Austming Trade Pty Ltd v MindsInSync, Inc

[2013] APO 69

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Austming Trade Pty Ltd v MindsInSync, Inc. [2013] APO 69

Patent Application:                2012100007

Title:Mat

Patent Applicant:                   MindsInSync, Inc.

Opponent:  Austming Trade Pty Ltd

Delegate:  Ranganath Subbarayan

Decision Date:  19 December 2013

Hearing Date:  17 October 2013, in Canberra

Catchwords:  PATENTS – Innovation patent – innovative step – substantial contribution to the working of the invention – entitlement to earlier priority date of parent application

Representation:  Patent applicant:  Davies Collison Cave

Opponent:Lord & Co

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2012100007

Title:Mat

Patent Applicant:                   MindsInSync, Inc.

Date of Decision:                   19 December 2013

DECISION

1. The opposition fails on all grounds. The invention of the innovation patent is both novel and innovative.

2. Costs awarded against the opponent.

REASONS FOR DECISION

Background

3. Innovation patent application 2012100007 was filed on 9 January 2012 as a divisional application of patent application 2010325781.  It was granted on 19 January 2012.  It was subsequently examined and certified on 17 July 2012.  A notice of opposition with a Statement of Grounds and Particulars was filed on 18 October 2012 by Austming Trade Pty Ltd.

4. The matter was heard on 17 October 2013.  The opponent appeared over the telephone.  The patentee did not appear nor file any written submissions.

The opposition

5. The opponent opposed the innovation patent on the basis of

·     Not a manner of manufacture

·     Lack of novelty

·     Lack of innovative step

·     Non compliance with section 40(3)

6. Evidence in support comprises a Statutory Declaration dated 18 October 2012 from Mr Kelvin Lord, the attorney for the opponent, along with exhibits KL-1 to KL-12.

7. The patentee did not serve any Evidence in answer.

Applicable law

8. The request for examination in relation to the patent was filed on 23 January 2012.  As a consequence substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent. This includes the amendment to subsection 101N(4) that allows the Commissioner to revoke an opposed innovation patent if satisfied on the balance of probabilities that a ground of revocation exits.

9. Consequently it appears that the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).

Specification

10. The present invention relates to a layered mat that has advantageous application to bathroom mats but can also be used for a number of different purposes such as floor mats, seat cushion mats, play mats or car seat mats.  Generally bath mats are relatively thin and not very comfortable to stand on.  They also tend to lose their shape and appearance when they become wet and may not dry out quickly and start to smell and degrade.

11. The present invention claims to solve these problems by providing a mat that has a cushioning layer comprising a memory foam material, a surface layer comprising a pile fabric secured over the cushioning layer and a slip resistant layer underlying the cushioning layer.  The resulting mat is stated to provide a luxurious, cushioned and absorbent feel when stood upon and is also quick drying.

12. The specification further states that the memory foam material is viscoelastic polyurethane foam.

13. The specification ends with five claims as follows:

1.   A mat comprising:

a cushioning layer comprising a memory foam material and extending substantially the length and breadth of the mat;
a surface layer secured over the cushioning layer, the surface layer comprising a pile; and
a slip-resistant base underlying the cushioning layer.

2.   A mat according to claim 1, wherein the cushioning layer and surface layer are

laminated together.

3.   A mat according to claim 1 or 2, wherein the pile is a microfibre pile.

4.   A mat according to any one of the preceding claims, wherein the cushioning layer and surface layer are sewn together.

5.   A mat according to any one of claims 1 to 3, wherein the cushioning layer has a thickness between about 1 cm and about 5cm.

Novelty and Innovative Step

14. The opponent submitted that the claimed invention lacks novelty and/or an innovative step over several prior art documents.  I will consider each of them separately.

D1) KR 10-2006-0068100 and an English translation thereof (Exhibits KL-2 and KL-3)

15. Document D1 relates to a hygroscopic mat comprising a number of layers including a layer of absorbent pile fabric 10 secured over a cushioning material 10 made of highly elastic sponge.  A latex coating 13 is applied to the underside of the cushioning layer and would constitute a slip-resistant base.

16. The opponent submitted that arguably the only difference between the claimed invention and D1 is in the use of memory foam instead of “highly elastic sponge” and that if this was considered a difference it would not make a substantial contribution to the working of the mat as a highly elastic sponge has the same characteristics as memory foam.  The fact that the mat may give a more comfortable feel cannot also be considered as making a substantial contribution to the way the mat works.

17. Sub-section 7(4) of the patents act relevantly provides that:

(4)  For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.

18. Questions which may assist in considering the requirement for a ‘substantial’ contribution include (Richbury Pty Ltd v D&I Klein Investments Pty Ltd [2013] APO 13):

·Does the difference identified between the invention and the prior art convey an advantage to the invention?

·Does the difference provide a technical or functional contribution to the invention?

·Is the difference a significant aspect of the operation of the invention?

