Australian Lock Company Pty Ltd v Assa Obloy Australia Pty Ltd
[2007] APO 18
•1 June 2007
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.782779 in the name of Australian Lock Company Pty Ltd
Title: Moveable Element Key and Key Handle and Lock
Action: Opposition under Section 59 of the Patents Act by Assa Obloy Australia Pty Ltd
Decision: Issued 1 June 2007.
Abstract
The invention relates to a key handle with a movable actuator that interacts in some manner with the mechanism of the lock to thereby assist in the locking and/or unlocking of the lock.
The opponent opposed the application on the grounds of novelty, inventive step, clarity and fair basis.
The citation does not contain clear and unmistakeable directions to produce a handle per se as claimed. There was also no evidence presented that it was known to produce or supply for Bilock ™ a key handle independently of the key blade. The opposition is therefore unsuccessful and costs are awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 782779 by Australian Lock Company Pty Ltd and opposition under section 59 by Assa Obloy Australia Pty Ltd
BACKGROUND
Patent application 782779 (38242/02) was filed on 8 May 2002 by Australian Lock Company Pty Ltd, and is a divisional of Patent application 753733 (58399/99) filed on 3 September 1999, which claims priority from provisional patent application PP5724 filed on 4 September 1998. The application was examined and advertised as accepted on 25 August 2005.
Assa Obloy Australia Pty Ltd filed a Notice of Opposition on 25 November 2005. A Statement of Grounds and Particulars was filed on 27 February 2006. The service of evidence in support was completed on 26 September 2006. On 27 December 2006 the applicant advised that they would not be serving evidence in answer.
A hearing to deal with the substantive opposition was held in Canberra on 19 April 2007. The applicant was represented by Mr Peter Franke and Mr Simon Ellis, Patent Attorneys from Watermark, Sydney. The opponent was represented by Mr Brad Fitzpatrick, Patent Attorney from Phillips Ormonde and Fitzpatrick.
GROUNDS OF OPPOSITION
Assa Abloy has opposed the application on the following grounds:
- The invention as claimed in any claim of the patent application:
a) is not novel when compared with the prior art base as it existed before the priority date of the claims; and
b) does not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims;
- The specification does not comply with subsection 40(2) or 40(3).
EVIDENCE
Evidence in support of the opposition filed by Assa Abloy consists of:
- A statutory declaration made by Brad Fitzpatrick on 29 May 2006;
- A statutory declaration made by Graham Jeffrey Freestone on 28 August 2006;
- A further statutory declaration made by Graham Jeffrey Freestone on 25 September 2006.
Mr Freestone is a retired lock designer with over four decades experience as a design draftsman and design co-ordinator with Lockwood Security Products Pty Ltd a company which is presently owned by the opponent Assa Abloy.
The applicant did not file any evidence in answer and hence there is no evidence in reply from the opponent.
SPECIFICATION
The specification of the present application indicates that the invention relates to an improved key, key handle and lock.
The section on background art in the specification states that prior art sidebar locks, like the Bilock ™ device manufactured and sold by the applicant, afford a high degree of security, but it would be desirable if the resistance of the lock to unauthorised unlocking was increased even further. An object of the invention is therefore to provide any one of a high security key, a handle for such a key and a complementary lock which is operated by such a key.
A section on the summary of the invention follows and this indicates that the claimed invention of the present divisional application is directed to the key handle aspect only and includes a consistory statement which is identical to claim 1.
The specification then describes preferred embodiments of a key, key handle and a complementary lock in language which appears to be a repeat of the preferred embodiments of the parent application.
It is clear from the specification that the invention resides in the provision of a moveable actuator on the key handle, the actuator having an operation means and an interaction means. When the key is inserted into a complementary lock the operation means is forced against the face of the lock and this causes the actuator to rotate which in turn alters the position of the interaction means. The interaction means interacts in some manner with the mechanism of the lock to thereby assist in the locking and/or unlocking of the lock.
