Bradley Mark Veivers v John Charles Pepperell and Norman Cecil Waterman
[2003] APO 21
•8 May 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 721941 in the name of Bradley Mark Veivers
Title: Improvements to new and existing security screens and doors
Action: Opposition under section 59 of the Patents Act 1990 by John Charles Pepperell and Norman Cecil Waterman
Decision: Issued
Abstract
The claimed invention as amended is directed to a security screen or door having woven stainless steel security screen mesh retained between seat and retainer clamping sections held under compression within a channel section of the screen or door frame.
The opposition is dismissed following amendment of the patent specification. The amended specification describes and defines the invention clearly, with the amended claims being fairly based. The combination of features defined by the claims is not disclosed by the known art, nor is the combination obvious from the known art.
Costs up to advertisement of allowance of the amendments were awarded against the patent applicant. Subsequent costs were awarded against the opponents.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 721941 in the name of BRADLEY MARK VEIVERS and opposition under section 59 by JOHN CHARLES PEPPERELL and NORMAN CECIL WATERMAN
BACKGROUND
Patent Application No. 721941 in the name of Bradley Mark Veivers was filed on 30 July 1999 without any earlier priority claim and was advertised accepted on 20 July 2000.
John Charles Pepperell and Norman Cecil Waterman filed notice of opposition to the grant of the patent on 19 October 2000. The Statement of Grounds and Particulars was served on 17 January 2001.
Evidence-in-support was completed on 20 July 2001. Following an extension of time in which to serve evidence-in-answer, the patent applicant filed proposed amendments rather than filing evidence-in-answer.
With the agreement of both parties, the Hearing was deferred to allow finalisation of the proposed amendments. The Hearing was subsequently set for 20 February 2003 in Canberra. Neither party appeared at the Hearing, both relying on written submissions. Mr Trevor Dredge, patent attorney of Intellpro, Brisbane, represented the applicant. Dr. Mark Horsburgh, patent attorney of Fisher Adams Kelly, Brisbane, represented the opponents.
THE SPECIFICATION
The claimed invention as amended is directed to a security screen or door having woven stainless steel security screen mesh retained between seat and retainer clamping sections held under compression within a channel section of the screen or door frame.
The broad description of the invention as filed was disjointed, obscure and confusing. However, the invention could be clearly interpreted from the broad description of the invention read in the light of the detailed description of the best method of performing the invention known to the applicant.
The accepted and opposed single claim of 721941 was as follows:
“1. A security screen or door including:
a rigid frame comprising elongate frame members, wherein each frame member comprising a rectangular hollow section and channel section abutting said hollow section, a corner stake engaging respective frame members in each corner.
An L shaped seat section inserted into said channel section, a woven stainless steel security mesh with perpendicular bent edges on the periphery of the screen mesh that is inserted onto the seat section with a retainer section being pressed into place on top of the security mesh and abutting the inside perpendicular bent edge of said screen thereby securing the security mesh inside the channel of the outer frame with pop rivets or fasteners being used to effectively hold the retainer to the frame."
The amended claims of 721941 under consideration in these proceedings are as follows:
“1. A security screen or door including:
a rigid outer frame comprising elongate frame members connected together by corner stakes forming corners, wherein each frame member comprises a rectangular hollow section and a rigid channel section abutting said hollow section so as to extend parallel therewith, an L shaped seat section inserted into said channel section, a woven stainless steel security screen mesh with perpendicular bent edges on the periphery of the stainless steel security screen mesh that is inserted onto the seat section with a retainer section being pressed into place on top of the stainless steel security security screen mesh and abutting the inside perpendicular bent edge of said stainless steel security screen mesh thereby securing the stainless steel security screen mesh inside the channel section of the outer frame with fasteners being used to effectively hold the retainer section to the channel section of the outer frame, the sum of the dimensions of the seat section, the mesh and the retainer section measured along an imaginary line before insertion into the channel section being marginally greater than the width of the channel section measured along the same imaginary line after insertion, the imaginary line extending perpendicularly across the width of the channel after insertion so that the seat section, the mesh and the retainer section are retained in the channel section under compression.