19. D1 is a document that was cited during substantive examination but the patentee had successfully argued that highly elastic foam is not the same as memory foam which has certain unique characteristics not found in other kinds of foam.  While not stated in the specification, it is well known in the art that memory foam refers to a foam that has the ability to mould itself to the shape of a body pressing against it, returning to its original shape once the pressure is removed.  There is nothing in D1 or by way of expert evidence to suggest that the highly elastic foam has the ability to mould itself to the shape of a body pressing on it.  I am therefore of the view that the disclosure of highly elastic foam in D1 does not fall within the scope of memory foam of the claimed invention.  Therefore the claimed invention is novel over D1.

20. Does the use of memory foam in the claimed invention make a substantial contribution to the working of the mat?  I have no doubt that in the context of a bathroom mat, for example, if a person were to stand on it, it would mould itself to the shape of the person’s feet and would therefore certainly give a different feel to the person when compared to standing on a mat made using standard foam material.  Can this different feel make a substantial contribution to the working of the mat?  While perceptions of feel and comfort can be subjective, in my view there is no reason why an improved feel or comfort should not be considered as making a substantial contribution.  The patentee has stated that the ability of the mat to mould to the shape of the person’s feet provides a more luxurious and comfortable feel when stood upon.  There is nothing to suggest that it clearly would not.  I am therefore satisfied that the use of memory foam does make a significant contribution to the working of the mat.  I therefore find that the claimed invention involves an innovative step over D1.

D2) KR 10-2010-0125592 and an English translation thereof (Exhibits KL-4 and KL-5)

21. Document D2 relates to a mat comprising a number of layers including a layer of absorbent pile fabric 1 secured over a cushioning sponge sheet 3 and a non-slip layer underlies the sponge sheet.  

22. Again the opponent argued that the use of memory foam as opposed to a sponge sheet does not involve an innovative step but provided no further evidence in support of these arguments.  I have already found that use of memory foam does make a significant contribution to the working of the mat.  It follows that the claimed invention involves an innovative step over D2.

D3) US2003/0203164 (Exhibit KL-1)

23. Document D3 relates to an anti-fatigue mat comprising a number of layers including a layer of absorbent material 12 secured over a cushioning material 14.  It further discloses that an adhesive material (which, from the figures, I would equate to being a layer) is provided on the exposed bottom surface of the cushioning material.  It states that the cushioning material may include any material having shock absorption properties and gives as examples a foam material of a closed cell construction or a bubble wrap.  While it states that the absorbent layer may include any material having absorbent properties, examples given are foam material having an open cell construction, microfibrous sheet materials, woven and non-woven fabrics.

24. The opponent conceded that D3 does not disclose the use of memory foam in the cushioning layer and the presence of a pile in the absorbent layer, but argued that neither of these features contribute to the working of the invention and that therefore claim 1 lacks an innovative step.

25. I have already found that use of memory foam that would enable the mat to mould itself to the shape of feet a person standing on the mat does make a significant contribution to the working of the mat.

26. In relation to the surface layer including a pile, the specification states that the loops of fibres constituting the pile are found to provide very good moisture absorbency such that in the majority of cases the moisture which passes onto the mat in use may be wholly held within the surface layer.  It is stated to provide good drying properties.  I agree.  A pile fabric due to its greater surface area compared to a non-pile fabric would provide better absorption and drying characteristics for the surface layer.  Hence I do not find the opponent’s submission that this feature does not make a substantial contribution to be persuasive.  

27. The claimed invention therefore involves an innovative step over D3.

D4) “Car Comforter” by Tempur Pedic (Exhibit KL-8)

28. Austming also submitted that the claimed invention does not involve an innovative step over the product “Car Comforter” by Tempur Pedic tendered as physical evidence.

29. On examining this product and some of the specifications printed on the carton in which this product is supplied, it is clear that this product is a car seat mat comprising a seat portion and a back rest portion with an adjustable lumbar support on the back rest portion.  The seat mat includes a cushioning pad made of memory foam sandwiched between two fabric layers, the upper layer of which can be equated to the surface layer secured over the cushioning layer and the bottom layer of which can be equated to the non-slip layer underlying the cushioning layer.  I was unable to find any pile on the surface layer.

30. The opponent acknowledged that this product does not include a pile fabric, but submitted that the provision of the pile does not contribute significantly to the working of the article.  I have already discussed the alleged advantages of providing a pile when discussing D3 and come to the conclusion that the pile does make a significant contribution to the absorption and drying properties of the mat.

31. The claimed invention therefore involves an innovative step over D4.

32. The opponent also ran another line of argument in relation to D4.  They submitted that D4 should be considered common general knowledge in the art as it is readily available in the Australian market and that is therefore appropriate to combine the teachings of this product with documents D1 and D2 both of which disclose slip resistant cushioned mats with a surface layer comprising a pile.  Therefore the claimed invention lacks an innovative step in light of the “Car Comforter” and documents D1 and D2.