The preferred embodiments described include an embodiment which is illustrated in figure 3D, wherein the invention is embodied in the key handle portion per se without the key blade attached to it. The movable actuator is provided and supported entirely on the key handle with the intention that a locksmith or end user will subsequently need to attach only the blade portion which can be of conventional form. This embodiment would therefore appear to be the disclosure of the preferred embodiment corresponding to the summary of the invention.
The specification ends with ten claims as follows:
1. A key handle, including:
at least one rotatable actuator movable relative to at least one key blade, said actuator being integrally formed and having an operation means and an interaction means, said key handle being adapted for said at least one key blade to be attached thereto to form a key;
wherein said actuator is positioned alongside said at least one key blade and said actuator having an axis of rotation generally normal to the length of said key blade;
wherein said operation means is a part of said actuator operatively arranged to be forced against a face of a lock during lock insertion of said key;
wherein when said at least one key blade is inserted into a suitable lock, the force applied to said operation means by the face of the lock results in the rotation of said actuator, whereby the position of said interaction means is altered;
wherein operatively the alteration of the position of said interaction means is a subsidiary part of at least one of locking and unlocking action of said lock.
2. The key handle according to claim 1, wherein said key handle is operatively adapted such that the force applied to said operation means is supplied by a manual force which a user exerts in inserting said key into the lock.
3. The key handle according to claim 1 or 2, wherein said interaction means is arranged and operatively adapted such that, upon said key insertion into the lock, said interaction means is substantially positioned within the lock.
4. The key handle according to any one of the preceding claims, wherein said interaction means is a protrusion from said actuator.
5. The key handle according to any one of the preceding claims, wherein said key handle being adapted for at least two said key blades to be attached thereto to form said key;
wherein said actuator is positioned between said at least two key blades.
6. The key handle according to any one of the preceding claims, wherein said at least one key blade further includes teeth for operation of lock tumblers.
7. The key handle according to any one of the preceding claims, wherein said key handle further includes a biasing means for biasing said actuator into a first position when no force is applied to said operation means.
8. The key handle according to claim 7, wherein, in said first position, at least a portion of said operation means is arranged to abut a face of the lock upon lock insertion.
9. The key handle according to any one of the preceding claims, further including at least one part that forms a handle body graspable by a user, said at least one key blade being adapted to fit into said handle body.
10. A key handle substantially as hereinbefore described and illustrated with reference to the accompanying drawings, excluding Figure 1.CLARITY
Although the opponent has raised issues relating to lack of clarity in the claims, they did not argue these issues at the hearing. I also note that their expert witness Mr Freestone in his evidence had no difficulty in resolving the minor clarity issues in the claims and I am in agreement. I therefore find that the opposition does not succeed on this ground.
FAIR BASIS
In their statement of grounds and particulars and also at the hearing, the opponent submitted that the claims lack fair basis because they are not limited by the feature that the motion of the interaction means when its position is altered is in a direction which is transverse to the longitudinal axis of the key. In support they referred to page 8, lines 9-19 of the description where it asserts that it may not be as easy for the unauthorised user to replicate a motion that is activated by a force acting transverse or perpendicular to the longitudinal axis and that this feature is the only feature that relates to the object of increasing the resistance of the lock to unauthorised picking.
I note that the specification under the heading “Summary of the invention” includes a consistory statement which is identical to the wording of claim 1.
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58, the High Court said that the words "fairly based" in section 40(3) refer to a relationship between what is claimed in the claims and what is described in the body of the specification. The court emphasised that in assessing whether the invention claimed is fairly based, it is necessary to take into account the construction of the specification as a whole. As stated by their Honours at [99]:
"... the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification."
The High Court affirmed the formulation of the question of whether a claim is fairly based as stated by Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd 180 CLR 236 at 240. Thus, the question is whether the claim, as expressed, travels beyond the matter disclosed in the specification.
The applicant submitted at the hearing that reference in page 8 is a preferred embodiment and there is no requirement for the claims to be restricted to such a preferred embodiment. They argued that there is a real and reasonably clear disclosure of what is claimed and that the claims are therefore fairly based.
I agree. The description at page 8, lines 4-8 teaches that the purpose of the interaction means is to provide a moving element that can interact, in some manner, with the mechanism of the lock. This is fully consistent with the definition in claim 1. It is only when it goes on to describe a preferred embodiment in figures 2 and 3A that it describes the movement of the interaction means as being transverse to the longitudinal axis and how such a transverse motion is difficult to replicate. I find that the claims do not travel beyond the matter disclosed in the specification and therefore they are fairly based on the specification,
NOVELTY
The law on Novelty is well established.
"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 invention would if the patent were valid, constitute an infringement." (Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228).
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
Although the statement of grounds and particulars lists 5 patent specifications under the ground of Novelty, at the hearing the opponent agreed that only one of them, namely US 3486355 (exhibit BF-1), anticipates claim 1 and all of their submissions concentrated on this citation.
The declaration of Mr Freestone also indicates that BF-1 is the closest prior art and that exhibits BF-2 to BF-6 only disclose most but not all of the features of claim 1. I have briefly considered exhibits BF-2 to BF-6 and agree that they are not relevant to the considerations of novelty or inventive step. I will therefore limit my decision to exhibit BF-1.
Exhibit BF-1 (US 3486355)
This document relates to a safety key and lock combination which is adapted to constructions which require a particular manipulation before the unlocking process is complete which manipulation is not immediately apparent to an unauthorised user.
It clearly discloses in one embodiment of the invention which is best illustrated in figures 3 and 5, a key 10 having a blade portion 12 and a handle 14. A lever 110 which corresponds to the actuator of the claimed invention is rotatably mounted on the handle 14 about an axis which is generally normal to the length of said key blade. One end of the lever has a lobe 136 which is adapted to strike the face of the lock when the key is inserted into the lock and thereby rotate the lever. The lobe therefore constitutes the operation means of the actuator. The opposite end of the lever constitutes the interaction means and is affixed to a cam means 40 which is operatively associated with an additional tumbler 90’ provided in the lock. On inserting the key into the lock, the lobe 136 strikes the face of the lock and rotates the lever. This rotation alters the position of the interaction means which in turn moves the cam means to cause the additional tumbler to be raised to its unlocked position. The alteration of the position of the interaction means therefore forms a subsidiary part of at least one of locking and unlocking action of said lock as required in claim 1.
At the hearing the applicant submitted that interaction means is constituted not by the opposite end of the lever alone, but rather by the combination of the opposite end and the cam means as it is the cam means which interacts with the additional tumbler and that this combination is not integrally formed and therefore fails to disclose this feature of claim 1.
The opponent argued that there is no requirement in claim 1 that the interaction means should directly interact with the lock mechanism and that the movement of the opposite end of the lever is a subsidiary part of at least one of locking and unlocking action of said lock, albeit through the cam means. The lever is clearly integrally formed and therefore satisfies this requirement of claim 1.
I agree that the definition “the alteration of the position of said interaction means is a subsidiary part of at least one of locking and unlocking action of said lock” is broad enough to encompass the opposite end of the lever alone constituting the interaction means.
The applicant also submitted that even if I agree with the opponent’s interpretation, then the lever is not positioned alongside the key blade as further required by claim 1. The opponent rebutted this by pointing out that this definition only requires that at least a portion of the actuator be alongside the blade and that the lobe 136 is clearly alongside the blade and therefore satisfies this requirement in claim 1.
I note that while claim 1 defines the actuator as being alongside the blade, when I look at the applicant’s specification all the embodiments show only a portion of the actuator, namely the interaction means, being alongside the blade, with the rest of the actuator being within the handle. I therefore agree with the opponent that this requirement of claim 1 would be satisfied if at least a portion of the actuator is alongside the blade and this is clearly the case with the lobe portion 136 of the lever in BF-1.
Based on the above construction of BF-1, it would appear that this citation discloses all of the features of claim 1. However in their submissions at the hearing the applicant strongly argued that there is a fundamental difference between the claimed invention and the citation in that the claimed invention is directed to a key handle per se whereas the citation is directed to a key in its entirety. They referred to their specification at page 10, lines 7-17 where the embodiment which corresponds to the invention of claim 1 is described. They argued that this embodiment clearly teaches a key handle per se and all the features of the invention may be found only on or supported by the handle portion. The handle can therefore be made and sold separately with the intention that the user, such as a locksmith or end user, will subsequently attach a conventional blade portion.
The opponent countered this saying that although the citation teaches an entire key, the key still has a handle portion which has all of the features of the claimed invention and that applying the reverse infringement test, the citation clearly anticipates claim 1.
Whilst the citation may disclose all of the features of the claimed invention, that is not sufficient to deprive the claim of novelty.
"To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457).
I therefore need to determine whether the citation provides clear and unmistakeable directions to produce a handle as claimed.
As I have discussed earlier the key taught by the citation clearly has a handle on which the rotatable lever is mounted. The lever has an operating means and an interaction means and the interaction means assists in the locking and unlocking through the intermediary of the cam means. However this cam means has a tip end 44 which appears to be non-releasably affixed to side plates of the lever and also includes an elongated rod with a shank 46 that extends through recesses 48 and guide bore 52 provided in the key blade. This construction would therefore appear to require that the key blade and handle be manufactured together. There is nothing in the disclosure of the citation to suggest or hint that it is possible to produce the handle per se with the blade being attached at a later stage.
In comparison the handle of the claimed invention has the interaction means of the actuator directly engageable with a corresponding tumbler in the lock and is therefore able to be manufactured and supplied independently of the key blade.
I am therefore not satisfied that the citation contains clear and unmistakeable directions to produce a handle per se as claimed. I therefore find that claim 1 and omnibus claim 10 are novel. Claims 2-9 are dependent on claim 1 and are also therefore novel.
INVENTIVE STEP
Under section 7(2) an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of common general knowledge within Australia either considered alone or together with information made publicly available anywhere in the world. Section 7(3) restricts the information to that which could reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the relevant art.
Inventive step may be assessed having regard to the reformulated "Cripps question" set out in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 at [53]:
"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce the [desired result]?"
The opponent’s submissions on lack of inventive step was based on the argument that, as asserted by their expert witness Mr Freestone in his first declaration, the person skilled in the art (PSA) would have easily arrived at the claimed invention by incorporating the teachings of BF-1 into Bilock ™. They argued that the citation is a document which the PSA would have ascertained, understood and regarded as relevant and that Bilock ™ is common general knowledge (CGK) in the art.
The applicant on the other hand argued that the fact that document BF-1 was not cited in the examination reports of any patent office indicates that a PSA would not have ascertained, understood and regarded this documents as relevant. I do not find this argument persuasive. The citation is clearly directed to a similar problem as the claimed invention i.e to increase the resistance of the lock to unauthorised unlocking by the provision of a high security key. I also note that this document is listed in the front page of the equivalent granted US patent under references cited. I am therefore satisfied that the document would have been ascertained, understood and regarded as relevant by the PSA.
As I have discussed earlier under Novelty, while the citation discloses the feature of a rotatable actuator with an operating means and an interaction means, it does not contain clear and unmistakeable directions to produce a key handle per se as claimed. The question that I need to answer in order to establish that claim 1 lacks an inventive step, is if Bilock ™ was CGK as asserted by the opponent, would it be obvious to combine this CGK with the disclosure of the BF-1 and would this combination then inevitably lead to the claimed invention.
While Mr Freestone states in his declaration that the key of Bilock ™ could be adapted to accommodate an actuator element such as the lever 110 from BF-1, neither his evidence or any other submissions put forth by the opponent indicates that it was known to produce or supply for Bilock ™ a key handle independently of the key blade. The drawing of Bilock ™ presented as exhibit GJF-2 in Mr Freestone’s declaration shows only a typical integral key with a key handle and a key blade. Hence even if it was established that Bilock ™ was CGK and it would have been obvious to combine the teachings of BF-1 and Bilock ™ I have no evidence to conclude that a PSA would have produced a key handle per se as required by claim 1.
Therefore the opponent has not established that any of the claims lack an inventive step.
COSTS
In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that approach on this occasion. I therefore award costs against the opponent Assa Obloy.
R Subbarayan
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Watermark, Sydney
Patent attorneys for the opponent : Phillips Ormonde and Fitzpatrick
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