2.A security screen or door according to claim 1 wherein the L shaped seat section and the retainer section are both made from compressible material."
STATEMENT OF GROUNDS AND PARTICULARS
The grounds under ss. 59(b) and (c) in support of the opposition are that:
(I)The invention as claimed in claim 1 is not a patentable invention because it does not comply with s. 18(1)(b)(i) – not novel in the light of multiple patent documents and prior use.
(II)The invention as claimed in claim 1 is not a patentable invention because it does not comply with s. 18(1)(b)(ii) – no inventive step in the light of common general knowledge in the form of, individually and in combination, the multiple patent documents of (I) and other adduced evidence.
(III)The specification does not comply with ss. 40(2)(a) and (3)
–the description is insufficient in multiple respects for the invention to be carried out
–the claim is not clear in multiple respects
–the claim is not fairly based on the specification because it does not include multiple essential features.
EVIDENCE
10. The evidence in support of the opposition was completed following a 3 month extension of time and, in summary, comprises
(a)a declaration by John Charles Pepperell that
· claim 1 lacks an inventive step in the light of product sample Exhibit JCP1 in combination with common general knowledge exemplified by Australian Patent Application 694515
· claim 1 lacks an inventive step in the light of each of product samples Exhibits JCP2 and JCP3
· claim 1 lacks an inventive step in the light of Australian Patent Application 692136 and associated promotional material at Exhibit JCP4
· claim 1 lacks an inventive step in the light of each of product samples Exhibits JCP5 and JCP6 in combination with common general knowledge
· the Veiver’s product sample Exhibit JCP7 supports the L shaped seat of the invention not being an essential feature.
(b)a declaration by Mark Alexander Horsburgh that MAH1 to MAH10 are declarations and exhibits filed in relation to proceedings concerning Australian Patent numbers 667181, 667182 and 694515 and are relevant to the present proceedings, with
· MAH1 being a declaration, with Exhibits, by John Charles Pepperell giving an account of the development of door and window screens with stainless steel mesh for security and insect screening
· MAH2 being a declaration by Norman Cecil Waterman giving an account similar to that of MAH1
· MAH3 being a declaration, with Exhibits, by James Mark Reid giving an account similar to that of MAH1 and MAH2 and of market reaction to the Pepperell and Waterman product
· MAH4 being a declaration, with Exhibits, by Steven John Brabek
· MAH5 being a declaration by Peter Alexander Bouma
· MAH6 being a declaration by Michael Martin Karl Siwek
· MAH7 being a declaration by John Charles Pepperell
· MAH8 being a declaration by Peter Trainer
· MAH9 being a declaration by Steven John Brabek
· MAH10 being a declaration by Peter Alexander Bouma
(c)a declaration, with Exhibits, by Peter Trainer that Australian Patent Application number 721941 lacks an inventive step.
11. Copies of the patent documents referred to in the Statement of Grounds and Particulars were not provided as part of Evidence in Support of the opposition.
12. Both parties relied on written submissions rather than appearing at the hearing.
13. In summary, Dr. Horsburgh, for the opponent, has submitted
(a)that the Evidence in Support is uncontested and hence, is to be accepted
(b)a request to amend the Statement of Grounds and Particulars, as necessary, to refer to the (amended) claims rather than the accepted claim 1
(c)that the L shaped seat section is an inessential element of the claimed invention based on the patent specification, the declarations by Pepperell and Trainer and the product being sold by Bradley Mark Veivers not including a seat section at all
(d)that the claimed invention is not novel by prior use by Brian Bond of Bond’s Securities in Perth
(e)that the claimed invention is prior published by each of Australian patent numbers 655152, 667181, 667182 and 694515
(f)that the claimed invention, including claim 2 through redundancy, lacks an inventive step because the features claimed are common general knowledge as evidenced by the Pepperell and Waterman product, the products of Exhibits JCP01 to JCP 05 and the declaration by Peter Trainer as a non-inventor person skilled in the art
(g)that, following amendment of the specification, the opponent does not further press the s.40(2)(a) and s.40(3) clarity matters
(h)that, following amendment of the specification, the claims are not fairly based as required by s.40(3) by not including the features of ‘a framed section that has a inside slot or extruded section measuring 14.5mm deep by 7.5mm width’ and ‘the retainer compresses the mesh against the back perpendicular edge of the seat as well as in the horizontal plane’, and
that the opponent seeks costs, irrespective of the Delegate’s decision because the specification and claims have been amended as a result of the opposition.