33. Subsection 7(5) of the act restricts the information that can be used to establish lack of innovative step to:

·prior art information made publicly available in a single document or through doing a single act;

·prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.

Further subsection 7(6) stipulates that for the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.

34. The fact that a product is sold in Australia does not necessarily make it common general knowledge in Australia and even if it did, I cannot find any basis in the Patents Act for combining it with documents D1 and D2.

35. Also the reference to common general knowledge in subsection 7(4) relates to the assessment of the contribution a feature makes to the working of the invention, and not to whether that feature is itself common general knowledge.

36. Therefore this line of attack on the innovative step of the claimed invention also fails.

D5) AU 2010325781 (Exhibit KL-11)

37. The opponent also submitted that the present innovation patent should not be afforded the priority date of its parent application AU 2010325781and that the disclosures of the parent application  and its priority documents (exhibits KL-9 and KL-10) invalidate the claims for lack of novelty and lack of innovative step.

38. Their arguments as to why the present innovation patent is not entitled to the priority date of its parent application ran as follows:

In the parent application and its priority applications, there are clear references to the slip resistant layer being in contact with the cushioning layer and glued to the cushioning layer and that there is nothing to suggest that the patentee envisaged anything other than the cushioning layer and the non-slip layer being in close abutting contact and attached together.  However the claimed invention of the present application merely requires the anti-slip layer to underlie the cushioning layer.  This would also cover the construction where there is an intermediate layer between the cushioning layer and the anti-slip layer and for which there is no basis in the parent application.  Therefore the claims are far wider in scope than the disclosures of the parent application and its priority applications and consequently the priority date of these claims should be the filing date of the present divisional application.

39. The patent regulations provide that a claim is entitled to the priority date of an earlier application if the claim is fairly based on the disclosure of the earlier application.  The fundamental requirement for a claim to be fairly based on a particular disclosure is that the disclosure must contain a "real and reasonably clear disclosure of the subject matter of the claim" (CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481; (1994) AIPC 91-079 and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis 30 IPR 479; (1995) AIPC 91-121).

40. In the present instance, the question that I need to answer is whether there is a real and reasonably clear disclosure for the feature of the anti-slip layer being merely underlying the cushioning layer without any further qualification as to whether the two layers are in abutting contact or whether they are attached together.

41. In the parent application as filed, although the claims define the non-slip layer as being secured to the cushioning layer, I note that under the heading of “Summary of the Invention” in paragraph [0017] it merely states “In one embodiment, the mat also includes a base onto which the compressible material layer is located” without any further qualification as to whether they are secured together.  Further it is my view that even with the current definition in claim 1, it is implicit that the cushioning layer and the slip-resistant base would be secured together in some form as they are but different layers of the one mat.  From a contextual perspective, the reference to a “slip-resistant” base would be entirely meaningless if I were to determine otherwise.  While the described embodiments of the parent application show the two layers in abutting relationship and being glued together, I am not convinced that these are essential features of the invention of the parent application that need to be carried through to any divisional application in order to claim a valid divisional status.  In my view there is a real and reasonably clear disclosure of the claimed invention in the parent application.

42. I therefore find that the claims of the present innovation patent have a priority date of at least the filling date of the parent application.

43. It follows that the claims of the present application cannot be found to be not novel or lacking in innovative step over the parent application.

44. I have been provided with no evidence to establish that the priority applications of the parent application were published earlier than the filing date of the parent application.  Hence I do not intend to determine whether the claims of the present innovation patent are entitled to an earlier priority going back to the filing dates of these two priority documents.  I have therefore no basis to conclude that the claims of the present innovation patent are not novel or lacking an innovative step over these priority documents.

Manner of manufacture

45. The opponent did not provide any submissions in relation to the claimed invention not being a manner of manufacture and I have no evidence to suggest that the claimed invention fails to meet the threshold requirement for a manner of manufacture.  Therefore this ground has not been made out.

Section 40(3)

46. Although the opponent submitted that the claims do not comply with section 40(3) because the claims are not fairly based, it became clear at the hearing that this attack on fair basis was not in relation to internal fair basis but rather in relation to external fair basis with respect to the parent application and any consequential lack of entitlement to earlier priority.

47. I have already covered this issue under Innovative Step and I have been provided with no evidence or submissions to establish that the claims are not fairly based on the matter disclosed in the specification.  I therefore find that the claims are fairly based and comply with section 40(3).   

Conclusion

48. None of the opponent’s grounds of opposition have been made out.  I find that the claimed invention is novel and innovative.

Costs

49. The opponent has been unsuccessful in this opposition.  Although the patentee did not serve any evidence in answer or appear at the hearing or file written submissions, I note that there are still some costs they may be entitled to under Schedule 8.  I therefore award costs against the opponent, Austming Trade Pty Ltd.

Ranganath Subbarayan
Delegate of the Commissioner of Patents