internal track which may be curved and in which the chain can move. There is no direct discussion of how the housing is constructed or cast. On the other hand, the specification has examples suggesting the housing and its features are moulded or cast as a single body. For example, the housing has a curved track (page 5 line 37). Furthermore a lock body 20 extends into a bore 34 which is part of the housing (page 8 lines 20 and 21). I am satisfied a person skilled in this art would have inherently understood the housing to be mould constructed or cast as a single outer body.
Thirdly, the applicant submitted that D3 does not clearly disclose drive means as claimed. The applicant stated there is no drive means shown in the drawings and the specification only mentions a shaft, not shown, and an external spiral thread on the shaft.
Page 6 lines 11-25 of D3 describe a sprocket rotatably mounted in a housing. The sprocket is turned by an external handle which is attached to a shaft which extends into the housing. The shaft is provided with an external spiral thread which engages with the sprocket to turn the sprocket in a forward or backward direction depending on the direction of rotation of the shaft, which in turn depends on the direction of rotation of the handle. This appears to be equivalent to the definition of claim 1 of the present application of a worm gear (external spiral thread) connectable to a handle at one side and to a cog means (sprocket) for engaging and driving the chain or cord at the other. Mr Byrne at [56] (ii) challenged the equivalence of a worm gear with a spiral thread. However claims 18 and 20 and page 8 line 27 of the present application state the worm gear includes a spiral thread.
Mr Byrne at [21](v) further stated the product associated with D3 that was released on the market included a 3 axis gear drive. He attempted to distinguish the claimed invention from D3, and other prior art, by stating, at [23], the claimed feature of a worm gear connectable to a handle at one side and to a cog means for engaging and driving the chain defined a 2 axis gear drive.
In the claims there is no limitation on the numbers of axes defining the drive means. Consequently the indications that the claimed invention defines a 2 axis gear drive appear to be of little relevance although I accept the direct handle, worm gear and cog relationship appears to define a relatively simple claimed gearing means. Furthermore, elsewhere in his evidence, Mr Byrne at [15] appeared hesitant in relating D3 to the supposedly equivalent product, the ’97 Whitco Chainwinder. In any case, as noted above, the above-mentioned passage of D3 appears to be equivalent to claim 1 in respect to the drive means.
Fourthly, the applicant submitted that D3 does not disclose an activation means, activating the detent means, that includes a sliding member.
Figures 6-11 and pages 10 and 11 of D3 particularly describe a moveable locking plate 46. The locking plate is spring-biased to push the locking plate into engagement with the sprocket. In its retracted position, the locking plate is out of engagement with the sprocket. The description and figures of D3 clearly show the locking plate to be a sliding member between extended and retracted positions. The sliding locking plate itself may also be regarded as the detent means. The present application similarly at the top of page 7 and in Figure 2 indicates the claimed detent means 31 and slide member 33 as the same item.
Alternative activation means and a sliding member may be envisaged, particularly noting the embodiment in claim 1 of “activation means, such as a key lock” (my emphasis). In D3, lock button 50 has a recess 53 into which a rear portion 54 of locking plate 46 can pass. When the locking plate is in the extended position, the rear portion sits within recess 53. While the rear portion is within the recess, the lock button is in its depressed position and cannot spring out to its extended position. To unlock the chain winder such that the sprocket can freely move in both directions, the lock button is caused to spring out to its extended position and, in doing so, holds back the locking plate where the nose portion is clear of the sprocket teeth such that the sprocket can rotate both clockwise and anti-clockwise. Upon depression of the lock button, the locking plate can again move into engagement with the sprocket. In this sense, the lock button can also constitute an activation means including a sliding member.
I conclude claim 1 of the present application is not novel over D3.
Claim 3 adds the feature of the locking means including a key lock. This is disclosed in D3 as a lock body 20 with a key insertion point where a key is required to rotate the lock body from a lock position back to its unlocked position (page 8 line 32 to page 9 line 10). I conclude claim 3 is not novel over D3.
The difference in scope between claims 6, 17 and 19 compared to claim 1 is not readily apparent. Claim 6 additionally defines the sliding member slidable at an angle to the operation of the detent means. There is nothing specific defined in claim 6 about the angle and thus it may be any angle. Claims 17 and 19 only substantially define what is already in at least claim 1 and are thus redundant on at least claim 1. I conclude claims 6, 17 and 19 are also not novel over D3.
I regard the remaining claims, additionally defining at least some form of direct engagement of the detent means with the chain, as novel over D3.
