Australian Lock Company Pty Ltd v Assa Abloy Australia Pty Limited (Corrected Version) - [2006] APO 29

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 753733 in the name of AUSTRALIAN LOCK COMPANY PTY LTD

Title: Moveable Element Key and Key Handle and Lock

Action: Request for leave to amend the complete specification, an opposition to the request by ASSA ABLOY AUSTRALIA PTY LIMITED and dismissal thereof

Decision: Issued 5 September 2006 .
Abstract

The patent applicant sought to amend its specification under S104 and the opponent opposed these amendments. The patent applicant sought dismissal of the grounds of opposition.
It was found that none of the particulars supported the grounds of opposition. Consequently, the grounds of opposition were dismissed in their entirety and the application for dismissal of the opposition to the S104 amendment was successful. Subject to any appeal, leave to amend was granted and the time for completion of service of evidence-in-support to the substantive opposition would expire 3 months from the date of this decision.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753733 by Australian Lock Company Pty Limited, a request to amend the complete specification, an opposition thereto by ASSA ABLOY Australia Pty Limited and dismissal action thereof.

BACKGROUND

Patent application 753733 (58399/99) was filed on 3 September 1999 by the Australian Lock Company Pty Ltd (“ALC”) as PCT/AU99/00722. The application was advertised accepted on 24 October 2002. A notice of opposition (the “main opposition”) was filed by then Lockwood Security Products Pty Ltd who has changed its name to ASSA ABLOY Australia Pty Ltd (“ASSA”).
A S104 set of amendments was filed by the ALC on 23 December 2003 and was opposed by ASSA. These amendments were subsequently withdrawn. The current set of proposed amendments was filed on 6 July 2005. The opponent, (ASSA), filed its comments on 8 August 2005.
On the 10 November 2005, the parties were advised that a direction for serving evidence to the main opposition would expire 1 month from the date that the Commissioner notifies the parties of the refusal or withdrawal of the request for leave to amend that was filed on 6 July 2005.
A notice of opposition to the S104 amendments was filed 8 December 2005 by ASSA. On 21 March 2006, ALC requested dismissal of the opposition to the S104 amendments.
In relation to the substantive opposition, ASSA’s evidence-in-support was completed on 8 June 2006. Both parties were notified in an Official letter of 11 July 2006 that the Commissioner proposes to defer the evidence-in-answer until the outcome of the dismissal hearing has been determined. The Official Letter also indicated that if the delegate found that the opposition was not to be dismissed he would issue a direction for service of evidence-in-answer as part of his decision
The matter was set down for a hearing at Canberra on Wednesday 10 May 2006. Both parties appeared by telephone. Peter Franke, patent attorney of Watermark, represented the patent applicant. Brad Fitzpatrick, patent attorney of Phillips Ormonde & Fitzpatrick, represented the opponent.
S104 AMENDMENT
The proposed amendments seek to replace the claims as accepted and to make subsequent amendments to the description. The claims have been reduced from a set of 19 claims having 2 independent claims to a set of four claims with only 1 independent claim.
The claims as accepted are as follows:
“1. A key having two blades and an actuator, said actuator being aligned along a plane lying between said blades, said actuator having an operation means and an interaction means, said operation means being positioned and adapted to be forced against a face of the lock during lock insertion such that operatively, when the key is inserted into a lock by a user, a force is applied to the operation means as a result of the user inserting the key into the lock and the position of the interaction means is thereby altered, the alteration of position of said interaction means being part of the locking or unlocking action of said lock.
2. A key according to claim 1, wherein the alteration of the position of the interaction means is achieved by the actuator being rotatable relative to the body of the key.
3. A key according to claim 1, wherein the alteration of the position of the interaction means is achieved by the actuator being pivotable relative to the body of the key.
4. A key according to any one of the preceding claims, wherein the interaction means is arranged and operatively adapted such that, upon key insertion, the interaction means is substantially positioned within the lock.
5. A key according to any one of the preceding claims, wherein the key further includes additional coding features which operatively interact with a lock to lock or unlock said lock.
6. A lock for operation by a key according to any one of claims 1 to 5, said lock including an interference means responsive to the interaction means of the key to. unlock or lock the lock.
7. A lock according to claim 6, wherein the interference means includes a blocking element that obstructs part of the lock so as to prevent the occurrence of a step that is necessary for the unlocking of the lock.
8. A lock according to claim 7, wherein the interference means comprises a relocker bar supported by an anvil, the anvil being responsive to the interaction means to raise and lower the relocker bar so that in, a locked position, the relocker bar obstructs sidebar grooves of the lock while, in an unlocked position, the relocker bar is clear of the sidebar grooves.
9. A lock according to any one of claims 6 to 8, further including tumblers responsive to teeth located on the key for moving the tumblers from a position where the tumblers prevent rotation of a plug of the lock relative to a shell surrounding said plug.
10. A lock and key combination including:
a) a key having two blades and an actuator, said actuator being aligned along a plane lying between said blades, said actuator having an operation means and an interaction means, said operation means being positioned and adapted to be forced against a face of the lock during lock insertion such that operatively, when the key is inserted into a lock by a user, a force is applied to the operation means as a result of the user inserting the key into the lock and the position of the interaction means is thereby altered; and
b) a lock for operation by the key including an interference means for locking a plug of the lock to a surrounding lock shell, said interference means being responsive to the alteration of position of the interaction means to permit unlocking of the lock.
11. A lock and key combination according to claim 10, wherein the alteration of the position of the interaction means is achieved by the actuator being pivotable relative to the body of the key.