14. In summary, Mr. Dredge, for the applicant, has submitted
(a)that the patent documents referred in the Statement of Grounds and Particulars are not in evidence, copies not having been provided, but that they are necessarily relevant for subsequent ‘bar to sealing’ considerations
(b)that much of the Statement of Grounds has not been particularised, is not supported by adduced evidence or is not clear and that amendment to redress these matters would unduly prejudice the applicant
(c)that the Exhibits of the Mark Horsburg declaration generally extol the virtues of the Pepperell and Waterman invention, do not raise any issues for the present opposition but include some matter pertinent to ‘bar to sealing’ considerations
(d)that the evidence of prior use is uncorroborated and is in a form that cannot be readily contradicted by the applicant, contrary to relevant legal precedent
(e)that the submissions will nevertheless try to foreshadow ‘bar to sealing’ considerations
(f)that the claimed invention is a combination, with the L shaped seat section being an essential feature of the invention based on the specification and relevant legal precedent and with the fasteners holding the retainer section to the channel and not providing a clamping function or retaining the mesh or L shaped seat section
(g)that the claimed invention involves an inventive step because the features of the claimed invention were not common general knowledge at the priority date because
-the relevant declarations are in respect of the claimed invention before amendment and are general statements not specific to the combination of features claimed
-the product samples are completely different combinations to that of the invention and do not provide a basis leading to the invention
-the opponent has failed to demonstrate as obvious the selection and rejection of known disclosures leading to the essential interaction of the claimed combination, as required by the relevant legal precedent, and
-Peter Trainer, being an engineer serving on Standards committees is far too qualified and does not satisfy the statutory test for being a non-inventive person skilled in the art
(h)that the specific dimensions of ‘14.5mm deep by 7.5mm width’ are not required for the claims to be fairly based because the person skilled in the art would not consider them restrictive and because of relevant legal precedent
that the action of the retainer to tension the mesh is not required for the claims to be fairly based because it is a feature of the preferred embodiment, and
(j)that costs should follow the event.
DECISION
15. This decision is in respect of the patent specification as amended.
16. In opposition proceedings before the Commissioner, the standard of proof required in reaching a conclusion on any issue is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holdings Ltd.’s Application [1979] RPC 523). As a tribunal, I am entitled to act on any material that is logically probative (T. A. Miller Ltd. v The Minister for Housing and Local Government and another [1968] 1 WLR 992). However, the onus rests with the opponents to clearly establish their case.
17. There are various procedural matters with regard to the Statement of Grounds and Particulars and the Evidence in Support that have been raised by one party or the other and are in contention. These matters could be resolved with additional consideration by the Commissioner and expense by both parties but relate to form rather than the substance of the opposition and proper grant of Letters Patent. Having considered all matters, I have concluded that there is no need to determine these procedural matters in determining the outcome of the opposition.
Section 40
18. Following amendment of the specification, there are no outstanding sufficiency or clarity issues with the description and claims raised by the opponents.
19. Dr. Horsburgh has submitted that the claims are not fairly based by not including the feature of ‘a framed section that has a inside slot or extruded section measuring 14.5mm deep by 7.5mm width’. Mr. Dredge has submitted that the specific dimensions of ‘14.5mm deep by 7.5mm width’ are not required for the claims to be fairly based because the person skilled in the art would not consider them restrictive and because the relevant legal precedent only requires that the claimed invention be generally described in the body of the specification.
20. I accept Mr. Dredge’s arguments based on Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] 11 IPR 289 and Van der Lely N.V. v Rushton’s Engineering Co. Ltd [1985] RPC 461 that the dimensions, per se, are not essential features of the invention.
21. However, while not further elaborated by Dr. Horsburgh, I note that the dimensions specified are not merely the dimensions for the preferred working of the invention. In practical effect, the dimensions qualify the ‘inside slot’, which appears in the claims as the ‘channel section’, to clarify the orientation of the slot/channel. When interpreted in the light of the commonplace extruded sections used in security screens and doors in the marketplace (consistent with the submitted evidence), the dimensions confirm that the depth of the slot/channel is in the direction of the plane defined by the outer frame, rather than being perpendicular to that plane. The claims do not specify the orientation of the channel and hence, include any orientation.
22. While not as straightforward a consideration, the same arguments based on Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] 11 IPR 289 and Van der Lely N.V. v Rushton’s Engineering Co. Ltd [1985] RPC 461 also determine that the orientation of the depth of the slot/channel being in the direction of the plane defined by the outer frame is also not an essential feature of the invention. There is a 'real and reasonably clear disclosure in the body of the specification' of what is claimed.
23. While the claims do not specify a particular orientation of the slot/channel, the slot/channel is claimed as part of a combination of functionally interacting features. In addition to the features of the claims having been generally described by the body of the specification, it is apparent from the evidence that a wide variety of means have been disclosed or used in the prior art for securing the mesh/screen to the outer frame including slots/channels of different orientations and many different securing/clamping mechanisms engaging the slot/channel. Consequently, as a matter of technical interpretation by the person skilled in the art and as demonstrated by the evidence, securing the mesh to the outer frame through the interaction of the coacting clamping elements, the mesh and the slot/channel is not necessarily dependent on the orientation of the slot/channel.
24. In this regard, the circumstances of the present application are not those of The Mullard Radio Valve Co. Ld. v Philco Radio and Television Corp. of Great Britain Ld., [1936] 53 RPC 323 where, at page 347, it was said
“The consideration which the patentee gives to the public disclosing his inventive idea entitles him in return to protection for an article which embodies his inventive idea but not for an article which, while capable of being used to carry his inventive idea into effect, is described in terms which cover things quite unrelated to his inventive idea, and which do not embody it at all."
25. Nor, in this regard, are the circumstances of the present application those referred to in AMP v Utilux, (1971) 45 ALJR 123 where, at page 131, it was said
“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."
26. Consequently, it cannot be concluded that the claims are not fairly based merely because the depth of the slot/channel is not defined as being in the direction of the plane defined by the outer frame.
27. Dr. Horsburgh has also submitted that the claims are not fairly based by not specifying that ‘the retainer compresses the mesh against the back perpendicular edge of the seat as well as in the horizontal plane’. The portion of the specification referred to in support of the submission is the best method of performing the invention known to the applicant, the provision of which is a statutory requirement. Technical interpretation of the specification by the person skilled in the art also does not require that this feature be considered essential to the base invention; that is, an essential element of the minimum set of features that provides the benefit of the inventive concept. It is clearly described as a preferred feature providing additional benefit.
28. Consequently, I conclude that the opponents have not established their case that the claims, as amended, are not fairly based.
Novelty
29. Dr. Horsburgh has submitted that the claimed invention is not novel in the light of prior use in the form of the Bond's Securities product at Exhibit JCP05. However, the claims as amended define combinations of functionally interacting integers which, it is apparent, are not all disclosed by Exhibit JCP05. Exhibit JCP05 does not disclose the L shaped seat section, perpendicular bent edges on the periphery of the mesh and the fasteners, but consequently, it also does not disclose the defined functional interaction of these integers with the other essential features of the defined combinations.
30. Dr. Horsburgh has also submitted that the claimed invention is not novel in the light of Pepperell and Waterman patents numbered 655152, 667181, 667182 and 694515, in particular common Figure 6. Once again, it is apparent that the cited patents do not disclose all integers of the claimed combinations nor their functional interrelationships, such as the L shaped seat section, the retainer section pressed into place on top of the mesh and abutting the inside perpendicular bent edge of the mesh and the compressive retention of the retainer section, mesh and seat section within the channel as defined.
31. Consequently, I conclude that the opponents have not established their case that the claims, as amended, are not novel.
Inventive Step
32. The Evidence in Support of the opposition includes declarations by John Charles Pepperell and Peter Trainer that the invention involves no inventive step in the light of various exhibits in association with features that are either well known in the art or are inessential, viz. the L shaped seat section.
33. In respect of these declarations, I note that
· the declarations were developed in the context of the broader claims as accepted, not the current amended claims
· the declared statements about the claimed invention and the cited art are general statements, not a detailed account of the combination of features of the present application, their functional interrelationship and how this different combination would be derived from the known art, including its common general knowledge, without a scintilla of invention
· John Charles Pepperell is expert in the art and, as one of the opponents, is inherently more susceptible to comment that may not be wholly independent or wholly that of a non-inventive person skilled in the art
· Peter Trainer is also expert in the art and hence, is inherently more susceptible to comment that may not be wholly that of a non-inventive person skilled in the art.
34. I also note that the claims as amended define combinations of functionally interacting integers including the L shaped seat section. The L shaped seat section is one of the coacting elements that compressively retain the mesh within the channel section. While its function as a seat for the mesh and retainer section can be performed, at least to some extent, by an appropriately shaped channel section, there are various inherent and defined functional advantages of the L shaped seat section in the context of the claimed combination that are not provided by the channel section acting as a seat section.
35. One of the functional advantages of the L shaped seat section inherent to its technical disclosure and relevant to the claimed combination is that the complementary seat and retainer sections can be more conveniently manufactured without close regard to the profile of the channel section, merely its width at the area of compressive retention. While there are other distinctive functional advantages, this inherent advantage is sufficient to demonstrate that the L shaped seat section is an essential feature of the claimed combination and not a mere and obvious mechanical equivalent.
36. The general test for determining lack of inventive step is whether the invention would have been obvious to a non-inventive person skilled in the art equipped with the common general knowledge in the art as at the priority date (The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd ( 1980-1981) 148 CLR 262 at 270). It was also stated in the Wellcome case, supra, at 286 that:
'The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.'
37. The Pepperell and Trainer declarations do not establish that the different combination claimed would be derived from the known art without the exercise of invention.
38. It is convenient to confirm this conclusion from a different perspective. I commented in paragraph 23 of this decision that it is apparent from the evidence that a wide variety of means have been disclosed or used in the prior art for securing the mesh/screen to the outer frame including slots/channels of different orientations and many different securing/clamping mechanisms engaging the slot/channel. This is strongly suggestive that, rather than any new combination of securing/clamping elements being an obvious selection of elements known in the art, it is more likely to be an alternative, and perhaps improved, solution to a technical problem in the art recognised as being a significant, and hence inventive, challenge.
39. Consequently, I conclude that the opponents have not established their case that the claims, as amended, lack an inventive step.
CONCLUSION
40. I have found that the opponents have not made out any of the grounds relied on in these proceedings against the amended specification, and I therefore dismiss the opposition against patent application 721941.
41. Accordingly, I direct that the application proceed to sealing after thirty (30) days from the date of this decision. If the Commissioner is served with a notice of appeal against this decision before that time, I direct that sealing not occur until the appeal has been decided or is discontinued.
COSTS
42. Following an extension of time in which to serve evidence-in-answer, the patent applicant filed proposed amendments to address various of the matters identified in the opponent's Statement of Grounds and Particulars. Consequently, costs up to advertisement of allowance of the amendments are awarded against the patent applicant, subsequent costs are awarded against the opponent.
Bill Major
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Intellpro, Brisbane
Patent attorneys for the opponent : Fisher Adams Kelly, Brisbane
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