AU 37098/93 (“D4”)
This document discloses a chain winder stated at page 3 lines 30 and 31 to include “the usual elongate cast-metal casing” of generally rectangular profile which provides a cavity for housing a chain. The applicant submitted D4 does not disclose a housing that is mould constructed or cast as a single outer body in its entirety. On the other hand, page 5 line 8 discusses a land 38 that may be provided by a separate element or be part of the integral casting of the casing (my emphasis). On a plain reading of the language of the specification, I think this passage, together with the reference to the usual elongate cast-metal casing, describes a casting across the entirety of the casing. Figures 1 and 2 similarly appear to illustrate an integral casting.
D4 also states the drive mechanism to be “conventional”, page 4 lines 30-32, in that it includes a worm gear on the shaft of a handle, which drives a helical spur gear rotatable as a unit on a shaft with a sprocket. The applicant submitted that D4 does not clearly disclose drive means and that D4 states that the drive means is not visible in the drawings. The applicant noted the above passage at page 4 lines 30-32. However the applicant submitted that the helical spur gear being rotatable as a unit on the shaft implied complex gearing and thus implied there was an intermediate gear. This would mean the gearing arrangement was a 3-axis gear drive as was common in the art according to the applicant. The applicant stated this differed from claim 1’s simpler drive means which defines a worm gear connectable to a handle at one side and to a cog means at the other. On the other hand, Mr Cherry’s evidence in reply at [29] describes the above passage of D4 as being abundantly clear that the drive mechanism is of the type referred to by the applicant as a 2-axis gear drive. Furthermore the reference to the helical spur gear being rotatable as a unit on the shaft with the sprocket seems to indicate a relatively simple arrangement, that being that the helical spur gear and sprocket are co-axial. I conclude this passage of D4 reads directly onto the drive means of claim 1 of the present application.
The applicant further submitted that D4 does not disclose an activation means including a sliding member. Rather, there is a detent arm pivotable between an unlocked position where a toothed segment at one end of the arm is clear of a ratchet spur gear on the shaft, and a locking position in which the toothed segment engages the spur gear.
On the other hand, the opponent submitted the sliding member may constitute the pin revolving with a cylinder lock between the unlocked and locked positions, and at the same time sliding within a window or along a curved spiral cam surface at the other end of the detent arm to pivot the detent arm out of or into engagement with the ratchet spur gear.
Given particularly the example in claim 1 of the present application of an activation means such as a key lock, it is valid to interpret the claimed activation means including a sliding member as including in scope the pin as functionally described above.
I conclude claim 1 of the present application is not novel over D4. I conclude claims 3, 6, 17 and 19 are similarly not novel over D4.
Inventive Step
In respect to inventive step, the Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd decision, (1981) 148 CLR 262 at 280, states the question is whether the invention would have been obvious to a hypothetical skilled addressee armed with the common general knowledge at the priority date. Also from that decision at page 286, an appropriate test is whether a person skilled in the relevant field, and 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.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Limited, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome (supra) test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd[No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
Person Skilled in the Art
The opponent submitted the person skilled in the art would be a person with a practical interest in the design, manufacture or installation of window winders. The opponent stated Mr Cherry was plainly representative of such a person. The applicant submitted that a locksmith does not satisfy the description of a person skilled in the art. From Mr Cherry’s evidence, the applicant stated that locksmiths may understand how the lock within a lockable window winder works, but would not have experience in matters relevant to the design and manufacture of window winders.
In respect to the applicant’s evidence from Mr Byrne and Mr Watai, the opponent stated that Mr Byrne and Mr Watai appear to have experience in the field of window winders. However the opponent submitted that Mr Byrne’s and Mr Watai’s emphasis that only the so-called 3 axis gear drive was in substantially all window winders before the earliest priority date demonstrated that Mr Byrne and Mr Watai lacked a familiarity with the common general knowledge before that date of 2 axis gear drives. On this basis the opponent submitted that Mr Cherry’s evidence is to be preferred.
The evidence from both parties appears somewhat inadequate on this point. It may be that Mr Cherry is primarily involved in locksmithing and specifically the teaching of courses in this field. This may detract from his ability to comment in the broader field of the present invention. On the other hand, Mr Cherry has presented evidence demonstrating a strong knowledge and background of the window winder art generally. Mr Byrne and Mr Watai appear to be experts in this field. However it is somewhat telling that they indicate an absence of substantial knowledge of 2 axis gear drives before the earliest priority date of the application when the evidence will establish that such drives were common general knowledge, as discussed below.
I conclude Mr Cherry’s evidence should carry more weight over the evidence of Mr Byrne and Mr Watai.
Common General Knowledge
At the hearing the opponent pressed under Subsection 7(2) that the claims lacked an inventive step in the light of the common general knowledge alone.
With reference to Mr Cherry’s first declaration, the opponent submitted the following items were common general knowledge before the earliest priority date of the application. Window winders or chain winders were mechanisms for opening and closing windows by winding or cranking a handle. Window winders typically had a casing, a handle able to be turned by a user, a chain and a mechanism linking the handle and chain such that when a user turned the handle, the chain would be driven out of or withdrawn into the casing. This was not challenged by the applicant. I accept the above would have been common general knowledge at the earliest priority date.
The opponent further submitted through Mr Cherry’s first declaration at [19] that the casings of window winders were typically cast from metal to form an open space into which the other components of the winder were inserted. A base plate would cover the opening to retain the components.
The applicant challenged this assertion. Mr Byrne’s declaration at [56] stated that the standard conventional structures have been double cast.
It appears that very little turns on whether window winders of single cast and/or double cast construction were common general knowledge. Functionally there would appear to be no substantial difference. In any case, Mr Cherry’s evidence in support at [32] described integral castings as typical. Mr Cherry stated the casing typically incorporated internal elements cast as part of a single component along with the casing. If a particular window winder had a problem with being formed of a number of separate cast metal components, Mr Cherry stated he would consider whether this problem could be addressed by casting those parts integrally with the housing. I accept a housing being mould constructed or cast as a single outer body would have been common general knowledge at the earliest priority date.
The opponent further indicated, again with reference to Mr Cherry’s first declaration at [19], that it was common general knowledge that a window winder may include guides or channels for positioning the chain within the casing. The applicant noted the opponent stated this to be merely optional and so this could not have been common general knowledge. This appears to be little more than an analysis by the applicant of the opponent’s use of words rather than of the substance discussed. As mentioned earlier when discussing the priority date, there is a broad requirement of enabling the chain to be withdrawn into the housing, positioned therein, or extended therefrom. Mr Cherry has stated that typical window winders may have included guides or channels for positioning the chain within the casing. I accept that guides or channels in window winders would have been common general knowledge at the earliest priority date.
Referring to Mr Cherry’s evidence in support at [20], the mechanism which links the handle and the chain may have taken a number of forms. In one typical form, the mechanism included a worm gear attached and turned by the winding handle, a helical gear which meshed with and was turned by the worm gear, and a sprocket connected to and turned by the helical gear. The sprocket meshed with the chain such that rotation of the sprocket drove the chain out of or withdrew the chain into the casing.
The opponent’s declarants in their evidence in reply have presented examples of such drive means. Mr Cherry at [17] – [19] and Mr Lingarajappa at [5] describe the Lockwood 870 keyed window winder and the Lockwood 877 window winder. Each of these had a worm gear attached to and turned by a winding handle (870-7 and 870-5 in the illustration of the 870 window winder), a helical gear that meshed with and was turned by the worm gear, and a sprocket connected to and turned by the helical gear which sprocket in turn drove the chain. At [19] of Mr Cherry’s evidence in reply, Mr Cherry stated that the Lockwood 870 and 877 window winders thus employed a 2 axis gear drive as referred to in Mr Byrne’s declaration.
The applicant submitted the common general knowledge before the earliest priority date consisted of 3-axis gear arrangements. Mr Watai indicated that any reference to worm gears before that date referred to three gears being engaged together, one gear driven by a handle, one gear driving a sprocket and an intermediate gear. Mr Byrne similarly described this as the common general knowledge stating that 3 axis gear drives had been substantially in all chain winders since 1979.
The parties differed significantly on whether 2 axis gear drives were common general knowledge before the priority date. The applicant rejected this notion. The opponent on the other hand pressed this point.
The diagrams of the Lockwood 870 and 877 window winders show a worm gear attached to and turned by a winding handle (870-7 and 870-5 in the illustration of the 870 window winder). The helical gear meshes with and is turned by the worm gear. It is noteworthy that the helical gear is upright in the diagrams and is aligned coaxially with the sprocket (877-10) as a single piece. This construction is also consistent with the photos of the Lockwood 870 window winder accompanying Mr Lingarajappa’s declaration (Exhibit PL-6). I am satisfied the Lockwood 870 and 877 window winders have 2 axis gear drives.