12. A lock and key combination according to claim 10, wherein the alteration of the position of the interaction means is achieved by the actuator being rotatable relative to the body of the key.
13. A lock and key combination according to any one of claims 10 to 12, wherein the key further includes additional coding features which operatively interact with a lock to lock or unlock said lock.
14. A lock and key combination according to any one of claims 10 to 13, wherein said lock includes an interference means responsive to the interaction means of the key to unlock or lock the lock.
15. A lock and key combination according to claim 14, wherein the interference means includes a blocking element that obstructs part of the lock so as to prevent the occurrence of a step that is necessary for the unlocking of the lock.
16. A lock and key combination according claims 15, wherein the interference means comprises a relocker bar supported by an anvil, the anvil being responsive to the interaction means to raise and lower the relocker bar so that in, a locked position, the relocker bar obstructs sidebar grooves of the lock while, in an unlocked position, the relocker bar is clear of the sidebar grooves.
17. A lock and key combination according to any one of claims 10 to 16, wherein said lock further includes tumblers responsive to teeth located on the key for moving the tumblers from a position where the tumblers prevent rotation of a plug of the lock relative to a shell surrounding said plug.
18. A key substantially as hereinbefore described and illustrated with reference to the accompanying drawings, excluding Figure 1.
19. A lock for operation by a key, said key including a moveable actuator having an operation means and an interaction means, said lock substantially as hereinbefore described and illustrated with reference to the accompanying drawings, excluding Figure 1.”
The proposed claims are as follows:
“1. A key having a key body, two blades and a unitary actuator member rotatably supported at the key body in between the two blades, said actuator member being aligned along a plane lying between said blades, said actuator member including an operating portion and an interaction portion, said operating portion being arranged and operatively adapted to be forced against a lock face during insertion of the key by a user into a corresponding lock, wherein said forcing causes rotation or pivoting of the actuator member thereby to alter the position of the interaction portion of the actuator member, said interaction portion thereby engaging a subsidiary locking and unlocking arrangement at said lock.
2. A key according to claim 1, wherein the interaction portion is arranged and operatively adapted such that, upon full insertion of the key into the corresponding lock, the interaction portion is positioned substantially within the lock.
3. A key according to claim 1 or 2, wherein the key further includes additional coding features which operatively interact with the lock to lock or unlock said lock.
4. A key substantially as hereinbefore described and illustrated with reference to the accompanying drawings, excluding Figure 1.”
THE S102 OPPOSITION
A. The Grounds of Opposition relied on by the Opponent are as follows:
1. Section 102(1)
As a result of proposed amendments the complete specification claims matter not in substance disclosed in the specification as filed.
2. Section 102(2)(a)
As a result of proposed amendments claims of the specification would not in substance fall within the scope of the claims of the specification before amendment.
3. Section 102(2)(b)
As a result of proposed amendments the complete specification would not comply with subsection 40 (3).
The Opponent reserves the right to contest any assertion that a proposed amendment is for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, the complete specification.
B. The Particulars relating to each Ground are as follows:
1.0 Section 102(1)
1.1 Claim: 1
Proposed Amendment:
“ a subsidiary locking and unlocking arrangement at said lock"
There is no disclosure in the specification as filed of a subsidiary locking and unlocking arrangement. The specification as filed only refers to the locking and unlocking mechanism.
1.2 Claim: 1
Proposed Amendment:
"...wherein said forcing causes rotation or pivoting of the actuator member thereby to alter the position of the interaction portion of the actuator member, said interaction portion thereby engaging a subsidiary locking and unlocking arrangement at said lock". There is no disclosure in the specification as filed of the interaction portion engaging a component of the lock as a result of alteration of the position of the interaction portion.
2.0 Section 102(2)(a)
2.1 Claim 1:
Proposed Amendment
"…said interaction portion thereby engaging a subsidiary locking and unlocking arrangement at said lock".
Unamended
"...the alteration of the position of the interaction means being part of the locking or unlocking action of said lock".
Whereas the present claim requires alteration to be part of at least the unlocking action, the proposed claim requires the altered interaction portion to engage a subsidiary unlocking arrangement at said lock. There is no requirement for the alteration to be part of the unlocking action. Instead the altered interaction portion is only required to engage an arrangement of the lock. Engaging a subsidiary locking arrangement of a lock may not necessarily result in unlocking of the lock.
3.0 Section 102(2)(b): The claims of the application are not fairly based on the matter described in the specification because:
3.1: Claim 1:
Proposed Amendment:
"...a subsidiary locking and unlocking arrangement."
The body of the specification refers to a locking mechanism. The body of the specification fails to provide a real and reasonably clear disclosure of a primary and subsidiary, locking or unlocking arrangement.
3.2 Claim 1:
Proposed Amendment:
"…wherein said forcing causes rotation or pivoting of the actuator member thereby to alter the position of the interaction portion of the actuator member, said interaction portion thereby engaging a subsidiary locking and unlocking arrangement at said lock".
The body of the specification fails to provide a real and reasonably clear disclosure of the interaction portion engaging a component of the lock as a result of alteration of the position of the interaction portion.
THE LAW
The law in regard to dismissal is well known. It is accepted from cases such as General Steel Industries Inc. v Commissioner for Railways (1964) 112 CLR 125 and L'air Liquide v The Commonwealth Industrial Gases Limited (1992) 24 IPR 77 that a notice of opposition will be dismissed where it is obviously untenable and cannot possibly succeed. The onus falls on the applicant to show the opposition is clearly untenable: Stack v Commissioner of Patents 43 IPR 663. This includes cases such as Benitec Australia Ltd v The Carnegie Institute of Washington and The University of Massachusetts [2005] APO 49 (3 November 2005) in which the delegate found that she was unable to identify any plausible argument supporting the opponent’s allegations and that the opponent had failed to provide any substantive reasoning for its objections.
