Atsuko Parr v Sontaria Holdings Pty Ltd
[2001] APO 23
•25 May 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 701098 in the name of Atsuko Parr
Title: Swimming Aid
Action: Opposition under s59 to the grant of a patent by Sontaria Holdings Pty Ltd
Decision: Issued .
Abstract
Only claims 1 to 4 of the specification were opposed.
The claims as currently defined do not include the advantages or technical result of the channel structure and there appears to be no reason for inferring such stated functionality. Hence, the claims lacked fair basis. I found that the expression "projects outwardly therefrom and tapers upwardly" appearing in claim 1 is broader than intended and lacked fair basis as the outward extension and upward tapering of the support section must occur simultaneously. It was found that claim 1 lacked fair basis as the channel is required to be located adjacent the foot pocket.
Claim 1 lacked novelty and was obvious. The claims were directed to a manner of manufacture. As there was patentable subject matter, I allowed the applicant 60 days from the date of this decision in which to file suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 701098 by Atsuko Parr and opposition under s59 to the grant of a patent by Sontaria Holdings Pty Ltd.
BACKGROUND
Patent application 19404/95 was filed as an international application PCT/AU95/00117 that designated Australia. The date of filing is 7 March 1995 and the application claimed priority from 3 Australian provisional applications, PM4341 filed 9 March 1994, PM 8011 filed 9 September 1994, and PM 0783 filed 25 January 1995. Applicant and inventor, Michael Lancaster Parr, filed the current application. However, after a PCT rule 92bis amendment, the application proceeded in the name of the nominated person, Atsuko Parr.
The application was advertised as accepted on 21 January 1999 and allocated patent number 701098. Sontaria Holdings Pty Ltd filed a notice of opposition on 21 April 2000. The statement of grounds and particulars was filed on 21 July 1999. A request to amend this statement was filed on 21 November 1999 and was allowed on 16 November 1999.
Evidence-in-support of the opposition was served on 25 November 1999. Evidence-in-answer was served on 19 July 2000 and on 23 November 2000 service of the evidence-in-reply was completed. The matter was set down for a hearing in Canberra on 20 February 2001.
The applicant did not attend but Mr Andrew Massie, patent attorney, of Phillips Ormonde & Fitzpatrick sent in written submissions. Mr Paul Taylor, patent attorney, of Paul R. Taylor & Associates attended on behalf of the opponent, Sontaria Holdings.
A petty patent divisional application 52345/96 was filed on 16 May 1996 in the name of Michael Lancaster Parr. The petty patent was sealed as 672354 on 20 September 1996 with the term of the patent subsequently being extended to 7 March 2001.
The specification
This invention is entitled "swimming aids" and generally relates to swim fins or flippers that are worn on the foot. The invention in another aspect also relates to a method of manufacturing of such swimming aids.
In its discussion of the prior art, the specification acknowledges that:
Swimming aids of the type referred to have been known for many years,
Generally such aids are formed from a moulded elastomer such as rubber or synthetic rubber,
The efficiency of such swimming aids however, is in essence, limited by the properties of the elastomer used,
In order to provide stronger swim fins or flippers it has been necessary in the past to simply increase the amount of elastomer, and
Not only does this substantially increase the weight of the swim fin but also the cost.
Conventional surfing flippers
Use a combination of hard and soft rubber in their construction in order to develop power,
This is done by using hard rubber in the distal free end of the fin, and soft rubber in the support area of the foot,
The hard rubber displaces the water, and the soft rubber provides the needed flex,
The lesser the amount of soft support rubber the more the fin will try to bend along the delineation of hard and soft rubber, thus placing the full force created by the kicking action of the user across the toes of the foot, rather than across the bridge of the foot, and
Likewise, using harder rubber around the foot cavity will aid displacing this force further up the foot, but reduce the advantages of the flex.
The specification then defines the invention in identical terms to claim 1. This is followed by a number of preferred embodiments. Once such preferment is stated as follows:
"Preferably, the side edge portions of the fin section taper inwardly upwards towards one another from the distal free edge thereof in the direction towards the support, the side edge portions terminating towards the end portion of the support remote from the distal end of the fin."
Notwithstanding this description, the feature is clearly present in claim 1 as an essential feature.
The description continues with a paragraph describing one of the benefits of the invention.
"The inwardly tapered side edge portions of upper and lower surfaces of the preferred form together with its extension adjacent the support forming the "wing section" are designed to (1) enhance the water catchment and control the direction of water flow over [the] upper surface towards the distal leading edges leading to improved thrust, (2) aid the neutralisation of pressures by allowing free movement from the edge along the back of the fin towards the centre leading [to] faster [and] less strenuous up kick (or, return stroke)."
I note that there is no prior reference to the upper or lower surfaces of the preferred form, nor is there any earlier reference to the "wing section". This paragraph is important as it recites some of advantages of the invention which are then detailed in subsequent paragraphs.
I note that in the specification as originally filed there was a paragraph preceding the above quoted paragraph that referred to the "wing section".
This paragraph stated.
"In one form, a part of each side edge portion which is disposed adjacent the support may be configured so as to form a 'wing section' which tapers upwardly from the upper surface and forms a channel between the outer peripheral edge and the wall of the support."
This sheds some light on the paragraph in question. The specification (current and as filed) then describes in detail the advantages of the channel.
"During the down ward kick, water is captured in the wing section and directed from as far back as the ankle area down the channel towards the distal blade area of the foot, the wing section in the design effectively does three things:
(1) It increases the surfaces area of the fin thus increasing the thrust potential but without a proportional increase in load pressures on the lower calf muscles and ligaments as the effect required to displace this increased area of water is carried more evenly along the foot (because of the location of the wing section along the side of the foot cavity) thus reducing the load pressures dictated by the physics of leverage wherein the pivoting point is the ankle. This reduces the effort to thrust which inturn lowers oxygen consumption and muscle fatigue (resulting in cramps). This is highly significant to diving fin applications, and any competitive sports which are fin dependant;
(2) Provides an elongated chute which increases the overall water catchment area without making the fin longer in the section from the toes to the distal leading edge, nor wider across the distal leading edge. This is significant to a surfing fin which needs higher levels of thrust potential but a short distal blade.
(3) Both directs and increases the velocity of water flow and water pressure over the blade similar to the principal of a sling shot as the foot and fin move through an arch pivoting from the knee and hip simultaneously. The increased water containment and water pressure over the blade area increases the thrust potential of the fin."
The remainder of the description deals almost exclusively with the feature of the resilient element. I note that this may arise from the fact that the invention of the specification as filed related to the feature of the resilient element and not to that of the channel. This can be readily seen from the claims 1 to 4 of 20 claims as filed, which are reproduced below.
"1. A swimming aid which includes a main body having a support section by which the aid is carried by the user and a fin section which extends away from the support section and includes a distal free edge portion and spaced apart side edge portions extending between the distal free edge portion and the support section, and at least one elongated substantially resilient element extending from the support section towards the distal free edge portion of the fin section.
2. A swimming aid according to claim 1 wherein the support section includes a cavity or pocket into which the main part of the user[']s foot can be received and a heel support for retaining the user[']s foot in position.
3. A swimming aid according to claim 1 or claim 2 wherein the side edge portions of the fin section taper inwardly towards one another from the distal free edge thereof in the direction towards the support, the side edge portions terminating towards the end portion of the support remote from the distal free end of the fin.
4. A swimming aid according to claim 2 or claim 3 wherein a part of each side edge portion which is disposed adjacent the support forms a wing section which tapers upwardly and forms a channel between the outer peripheral edge and the wall of the support."
It is also relevant to note that the solution embodied in the as filed claim 1 bears no relation to the problems that the present invention intends to solve. As filed, the problems related to the construction of the swim fin using combinations of hard and soft rubber that are addressed through the use of the resilient element.
The description of the invention ends with a discussion of the preferred embodiment that refers to the channel as being formed between the "winged section" and the foot receiving pocket.
"Referring to FIGS. 1 to 5 of the drawings, the swimming aid generally indicated at 1 comprises a[n] elastomeric main body 2 having a support 4 including a foot receiving pocket 5 and heel support 6. The pocket 5 includes a raised foot ridge 7 which extends over the bridge of the user[']s foot and a filled instep section. A drain chute (not shown) or drain hole 8 may be provided which enables water to escape from the pocket 5 and a tread section 9 is provided on the underside of the pocket 5.
The main body further includes a fin 10 having a distal free edge portion 11 and side edge portions 12 connected to the support 4. The side edge portions have a part thereof forming a wing section 18 which is adjacent the foot receiving pocket 5. This part forms a wing section which projects upwardly and forms a channel 19 between the wing section and the foot receiving pocket 5. This is best seen in FIGS. 5C to 5E."
Figures 5c to 5e illustrate the fin in sectional views. From these views the cross-sectional shape of the channel is seen to be V shaped in profile. It should be noted that the degree of the taper is not discussed and it would appear from a reading of the specification that it is defined by its result.
The claims
The specification ends with 18 claims with claim 1 being the only independent claim.
Claim 1 reads as follows:
"1. A swimming fin which includes a main body having a support section which includes a cavity or pocket having an opening through which the main part of the users foot can pass into and be received within the pocket, the support section further including a heel support which extends away from the cavity or pocket from the region of the opening for retaining the users foot in position, the swimming fin further including a fin section which extends away from the support section and includes a distal free edge portion and spaced apart side edge portions extending between the distal free edge portion and the support section, said side edge portions of the fin section tapering inwardly towards one another from the distal free edge in the direction towards the support, the side edge portions terminating towards the end portion of the support remote from the distal free end of the fin and wherein a part of each side edge portion which is disposed adjacent the support projects outwardly therefrom and tapers upwardly so as to form a channel between the outer peripheral edge and wall of the support, the channel extending from the region of the opening of the pocket along the side of the support section and opens into the fin section inwardly of the side edge portions thereof."
Claims 2 to 4 which are also subject to dispute read as follows:
"2. A swimming fin according to claim 1 wherein said support section includes a raised foot ridge which, in use, extends over the users foot said channels being formed between the sides of the raised foot ridge and side edge portion of the fin adjacent the support section.
3. A swimming fin according to claim 1 or claim 2 further including at least one elongated substantially resilient element extending from the support section towards the distal free edge portion of the fin.
4. A swimming fin according to any preceding claim wherein the or each resilient element is at least partially or completely embedded within the main body of the fin."
Claims 5 to 12 further define the resilient element.
Claim 13 is directed to a method.
"13. A method which is suitable for use in the manufacture of a swimming fin according to any one of claims 3 to 12 preceding claim, the method comprising locating each resilient element within a body of elastomer material, positioning the resilient element and elastomeric body within a mould so that the rod is located in a selected position within that mould and thereafter performing a moulding step to produce the swimming aid."
The remaining claims 14 to 16 are method claims appended to claim 13. Claims 17 and 18 are omnibus claims respectively directed to a swimming fin and to a method of manufacturing.
Claim 17 reads as follows:
"17. A swimming fin substantially as hereinbefore described with reference to the accompanying drawings."
The evidence
Evidence-in-support consisted of statutory declarations made by the following declarants accompanied with physical exhibits of swimming fins:
Neil Wilson, a director of Romar Engineering Pty Ltd who has been involved in the manufacture of tooling for swim fins, filed a statutory declaration dated 18 November 1999.
Kip Sly, a director of T.Q.R. Pty Ltd, who has been involved in the manufacture of swim fins since mid 1993 filed a statutory declaration dated 20 October 1999.
Terry William Fleming, a director of Manta Surfing Products Pty Ltd, who has been involved in the manufacture and sale of swim fins since early 1991 filed a statutory declaration dated 15 November 1999.
Donald McCredie, a director of Hydro Sportz Pty Ltd, who has been involved in the manufacture and sale of swim fins since early 1986 filed a statutory declaration dated 20 October 1999.
A number of swimming fins were put into evidence by the opponent (only one exhibit of each was filed which declarants made reference to). These exhibits are as follows:
The Manta blade fin (exhibit NW2, KSY7, TWF1, MCC8)
The Hydro Finz fin (exhibit TWF9, MCC1, KSY5)
The Churchill fin (exhibit KSY6, TWF4, MCC5)
The Redley fins (exhibit KSY8, TWF6, MCC6)
The Dacor Corda fin (exhibit TWF7, MCC7)
The Salvas Drift fin (exhibit TWF5)
The Scott Dillon Dafin filed but not referred to by any declarant.
The floating diving fin made in Malayasia (exhibit TWF8)
The Fangz fin (exhibit NW1, KSY2)
The Hydro Finz tech fin (exhibit NW3, KSY4)
The Airfins fin (exhibit NW5, KSY1)
The Propel fins (exhibit KSY3)
The Octoblade fin (exhibit MCC4)
In addition, the opponent put in the following documents:
Australian Design Registration 118460 (exhibit TWF2)
US Design 349552 (exhibit TWF3)
US Design 302999 (exhibit MCC2)
US 4838824 (exhibit MCC3)
AU 590109 (exhibit MCC9)
GB 762166
US 2865033
US 4007506
US 4738645
US 4887985
US 5358439
US 5511999
EP 579046
In evidence-in-answer, the inventor Michael Lancaster Parr and Stephen Patrick Harrison filed statutory declarations. Mr Parr's declaration which was dated 14 July 2000 was accompanied with exhibits MLP1 (Fangz fin), MLP2 (which is an extract from a dictionary on the meaning of the word "strake"), MLP3 (Riptide magazine) and MLP4 (a copy of the applicant's family equivalent US 5810629). Mr Harrison's declaration which was filed 17 July 2000 was accompanied with exhibit SPH1 (Fangz fin) and SPH2 (Hydro Finz fin).
Evidence-in-reply consisted of further statutory declaration executed by Terry William Fleming on 16 November 2000 accompanied with exhibit TWF9 (copy of drawing sheets 1 and 3 from US 4838824), and further statutory declarations executed by Donald McCredie and Kip Sly respectively on 16 November 2000 and 17 October 2000.
DECISION
The statement of grounds and particulars alleges that claims 1 to 3 are not novel and do not possess an inventive step. In particular the opponent, Sontaria Holdings, alleges that the "use of a "strake" along the side edges of a swim fin to lessen spillover and to channel the water along the fin" is a well known feature that is utilised in a number of prior art swimming fins that form exhibits to this opposition. At the hearing, Mr Taylor broadened the allegation to include claim 4.
However, before I embark on a discussion of this ground of opposition, there are a number of critical observations I need to make on the meaning of terms in claim 1 and their compliance with s40. Mr Taylor raised, for the first time, a number of s40 issues at the hearing. Mr Massie submitted that I should refuse to entertain any s40 submissions as none had been particularised. However, the declaration of Mr Parr brings a number of s40 issues into focus as well do the submissions of Mr Massie. Given this, I see no reason to accede to Mr Massie's request. However, I believe that these are appropriate matters to be considered in the awarding of costs and I will consider the matter in that context.
Meaning of terms: strakes and raised side edge portions
In the notice of opposition, the claims are attacked on the basis that they include within their scope a "strake". The opponent pointed out that terminology in use in this art is somewhat fluid and that there are no standard textbooks. The applicant raised some issues about the meaning of the term "strakes" which he found "curious" and "out of place in describing features of the swim fin". Mr Parr indicated that with reference to the Macquarie dictionary for assistance (exhibit MLP2) that the mining definition of "strake" as a trough was perhaps the closest meaning that would be of relevance to his invention. Mr Taylor prefers the definition that refers to the nautical use of the term that defines the "strake" as a beam situated along the side of the boat. In this usage, the "strake" directs water along the side of the boat. As was pointed out by Mr Parr in his declaration, the term "strake" is not used in the description of the present invention.
Mr Fleming and Mr McCredie declare that in use a "strake" situated along the side edges of the fins forms a channel between the "strake" and the foot support so as to reduce spill over and to channel water along the fin to the distal free edge of the fin.
Mr McCredie refers to his US Patent 4838824 as an example of a swim fin having a "strake" along its side edges, which he states, is a "small angled rail running along the side edges of the fin". This specification states that "each longitudinal side of the flipper portion 3 has a pair of rails 4 and 5 provided thereon".
Mr Fleming in his declaration refers to his Blade fin (TWF1) and designs (exhibits TWF2 and TWF3) as disclosing "small 'strakes' running along the side edges of the fin". Mr Fleming states that the Blade fin and the associated designs illustrate a raised side rail that extends along the side edge portions of the fin. Mr Fleming further attested that the fins of exhibits TWF4 to TWF9 all illustrate the use of small "strakes" running alongside each side edge of the fin. In his second declaration, Mr Fleming refers to the nautical use of the term "strakes" and to their application to swim fins. He states:
"…similarly to the raised planks ('strakes') along the side edges of boats, to direct water to the stern of the boat. The 'strakes' or raised rails are necessary on swim fins to direct or contain water until the water reaches the blade area of the fin where the majority of the power of the fin is generated."
Mr Sly refers to the use of "raised edge along the side edges of the fins" while Mr Wilson refers to "raised side edges of the fin along each edge of the fin".
As previously noted, Mr Parr has some comments on the use of the term "strake". Mr Parr stated:
"I would not say that the invention is directed to the provisions of a 'strake'…which is formed along the side edges of the fin and running from the foot pocket, to the distal free edge of the fin to form a channel between the 'strake' and the foot support, to reduce spill over to channel water along the fin."
Mr Parr continues in his declaration.
"The invention is more correctly described as being directed to a fin in which channels are provided on each side of the foot pocket which are from formed upwardly tapered side edges and which extend from the region of the opening of the foot pocket and open inwardly into the blade of the fin." [my emphasis]
Through the formation of upwardly tapering side edges, a tapering channel is formed.
"The formation of tapering channels as described above on either side of the foot pocket extending from the region of the foot pocket opening…"
Mr Parr in commenting on the Propel fin and the Hydro Finz Tech fin describes these fins in terms comparable to that of his fin.
"I make the comment however, that these fins interestingly embody flared side edges to provide water catchment channels. … Note that the side edges of the fins of exhibit KSY3 [Propel fin] are raised to define a recess far deeper than any of the fins previously referred to …[in the evidence]…" [my emphasis]
Therefore, on a fair reading of these declarations, an alternative meaning for a "strake" is as a raised rail or a raised side edge. It is also clear from these declarations that the side rails are raised relative to the fin surface. While I note that Mr Parr's interpretation is consistent with my findings on the meaning of the term "strake" and its alternative meaning, it is apparent that Mr Parr disputes that a "strake" or raised side rail is a feature of his invention. The distinction between the parties lies in the degree of functionality they ascribe to the term "strake". While Mr Parr prefers the mining concept of a trough, the opponent prefers the nautical definition. However, it is not necessary to decide between these competing concepts as a common thread of a "raised side rail" will suffice.
I further note as discussed above that the claims are directed, inter alia, to a fin having upwardly tapered side edge portions. By side edge portions, it is clear that the specification refers to the edge portions of the fin section that extend on either side of the foot pocket and which extend to the distal free edge portion. Thus, a tapering side edge portion can thus be defined as a side edge portion that is tapered with respect to fin section of the swim fin. The concept of using 'taper' as a descriptor for the channel is also consistent with the illustrations of the channel in figures 5A to 5F of the drawings. The preferred embodiment refers to this as a "wing section which projects upwardly and forms a channel 19 between the wing section and the foot receiving pocket 5" which is "best seen in Figs. 5C to 5E." Although this may imply that the upwardly tapering side edge portions differ in function from the raised side edge portions referred to by the opponent, there is nothing in the claims that would reflect this concept. Hence by being "tapering upwardly", the side edge portion must of necessity be "raised" with respect to the fin surface. However a "raised" side rail will not necessarily be "tapering upwardly" as it will not necessarily give rise to a tapering cross-section.
However, this interpretation is at odds with one of the examples of the applicant's fins. This is clearly evident when I compare the applicant's fin as put into evidence by the opponent (exhibit NW1 and KSY2-which I will call the early Fangz fin as it was filed on 25 November 1999) with the fins as evidenced by the applicant (exhibits MLP1 and SPH1-which I will call the later Fangz fin as they were respectively filed on 14 July 2000 and 17 July 2000). In the former, the side edge portions produce with the foot pocket a channel that has a tapered cross-section while in the latter the side edge portions produce with the foot pocket a channel that is near vertical (i.e. they are raised). In other words, in the former the channel formed between the foot pocket and the side edges is more V shaped in profile whereas in the latter this channel is close to U shaped in profile with the base of the "U" being upwardly sloping.
I have also reviewed the specification and in particular I have looked at the illustrated embodiment. I find that this is entirely consistent with the opponent's sample of the fin. I also note that neither party commented on these issues.
While both of these embodiments can be reconciled on the point that they each illustrate a channel that commences adjacent the foot opening, the claims are restrictive as they define the shape of the channel. In fact, the taper of the side edge portions is significant in both the specification and the example of the early Fangz fin, but in the later example of the Fangz fins, the tapered side edge portions are nearly vertical and it would be difficult to describe them as tapering.
The difficulty that the exhibits of the Fangz fins presents can be put as follows. If the later Fangz fins contain the essential features of the invention then the ambit of a raised side edge portion is coterminous with a upwardly tapering side edge portion. However, if the later Fangz fins are not a sample of the invention then a raised side edge portion would not necessarily include a tapering side edge portion.
While the example of the later Fangz fins throws considerable doubt on the meaning of "tapering side edge portions", I prefer to give effect to the words in the specification, which appear to be consistent with the applicant's submissions. In this I refer to the plain meaning rule for construction of patent specifications.
"The words of a specification should generally be given their ordinary English meaning". (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478).
Hence, I conclude that a upwards tapering side edge portion is also a raised side edge portion but that a raised side edge portion is not necessarily an upwards tapering side edge portion.
Section 40: fair basis
The first point to consider is whether the claims satisfy the fair basis requirement. Mr Parr, the inventor, makes some comments about the differences between his invention and the fins of the prior art that I find reflect upon the issue of fair basis.
In commenting on the fins put forward into evidence by the opponent, Mr Parr in his declaration states that these fins:
"…do not form channels which have the capacity to capture and redirect water flowing over the upper surface of the foot pocket from as far back as the region of the opening thereof during a downward kick of the fin to provide an appreciable increase in the thrust of the fin…"
Mr Parr emphasises the importance of the channels.
"…but the critical feature of the invention …is the existence of channels …to capture and redirect water that flows over the upper surface of the foot pocket from the region of the foot pocket opening."
But there are no words in the claims from which I could infer this capacity or functionality. In other words, this lack suggests a lack of fair basing. I also note that Mr Massie's written submissions that referred to an offer to amend claim 1 of the specification. This offer stated:
"However, the applicant has previously offered to amend claim 1 of the proposed application to add the wording:
'so that during a downward kick, water is captured in the channel and directed from as far back as the ankle area down the channel towards the distal free end of the fin'.
The applicant would consent to the above amendment, which forms part of the claim 11 of the corresponding US patent, if the Hearing Officer regards this as required."
Although Mr Taylor rejected this amendment as being adequate from a novelty perspective, it seems to me that the applicant's comments neatly capture my thoughts on the matter.
To put this amendment in context, claim 11 of granted US patent 5810629 (exhibit MLP4) is as follows:
"11. A swimming fin which includes a main body having a support section which includes a cavity or pocket into which the main part of the user's foot can be received and a heel support for retaining the user's foot in position and a fin section which extends away from the support section and includes a distal free edge portion and spaced apart side edge portions extending between the distal free edge portion and the support section, said side edge portions of the fin section tapering inwardly towards one another from the distal free edge thereof in the direction towards the support, the said edge portions terminating adjacent the heel portion of the support remote from the distal free end of the fin and wherein a part of each side edge portion which is disposed adjacent the support projects outwardly therefrom and tapers upwardly so as to form a channel between the outer peripheral edge and the wall of the support so that during a downward kick water is captured in the channel and directed from as far back as the ankle area down the channel towards the distal free end of the fin." [my emphasis]
The amendment proffered clearly reflects what the specification holds as an essential factor in giving to the invention those advantages claimed for it. The result of the channel structure is clearly not a feature of the main claim. I find that the applicant's admission is persuasive and of great weight.
In my view, this is one of those circumstances where it is appropriate that the monopoly may be defined by reference to the desired result (No-Fume Ltd v Frank Pitchford and Co. Ltd. (1935) 52 RPC 231).
"... the proportions can be ascertained without the exercise of any new inventive faculty, if the directions laid down are followed; ... It appears to me that the proportions need not be exactly laid down by the description, according to the inches of a foot-rule, if there is a field in which the proportions may vary and yet in which success may be achieved and ensured."
It is noteworthy that the claim like that in No-Fume (supra) is directed to a known article and that no new principle is involved.
The claims as currently defined do not include the advantages or technical result of the channel structure and there appears to be no reason for inferring such stated functionality. Hence, the claims lack fair basis. As previously stated, this feature is referred to in the specification as follows and is identical to the proposed amendment:
"so that during a downward kick, water is captured in the channel and directed from as far back as the ankle area down the channel towards the distal free end of the fin".
Section 40: other clarity / fair basis issues
Mr Taylor contended that a number of expressions in claim 1 lacked clarity. It is opportune to look at the critical expression in claim 1 that defines the channel.
"wherein a part of each side edge portion which is disposed adjacent the support projects outwardly therefrom and tapers upwardly so as to form a channel between the outer peripheral edge and wall of the support" [my emphasis]
Mr Taylor submitted that "a part" was unclear. However, in my view this is referring to that part of the side edge portion that is disposed adjacent to the support. This term is clear.
However, the next term "the support" may not be so clear. The claim defines a support section that includes the foot cavity and which further includes a heel section. Hence in view of this it could be unclear whether "a part" is referring to that part of the side edge portion that is adjacent the foot cavity or adjacent the heel section. Similarly, the same argument could be mounted for the second reference to the "the support". However, considering the definition of the support section and that the fact that the "fin section extends away from the support section", it is clear that both interpretations are intended. The term is clear.
It was further submitted by Mr Taylor that the expression "projects outwardly therefrom and tapers upwardly" is unclear. This expression appears to be capable of encompassing either a structure in which the support section firstly extends outwardly in a planar direction and then secondly tapers upwardly (as represented by a more U shaped channel) or a structure in which the outward extension and upward tapering of the support section occur simultaneously (as represented by a V shaped channel). Mr Parr describes his fin as extending outwardly of the fin and away from the sides of the foot pocket in an upwardly tapering direction" and as providing channels "which are formed from upwardly tapering side edges". From these expressions and from Mr Parr's comments on later fins as having flared side edges, I have no difficulty with concluding that the fins of Mr Parr's invention satisfy the second leg of the expression. Therefore, I find that the expression is broader than intended and hence lacks fair basis as the outward extension and upward tapering of the support section must occur simultaneously.
It is also clear that the first leg of the expression will include "strakes" or raised side edges.
The next issue is the location of the channel. The claim defines the channel as follows.
"the channel extending from the region of the opening of the pocket along the side of the support section and opens into the fin section inwardly of the side edge portions thereof." [my emphasis]
The claim also defines this region.
"the support section further including a heel support which extends away from the cavity or pocket from the region of the opening for retaining the users foot in position." [my emphasis]
Mr Taylor suggested that "the region" lacked an antecedent. While this is technically correct, the real issue is whether the expression "in the region" is so general as to encompass constructions that were not intended to be included. In view of the art cited against the claims, the meaning of the expression becomes critical. Mr Taylor further suggested that the region should be limited to "at" or "beside", as this would more fully encompass the applicant's intention. Mr Parr refers to a channel as being formed on either side of the foot pocket and being extended to a position much closer to the opening of the foot pocket. From this, I would infer that the channel is much closer than a location "in the region" thereof. This is consistent with the effect of the invention to direct water from as far back as the ankle area. The ambit of the term "in the region of" is thus uncertain as it includes areas not located "at", "adjacent" or "beside" the foot opening. I also note that the US claim 11 to which I was referred has side edge portions terminating "adjacent the heel portion of the support". I also note that the specification states that the "side edge portions have a part thereof forming a wing section 18 which is adjacent the foot receiving pocket 5."
In order to be fairly based, the claimed invention must have all the essential features the specification states are required to achieve the stated advantages of the invention. In AMP v Utilux, (1971) 45 ALJR 123 at page 131, Mr. Justice McTiernan stated:
"If ....... patentee chooses or is compelled to state advantages of his invention, failure of a claim to embody any of the advantages claimed must result in the failure of the claim."
On this basis, claim 1 lacks fair basis, as it does not recite all of the essential features of the invention. From my discussion, it is clear that the channel needs to be located adjacent the foot pocket and wherein the outward extension and upward tapering of the support section occur simultaneously for the benefits of the invention to be achieved.
Novelty
The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at page 235 (see also 13 ALR 605 at page 611), where Aickin J stated:
"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."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken. See e.g. Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391.
An issue flowing from the exhibits of the applicant's fins is whether the tapering of the side edge portion is a feature that makes a substantial contribution to the working of the invention or whether it is the capacity of the channel per se that is significant. This issue, while interesting, is not addressed by the parties. In this, it seems to me that either the first and second legs of the rule as posited in Catnic Components v Hill and Smith Ltd, (1982) RPC 183 at page 228 are applicable rather that the third leg. In relation to essential features, the Court held the following.
"... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature. If so, that feature will be an essential feature of the claim and anyone who makes a product or carries out a process which has all the features of the claim except that particular feature will not infringe the claim. But (3), all claims are not perfectly framed. Sometimes a draftsman may include some feature in a claim, either explicitly or by implication, which is not in fact essential to the working of the claimed invention and which the applicant has not by the terms of his specification and claim clearly indicated as a feature which he regards as an essential feature of his monopoly. In such a case an alleged infringer may be held to have infringed the claim notwithstanding that his product or process does not incorporate the feature in question or substitutes some equivalent for it. (4) The fact that a claim incorporates a particular feature does not alone suffice to make that feature an essential one. If this were not so, no feature of a claim could ever be inessential, but the speeches in Rodi and Wienenberger [(1969) RPC 367] all assume that a claim may include an inessential feature."
According I can only conclude that having tapering side edge portions is an essential feature of the invention.
It is convenient to start the discussion with the applicant's evidence in answer. Mr Harrison, a coach in underwater hockey, trialed the swimming fin (exhibit SPH1-the later Fangz fin) that was produced by the applicant and compared it with the Hydro Finz flipper (exhibit SPH2). It is clear from visual observation that exhibit SPH1 possesses the resilient member. Although this clearly would have an impact on its performance, Mr Harrison only remarks on the channel aspect of the invention. He makes the point:
"The speed of the Fangz flippers [the applicant's fin] over the others is in my opinion attributed to the deep long channels retaining the water on the full flipper face". [my emphasis]
And the further point,
"I have no hesitation in concluding that the Fangz fin has deep channels which trap the water displaced in a kicking motion." [my emphasis]
Visual observation of the later Fangz fins and the Hydro Finz shows that a very deep channel is used in the applicant's product as compared to that of Hydro Finz. This may well give to the later Fangz fins a more pronounce channelling effect than may be apparent in the earlier version.
The inventor, Mr Parr, in his declaration commented:
"That is not to say that fins did not exist which included, merely as a result of manufacturing requirements or to provide structural rigidity, raised side edges adjacent the sides of the foot pocket, but the relationship between those raised side edges and the sides of the foot pocket do not form channels which have the capacity to capture and redirect water flowing over the upper surface thereof during a downward kick of the fin to provide an appreciable increase in the thrust of the fin, in accordance with my invention."
This is more directly emphasised in the following sentence from Mr Parr's declaration.
"As will be explained hereinafter, while several of the fins put into evidence by the opponent are said to have channels according to my invention, they do not have the characteristics of the channels my invention requires, which characteristics are referred to above and are described in my patent specification."
It is clear that Mr Parr recognises that the use of raised side edges forms part of the common general knowledge in the art. He submits that raised side edges were provided to channel water and to provide strength.
"I would agree that the raised side edges are used for a combination of rigidity and water catchment in the blade area of the fin, but not in the region of the foot pocket opening."
The opponent's declarants confirm this. Mr Wilson stated:
"In that time I have seen many swim fins having raised side edges of the fin along each edge of the fin, to provide channels with the foot pouch to assist in directing water along the fin. This feature appears in varying degrees to form a channelling effect of the water flow over the foot pouch and along the fin." [my emphasis]
Messrs Sly, Flemming, and McCredie in their first declarations attest to the concept being well known.
"This concept is well known and has been used to some degree by most manufacturers of swim fins." [my emphasis]
Mr Sly in his first declaration refers to the use of "raised side edges" that provide with the foot pouch a channel that would assist in providing a more efficient action of the fin as well as strengthening the fin. In answer, Mr Parr "accept[s] to a certain extent this statement, but only so far as that in the past, raised edges had the effect of capturing water, but at best only toward the toe end of the foot pocket and that the raised side edges are provided primarily for rigidity."
Mr McCredie in his first declaration states that prior art fins have channels formed by rails extending along the side of the foot pocket to the distal free edge portion of the blade. These channels direct water along the length of the fin and hence lessen spillover. In evidence-in-answer, Mr Parr states that this "may have some merit" as water will flow over the foot pocket but capture of this water will only occur at the toe end of the fin as compared with the current invention in which the capture occurs in the region of the foot pocket. Mr Parr emphasises that the "channel must have a depth sufficient to capture and redirect water in a manner having a noticeable effect in performance compared to known fins."
Referring back to the declaration of Mr Parr where he discussed the development of his swimming fin.
"My fin development eventually lead me to extend the side edges of the fin outwardly, away from the sides of the foot pocket in an upwardly tapering direction and to extend them longitudinally of the fin to a position much closer to the opening of the foot pocket than I had ever seen in fins before. By this arrangement, I formed the side extension to define an actual channel on either side of the foot pocket. As a result, the fin as developed was able to capture and redirect to varying extents, water that would otherwise flow over the upper surface of the foot pocket and past the side edges thereof." [my emphasis]
Mr Parr refers to a surprising benefit that occurred with a fin having the extended channel, although this benefit is not necessarily captured by the fin as defined.
"Additionally and surprisingly, the increased thrust I achieved with prototype fins permitted me to reduce the overall length of the fin and thus the length of the blade of the fin, so that a reduction in the thrust loading experienced at the swimmer's toes occurred."
A review of the citations and exhibits follows.
Citations
US 4738645 (Garofalo) and US 4887985 (Garofalo)
Both patents are directed to swim fins. The fins include, inter alia, a channel formed between the edge portion of the fin (via strengthening ribs) and the surface of the blade portion of the fin. The following quotes taken from both specifications refer to the concept of channelling water across the face of the blade.
At column 5, lines 8 to 13 of US 4738645
"…and moreover the height h of the said ribs may be increased, in order to further enhance the conveying action of the fluid flow longitudinally with respect to the fin, thus eliminating or reducing as much as possible propulsion losses due to side leakages."
At column 5 lines 9 to 17 of US 4887985
"…the angle …between the inwardly facing flank of the ribs … and the surface of the side portions … of fin blade may be decreased up to a value of about 900, and moreover the height h of said ribs may be increased, in order to further enhance the conveying action of the fluid flow longitudinally with respect to the fin, thus eliminating or reducing as much as possible propulsion losses due to side leakages."
Mr Parr comments that while these citations disclose channels in the blade fin they do not disclose stiffening ribs that form upwardly tapering channels in the region of the foot pocket.
While these citations disclose the use of rails, there is no disclosure of an outwardly directed extension and upwardly directed taper. Hence, the claims are novel in view of these citations.
US 4838824 (McCredie)
Mr Taylor stated this US patent corresponds to the Hydo Finz that formed exhibits TWF9, KSY5, MCC1, and exhibit SPH2. As the rear end of the exhibits has moulded thereon references to AU 590109, US Des 302999 and US 4838824, it is appropriate to consider the patent and exhibits together. The swimming fin has two opposed side rails on each side of the flipper. These opposed side rails "extend outwardly and at an angle to the plane of the said flipper surface" [i.e. fin surface] and hence can be considered to extend outwardly and be tapered upwardly. The side rails "channel the displaced water towards the front of the flipper during both upward and downward movement of the flipper". From the specification drawing, a channel is formed between the fin surface and the rails but it terminates at front portion of the foot pocket.
At column 2 line 36 to 38 of the citation, it is stated:
"The side rails 4 and 5 and the upright or vertical fins 7 and 9 are preferably tapered towards the front and rear of the flipper while broadening out towards the center of the flipper portion edges."
And at column 2 lines 51 to 56, the following is stated:
"The side rails channel the displaced water towards the front of the flipper during both upward and downward movement of the flipper. This channelling effect reduces the loss of displaced water over each side of the flipper surface and increases the forward propulsive force provided during kicking by the wearer."
Given that claim 1 does not uniquely define the location of the channel and does not define how the water is to flow over the fin, the features of claim 1 are thereby clearly disclosed by this citation.
AU Design 118460 (Fleming) and US Des 349552 (Fleming) of exhibits TWF2 and TWF3 respectively and including the Manta Blade of exhibit TWF1, NW2, KSY7 and MCC8
The designs are granted to the declarant Terry Fleming of Manta Surfing Products. These designs show a tapered fin with upstanding side rails. The designs reflect the design of the Manta exhibit.
Mr Parr states that the concave area seen in the designs terminates well before the foot pocket opening. Nevertheless, as previously mentioned claim 1 only requires the channel to be formed in the region of the foot pocket opening. For similar reasons to my discussion of the McCredie patent, these designs disclose the features of claim 1.
The exhibit shows a tapered swimming fin with a channel formed between a raised foot pocket and raised tapered side edges. The channel while merging with the front of the foot pocket is still distinct at that point.
Mr Parr while agreeing that the fin displays raised side edges, states that this is purely for rigidity purposes. He contends that:
"The area between the foot pocket and the side edge is formed to have a concave configuration or recess that is gradually reducing depth toward the opening of the foot pocket, but the depth of the concave area is not sufficient at any point therealong in my opinion, to capture water, or at least an amount of water that would have an appreciable effect on the thrust of the fin. The point of maximum depth of the recess seems to be in the region of the change of the fin colour from blue to black, but that is a very shallow depth and is spaced well away from the foot pocket."
However, this aspect has already being discussed and I have concluded that the fin as defined is not restricted to capturing water in the manner described by Mr Parr.
Mr Parr continues with his analysis.
"Thus, if the Blade fin shown in Exhibit TWF1 could be considered to have a channel at all (and I don't believe it could) that channel is not in accordance with my invention, because it does not have the characteristics of extending to the region of the foot pocket opening for the purpose of capturing and redirecting water up to that region."
Given my interpretation of the claim 1 and the lack of fair basis in the claims as a whole, the distinctions that Mr Parr are attempting to draw are not part of the present claimed invention.
The features of claim 1 are clearly disclosed in this exhibit.
US 5511999 (Cochrane et al) OPI 30 April 1996
This citation has a publication date later than the priority date of 9 March 1994 and was simply put into evidence to demonstrate that the use of a channel effect was known.
I do not consider that the remaining documents filed in the opposition, namely GB 762166, US2865033, US4007506, US5358439 (and equivalent EP579046), and US5511999 are of any particular relevance except to support the proposition of the common use of "strakes" or raised side edge portions. However that is not necessary as I have already concluded that the use of "strakes" " or raised side edge portions forms part of common general knowledge in the art.
Exhibits
Mr Parr in his declaration specifically challenges the availability to the public of exhibits TWF5 and TWF6, the Salvas fin and Churchill fins respectively. There are also publication issues with regard to the Propel fin and Hydro Finz Tech fin; however, as will be discussed later these fins were not alleged to be novelty destroying. Mr Massie also comments on these issues and specifically refers me to the decision of the delegate in Raychem Ltd v Global Lightening Technologies Pty Ltd 36 IPR 572. In particular, Mr Massie points out that there is no supporting evidence to confirm the sale and use of these fins before the priority date.
In this opposition, there are four declarants with no apparent connection with the opponent. Although the declarations are drafted in a similar manner, there is no suggestion that they are untruthful. Mr Taylor stated that evidence of this type was difficult to obtain but that there was sufficient evidence through the statements of the declarants to establish publication dates.
a) Redley fin of exhibit TWF6, KSY8 and MCC6
This fin has tapered blade and tapered side edges. The channel ends adjacent the front of the foot pocket. For similar reasons to the Manta blade, this fin deprives claim 1 of novelty.
There was no direct challenge to the publication date for this fin. Given this and the statements of the declarants, I am prepared to accept that it was in use before the priority date.
The following exhibits and citations are not relevant for the reasons stated therein. Hence publication is not an issue.
b) Airfin of exhibit NW5 and KSY1
The Airfin is a short swimming fin having a tapered blade with two small tapered side edge rails that form channels with the foot pocket. Mr Parr states that the "channels" terminate towards the toe end of the foot pocket. I agree with Mr Parr as the channel is too remotely located to be considered to be extending "from the opening of the pocket". This fin does not disclose the invention as defined by claim 1.
c) Propel fin and Hydro Finz Tech fin of exhibits KSY3, NW3 AND KSY4
Mr Parr alleges that these fins were produced later than the priority date of the claims. Mr Taylor does not dispute this and in fact stated that the fins were put into evidence merely for information purposes and it was not intended for them to be considered as citations. Given this admission, I conclude that these fins are not relevant to this opposition.
d) Churchill fin of exhibit TWF4, KSY6 and MCC5
In this swim fin, the raised side edges while extending toward the foot opening cannot be said to terminate "in the region" of the foot opening. In my view this location is simply too remote. I agree with Mr Parr that this exhibit does not disclose the features of claim 1.
e) Scott Dillon Dafin
This fin was not the subject of any declaration. From my observation, it is not relevant.
f) Dacor blade of exhibits TWF7 and MCC7
The fin of this exhibit is apparently much closer to the construction of a scuba fin as it has a much longer blade. Visual inspection shows a narrow channel formed between the foot pocket and tapered raised side edges. The fin is untapered from its distal end to its support section.
Mr Parr states.
"It is accepted that the raised side edges extend along the sides of the foot pocket, but any channel that could be said to be defined therebetween, does not extend from the region of the opening of the foot pocket, but instead extends from the region of the toe end of the foot pocket."
The distinction Mr Parr attempts to draw between "the region of the foot pocket" and "the region of the toe end of the foot pocket" is not a distinction that is apparent in claim 1.
Mr Parr continues.
" the raised side edges extend to a position in which they become integral with the sides of the foot pocket, as the side edges approach the opening of the foot pocket. In that region…there is only a step between the sides of the foot pocket and the upper edge of the raised sides. This step is not a channel that could capture and redirect water, and therefore, this part of the fin cannot be said to disclose my invention."
Again, as previously stated the claim does not state that water must be redirected as stated.
As a result of the fin being untapered, this exhibit does not disclose all of the features of claim 1 and hence the claims are novel.
g) Malyasian fin of exhibit TWF8
This is a very long fin (called a scuba fin) that shows a channel between the foot pocket and the side edges. The channel is deeper than that of the Dacor blade and while it terminates near the foot cavity, it clearly extends to "the region of the foot opening". While the side edge portions are tapered, the blade itself is not tapered from its distal end to the support section. Thus this fin does not disclose all of the essential features of the invention.
h) Salvas drift fin of exhibit TWF5
This is a scuba fin with a very deep channel formed between the foot pocket and straight raised side edges. The channel extends to the rear of the foot support. The fin is untapered from the distal end to the support section. In Mr Parr's opinion, these are provided for "stiffening purposes" and not for channelling of the water. However, the fact remains that this fin does not disclose all of the essential features of the invention. Hence, this fin does not deprive the claims of novelty.
Octoblade fin of exhibit MCC4
Mr Parr states that this does not disclose the features of claim 1. He views this fin in a similar manner to the Manta blade fin of exhibit MCC8. The fin is tapered from its distal end to support section and the side edge portions are upwardly tapered.
"That is, the concave area found between the raised side edges and the foot pocket does not form what I consider is a channel, but in any event terminates well prior to the opening of the foot pocket."
I agree with Mr Parr on this issue.
Inventive step
In relation to inventive step only exhibits f), g) and h) deserve special mention. While these exhibits do not disclose a tapered fin, they disclose the other essential features of claim 1. However, I consider on the basis of the evidence that tapered fins are well known. That being the case it seems to me to be within the ambit of the non-inventive skilled worker to provide a tapered fin. While this argument applies to exhibit f), I do not consider that it could apply to exhibits g) and h) as these fins are very long and a tapered fin would prove impractical. In relation to publication issues, there was no specific challenge to the availability of the Dacor blade before the priority date. On balance, I am satisfied that there is sufficient support in the declarations filed by the opponent to support publication. Hence, claim 1 is obvious in view of fin f) but not in view of fins g) and h).
In relation to the other exhibits that did not deprive claim 1 of novelty, I consider the formed channel is too remote from the support (exhibits b), d) and i)) for inventive step considerations to apply for the simply reason that there is no evidence that would establish that these were matters of common general knowledge.
The non-cited documents in the opposition do not appear to be relevant for obviousness purposes.
Claims 2 to 4:novelty
Mr Taylor submitted that claim 2 did not add a novelty conferring feature, while claim 3 in its addition of a resilient element merely includes known strengthening elements. Claim 4 according to Mr Taylor merely states that part of the resilient element, is embedded. I note that claim 4 should be appended to claim 3 as this is the only sensible appendency. I do not agree with Mr Taylor that claims 2 and 3 do not add any novelty conferring features. In relation to claim 4, I disagree in that there is no evidence of embedded resilient elements being common general knowledge.
Claim 2 specifies that the channel is formed adjacent the support section. And in relation to claim 3, it is not clear to me whether the elongate resilient element necessarily includes a strengthening rib.
Therefore claims 2 to 4 are novel in view of the citation and exhibits. Similar observations can clearly be made with regard to inventive step.
Entitlement
A ground of opposition not pursued at the hearing related to the allegation that Atsuko Parr was not entitled to the grant of the patent as the "original owner, Michael Lancaster Parr, was, because of his financial position, not allowed to assign the patent application". No evidence was filed and the opponent made no submissions on this point. I cannot see any reason for not dismissing this ground of opposition.
Manner of manufacture
A further ground of opposition related to manner of manufacture. The approach on lack of manner of manufacture was based upon novelty (ie as the opposed claims were not novel, they failed to disclose an invention).
These arguments have all been considered under novelty and I do not propose to repeat these here. Further, I cannot find any basis for concluding that there is no invention "on the face of the specification" as per NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 (which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401).
Hence this ground fails.
CONCLUSION
I find that the opposition succeeds. The claims lack fair basis and claim 1 is not novel. However there is clearly patentable subject matter and I allow 60 days from the date of this decision for the applicant to propose suitable amendments.
COSTS
The general proposition is that costs normally follow the event. However in this case, as noted by Mr Massie in his written submissions, no ground of lack of compliance with s 40 was particularised. Although Mr Massie invited me to refuse to entertain any s40 submissions, I declined to do so and found significant issues of non-compliance with s40. While this is an appropriate matter to weigh in awarding costs, the opponent was successful on the ground of novelty. In my view, this outweighs the lack of particularisation. Hence, I award costs against Atsuko Parr.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant :Phillips Ormonde & Fitzpatrick
Patent attorneys for the opponent :Paul R. Taylor & Associates
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