Mr Cherry and Mr Lingarajappa have both presented evidence that the Lockwood 870 and 877 window winders, and specifically their internal mechanisms, were illustrated in a Lockwood product catalogue from 1986. Moreover, Mr Cherry at [18] stated that these products have been very familiar to him since at least the mid-1980s and would be very familiar to locksmiths and most people working in the lock industry. Mr Lingarajappa at [5] stated that copies of the 1986 Lockwood product catalogue, containing exploded views including the internal mechanisms of these products, were widely distributed to customers of Lockwood products including locksmiths. Mr Lingarajappa further traces the existence of the Lockwood 870 and 877 window winders back to 1984 (Exhibit PL-1). Moving forward in time, Exhibit PL-5 contains extracts of a “Residential Security Price Book”, dated June 1999, indicating that these window winders continued to be offered for sale in 1999.
A life span of at least 15 years for these products is evident before the earliest priority date of the present application. It would appear that the Lockwood 870 and 877 window winders together with an understanding of their internal mechanisms, at least in respect to their drive means, have been widely regarded in the field of window winders for a considerable period of time before the earliest priority date. I am satisfied the Lockwood 870 and 877 window winders, and their internal mechanisms at least in respect to their drive means, were common general knowledge before the earliest priority date.
With reference to Mr Cherry’s evidence in support at [23] – [25], the opponent submitted it was common general knowledge before the earliest priority date that many window winders also included a locking mechanism so that a user could lock the window in a given position. Furthermore, that the locking mechanism may have operated in a number of ways. Examples included disengagement of the handle from the winding mechanism, or, for more security, by providing a component that interacted with one of the chain, the handle, or a part of the winding mechanism to restrain movement. This has not been challenged by the applicant.
With the exception of the activation means of claim 1 including a sliding member, all of claim 1 of the present application is encompassed by the features of common general knowledge described above. Moreover I also regard the totality of the features described above as common general knowledge. The Lockwood 870 keyed window winder discussed above is an example.
In respect to the sliding member, as noted above when discussing clarity, there is no linkage with other features of the window winder or functionality defined in claim 1 for the sliding member. In any case, the example in claim 1 of an activation means, such as a key lock, brings devices such as lock buttons and locking pins of locks within the definition of the sliding member of claim 1. I would conclude such functionality of locks in window winders had also been common general knowledge before the earliest priority date.
I conclude claim 1 lacks an inventive step in the light of the common general knowledge alone.
Claim 2 which additionally defines direct engagement of the detent means with the chain and claim 3 which additionally defines the locking means including a key lock encompass features also already mentioned above. These claims are also thus not inventive in the light of the common general knowledge alone. Claim 6 additionally defines the sliding member slidable at an angle to the operation of the detent means. As mentioned earlier, there is nothing specific defined in claim 6 about the angle and thus it may be any angle. Claims 17 and 19 only substantially define what is already in at least claim 1 and are thus redundant on at least claim 1.
I conclude claims 1, 2, 3, 6, 17 and 19 lack an inventive step in the light of the common general knowledge alone.
Usefulness
With reference to the specification, the opponent submitted that an object of the invention is to provide an improved window winder structure which provides a cost effective and readily useable apparatus. The objective seeks to overcome a construction problem said to exist due to the number of cast metal parts required. The opponent asserted that, in order to meet this objective, the housing is formed as a single part including a channel integral with the housing. The opponent noted this is not claimed in claims 1 to 13 and 17 to 20. Accordingly the opponent asserted these claims fail to meet the object of the invention and the claimed invention thus is not useful.
The Ranbaxy Australia Pty Ltd v Warner-Lambert Company LLC decision, [2008] FCAFC 82 at [141], cited by the opponent, provides guidance.
“If the claimed invention does what it is intended to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c). ….the invention as claimed must attain the result promised by the patentee.”
The objects of the invention are expressed quite broadly, being cost effectiveness and usability. While the above claims may omit the feature of a housing as a single part including a channel integral with housing, this does not appear detrimental to achieving the objects. The existing features of claims 1 to 13 and 17 to 20 appear to adequately contribute to achieving that intent. I conclude the claims define an invention that is useful.
Conclusion
I have found that claims 1, 18 and 20 of the present application are not clear. Claims 1, 3, 6, 17 and 19 are also not novel. Furthermore claims 1, 2, 3, 6, 17 and 19 do not have an inventive step.
It is clear that suitable amendments could be made to the claims to overcome the above deficiencies. I allow the applicant 60 days from the date of this decision in which to propose suitable amendments.
Costs
Both parties submitted that costs should follow the event. I see no reason to depart from this practice. The opposition is successful. I award costs in accordance with Schedule 8 against the applicant, Pacific Enterprises (Aust) Pty Ltd.
M G Kraefft
Delegate of the Commissioner of Patents