It is also established that the Commissioner may dismiss a particular ground of opposition where it is unsupported by any of the particulars in the statement of particulars: See L'Air Liquide (supra). But the Commissioner should not dismiss a ground of opposition merely because it is not supported by some of the particulars: See Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd 24 IPR 368; (1992) AIPC 90-912.
DECISION
A number of issues, including whether some of the matters before me were in the nature of a re-hearing, were presented.
Re-hearing argument
In relation to the re-hearing matter, it is well established that a ground of opposition can be dismissed if it only involves a reconsideration of matters already decided.
“To dismiss a ground of opposition, on the basis that the opposition would be a rehearing of a previous matter, can only be done where the matter has previously been decided and the issue pressed in the opposition can only involve a reconsideration of the decided matter: ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd [1997] APO 70 (24 December 1997) and Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd [2002] APO 11 (27 March 2002).”
While the previous action between the parties dealt with an extension of time, paragraphs 7 and 8 of the decision on Australian Lock Company Pty Ltd v Lockwood Security Products Pty Ltd [2005] APO 12 (18 March 2005) dealt with issues of allowability of the then proposed amendments. The relevant sections from the delegate’s decision are as follows:
“The particulars set out as 3.1(a), (b) and (c), as well as particular 3.3(a) are said to represent those problems raised under section 40 in the substantive opposition that the amendments have not addressed (at least in Lockwood’s opinion). However, while it is appropriate to object to the allowability of an amendment under section 102(2)(b) by reason of specification not complying with the requirements of subsection 40(2) or (3), this is only if the specification, as a result of the amendment, does not meet the requirements of subsection 40(2) or (3). The fact that these particulars were raised by Lockwood in the substantive opposition clearly indicates that the non-compliance with section 40(2) or (3), if any, that exists in the specification did not arise as a result of the amendment. As such, these particulars cannot possibly be used in any meaningful way to dispute the allowability of the amendments.
It would also appear to me that the ground raised in section 1 of the Statement of Grounds and Particulars is also of little merit. Lockwood contends that there is no disclosure of a subsidiary/additional locking and unlocking mechanism because the “specification as filed only refers to the locking and unlocking mechanism”. I grant Lockwood the point that the words “subsidiary” or “additional” are never used in the specification. However, the specification clearly shows a “main” locking mechanism (pin tumblers 7 having holes 10 which align with the pins 13 of the sidebars 12 as the pin tumblers cooperate with the teeth 16 of the key), and a “secondary” locking/unlocking mechanism (see, for example figures 5 and 9). For similar reasons particular 3.3(b) would also appear to add little. Furthermore, the clarity problems raised in particular 3.2 would appear to be trivial.”
Similar issues seem to arise with the current set of proposed amendments. ALC submitted that a final determination had been made and that ASSA was merely re-opening a previous decision of the delegate which, in its view, was impermissible. ASSA countered that the decision on allowability was not the main focus of the decision and it cannot be considered final as issues on allowability were not fully argued. ASSA contended that there is a real issue of claim construction between the parties and that settlement of this issue may resolve the opposition proceedings.
While a number of observations were made, in my view, the matters had not been fully argued as the previous decision was not a final determination on s104 matters. Consequently, I will consider the proposed amendments.
Particulars 1.1 and 3.1
These particulars relate to the expression “subsidiary locking and unlocking arrangement”. I have the advantage of reading the delegate’s decision as noted above and find myself in agreement with his reasoning. The term “subsidiary” in the context of the claims and specification (although not used in the specification as accepted) merely indicates a “secondary” locking mechanism. In addition while there is no use of the term “secondary” in the description as accepted, the concept is implied in the construction of the claims. As such it could be said that the issue raised by the opponent can also be raised in the main opposition and as such the issue does not arise as a result of the proposed amendments. Consequently particulars 1.1 and 3.1 have no chance of success.
Particulars 1.2 and 3.2
These particulars relate to the engagement of the interaction portion with the subsidiary locking and unlocking arrangement. The patent applicant, ALC, submitted that these features were clearly displayed in the specification and that these particulars had no chance of success.
Claim 1, as accepted, defines an “operation means” and an “interaction means”. Claim 1, as proposed to be amended, defines an “operation portion” and an “interaction portion”. In both specifications the position of the interaction means / interaction portion is altered. I cannot see any significant issue with the change in words from the accepted form to the proposed form. I am of the view that these particulars have no chance of success.
Particular 2.1
At the hearing, there was discussion on the claim construction argued by ASSA. From discussions at the hearing this seems to be the main point of contention. ALC submitted that ASSA’s construction was clearly an absurd construction as it would imply that the key would not operate in unlocking the lock. At the hearing, ASSA expanded upon its construction and pointed out that the subsidiary locking arrangement may not result in a locking / unlocking arrangement as it may merely engage the subsidiary locking and unlocking means. ASSA gave examples at the hearing in which the engagement merely activates an electrical circuit that would be merely indicative of the key being fully inserted in the lock. ASSA’s submission is that the engagement which in the claims as accepted related to “being part of the locking or unlocking action of the lock” is, as a result of the amendment, a mere engagement of the subsidiary locking or unlocking arrangement of the lock. Clearly, in ASSA’s view, the mere engagement of the interaction portion does not necessarily lead to locking or unlocking of the lock.

It could be argued that ASSA have strained the language of the claim and that as a matter of construction the features should be given a construction towards validity. In this case it is difficult to accept the construction that the engagement was of no effect in locking or unlocking of the lock and that its function is undefined.
However, I do not believe that I have to decide this issue. In the claims as accepted, the alteration of the interaction means was part of the locking and unlocking action of the lock. In the claims as proposed to be amended, the interaction portion engages a subsidiary locking and unlocking arrangement. It is difficult to conceive that the issue raised by ASSA is not also an issue with the claims as accepted. In my view this type of argument is more appropriate to argue at the substantive hearing rather than at a S104 opposition where the grounds of opposition are limited.
Consequently, in my view as the issue does not arise as a result of the proposed amendments, this particular has no chance of success.
CONCLUSION
I have found that none of the particulars support the respective grounds of opposition. Consequently, the grounds of opposition are dismissed in their entirety and the application for dismissal of the opposition to the S104 amendment has been successful. Subject to any appeal, it follows that leave to amend is granted and that the time for completion of service of evidence-in-support to the substantive opposition would expire 3 months from the date of this decision.
COSTS
Costs normally follow the event. As I see no reason for departing from this course, costs as per Schedule 7 are awarded against the opponent ASSA ABLOY Australia Limited.
G.M. Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark patent & trademark attorneys, Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne