Bragel International, Inc v Renee Qin - [2007] APO 25

.ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003249034 in the name of BRAGEL INTERNATIONAL, INC

Title: An Improved Backless, Strapless Bra

Action: Opposition under Section 59 of the Patents Act by RENEE QIN

Decision: Issued 6 August 2007.
Abstract

The opposition was found to be unsuccessful under the grounds of manner of manufacture, novelty and inventive step, but to succeed under the ground of non-compliance of the specification with section 40. However, in view of the somewhat unusual circumstances of the opposition, costs were awarded against the opponent.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2003249034 in the name of Bragel International, Inc and opposition under section 59 by Renee Qin

BACKGROUND

Patent application 2003249034 (the application) was filed on 11 July 2003 by Bragel International, Inc (Bragel) under the provisions of the Patent Cooperation Treaty claiming priority from US application 10/211,110 filed on 2 August 2002. The application was advertised accepted on 18 November 2004.
Renee Qin and Lifeglo Pty Ltd (Lifeglo) separately filed notices of opposition to the application on 18 February 2005 and statements of grounds and particulars on 18 May 2005.
The service of evidence in support was initially due for completion on 18 August 2005. Lifeglo served part evidence in support on 17 August 2005. Both opponents applied for three month extensions of the initial period for serving evidence in support which were unsuccessfully opposed by Bragel (see Bragel International Inc v Renee Qin and Lifeglo Pty Ltd [2005] APO 42). Ms Qin completed the service of her evidence in support on 11 November 2005. Lifeglo was granted four additional extensions of time during which it served part evidence in support on 17 May 2006 and 31 August 2006.
On 13 October 2006 Lifeglo withdrew its opposition to the application.
On 17 August 2006 Ms Qin filed a notice of intention to serve evidence in reply. Ms Qin was granted two extensions of time prior to completing the service of her evidence in reply on 9 February 2007.
The opposition by Ms Qin was heard by me in Canberra on 7 June 2007. Ms Qin was represented by Mr J G Adams of the patent attorney firm Fisher Adams Kelly, and Bragel was represented by Ms Nadia Odorico and Mr A J F Ward of the patent attorney firm Griffith Hack. Both parties appeared by telephone, and provided written submissions prior to the hearing.
THE SPECIFICATION
The specification filed in respect of the application indicates that the invention relates to an improved backless, strapless bra.
The specification explains that the demand for devices such as push-up bras for enhancing breast size and shape and which can also be worn with a full range of clothing including backless dresses and halter tops has led to the development of bras that are both backless and strapless. These backless, strapless bras have relied on the use of extension tabs which extend from the outer surface of the bra cups and include a disposable double-sided tape or other non-permanent adhesive to secure the bra to the skin of a user.
The specification states that the invention eliminates the need for extension tabs or the like by providing a backless, strapless bra having an interior surface with a pressure sensitive adhesive layer which allows the bra cups to be attached directly to the user’s skin.
The specification ends with seventeen claims which are in the following terms:
1. An improved backless, strapless bra comprising:
a pair of cups, wherein each bra cup comprises:
an interior surface, the interior surface facing towards a user’s breast, and an exterior surface facing opposite the interior surface, wherein substantially the entire interior surface comprises a pressure sensitive adhesive layer disposed thereon for adjoining the bra cup to the user’s breast;
a thermoplastic film material supporting the pressure sensitive adhesive layer;
an outer side facing towards the user’s armpit, and an inner side facing opposite the outer side, wherein the bra cup is secured to the user’s breast solely by the pressure sensitive adhesive layer; and
a connector adapted to adjoin the bra cups, wherein the connector is positioned between the inner sides of each of the bra cups.
1. The bra of claim 1 wherein the thermoplastic film material defines the interior surface.
1. The bra of claim 1 wherein an unwoven fabric material defines the interior surface.
1. The bra of claim 1 wherein a woven fabric material defines the interior surface.
1. The bra of claim 1 wherein a foam material defines the interior surface.
1. The bra of any one of claims 1 to 5 wherein the connector comprises a first portion attached to one of the bra cups and a second portion attached to the other of the bra cups, and the first portion and the second portion are adapted to cooperatively engage.
1. The bra of claim 6 wherein the first portion includes a clasp and the second portion includes a plurality of loops adapted to receive the clasp.
1. The bra of claim 6 or claim 7 wherein the first portion and the second portion are removably attached to the bra cups.
1. The bra of claim 6 wherein the first portion includes a strip having a plurality of minute hooks and the second portion includes a corresponding strip with a surface of uncut pile.
1. The bra of any one of claims 1 to 5 wherein the connector is a single unit adapted to engage the inner side portions of the bra cups.
1. The bra of any one of claims 1 to 10 wherein the pressure sensitive adhesive layer has an adhesion force to the interior surface of the bra cups that is greater than a cohesion force to the user’s skin.
1. The bra of claim 11 wherein the pressure sensitive adhesive layer is permanently grown to the interior surface of the bra cups.
1. The bra of any one of claims 1 to 12 further comprising a pair of pull-up devices, wherein each of the pull-up devices comprises a first portion adapted to adjoin to a top portion of the bra cups that is coupled to a second portion adapted to adjoin to the user’s skin, wherein the pull-up devices lift the bra cups and the user’s breasts upward.
1. The bra of claim 13 wherein the first portion of the pull-up devices is removably adjoined to the bra cups by a pressure-sensitive adhesive, and the second portion is removably adjoined to the user’s skin by a pressure-sensitive adhesive.
1. The bra of claim 13 wherein the first portion and the second portion of the pull-up devices are separable, such that the first portion and the second portion are designed to cooperatively engage and removably connect.
1. The bra of claim 15 wherein the first portion and the second portion of each of the pull-up devices comprises an attachment end and a connection end, wherein the attachment end of the first portion attaches to the bra cups and the attachment end of the second portion attaches to the user’s skin, and the connection ends of the first portion and the second portion are adapted to cooperatively engage each other.
1. An improved backless, strapless bra and method of using the backless, strapless bra substantially as herein described with reference to any one of the figures.
GROUNDS OF OPPOSITION
The statement of grounds and particulars sets out the following grounds of opposition:
- The invention so far as claimed in any one of the claims of the application:
a)is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;
b)is not novel when compared with the prior art base as it existed before the priority date of the claims; and
c)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 (3).
THE EVIDENCE
Evidence served by Lifeglo
Withdrawal of the Lifeglo opposition does not mean that the evidence Lifeglo has served is to be disregarded. The Commissioner has a duty to consider such evidence to determine whether a patent if sealed on the application would be clearly invalid on the face of that evidence (Tate v Haskins 53 CLR 594).
The consideration of the evidence served by Lifeglo will be undertaken separately from this decision in the context of a re-examination under section 97(1).
Evidence in support
The evidence in support of the opposition by Ms Qin consists of:
- A statutory declaration made by Ms Qin on 9 November 2005 together with exhibits RQ-1 to RQ-3; and
- A statutory declaration made by James Grant Adams on 12 September 2005 together with exhibits JGA-1 to JGA-3.
Ms Qin is the International Sales Manager of Trio Brothers Trading Pty Ltd (Trio), a position she has held since 2001.
Exhibit RQ-1 comprises a number of photographs of the packaging for a product known as the “Invisible Bra” which Ms Qin says is a backless, strapless bra imported by Trio before the priority date for distribution within Australia. Ms Qin further states that the Invisible Bra is identified by a range of product codes, and then draws attention to three tax invoices (exhibit RQ-3) respectively dated 30 June, 5 July and 1 August 2002 for the supply by Trio to Australian retailers of products described by these product codes. Product code TVB197B identified on the packaging shown in exhibit RQ-1 appears in the product description on all three tax invoices.
Exhibit RQ-2 is a copy of a tax invoice dated 2 June 2002 relating to the importation of a product simply described as “Silicone Bra”.
Mr Adams is Ms Qin’s legal representative in the opposition. The substance of his declaration is confined to a comparison of claims 1, 2, 3, 5, 6 and 10 with the disclosures of US patent specifications 5755611 and 6257951 (exhibits JGA-2 and JGA-3) on the basis of which he contends that these claims are not novel.
Evidence in answer
The evidence in answer from Bragel consists of:
- A statutory declaration made by David Chen on 27 July 2006 together with exhibits DC-1 to DC-11;
- A statutory declaration made by Wendi Kenya on 27 July 2006 together with exhibits WK-1 to WK-5; and
- A statutory declaration made by Nadia Maree Odorico on 11 August 2006.
Mr Chen is the President of Bragel, and is named as a co-inventor by the application.
As related by Mr Chen, on 3 June 2002 Bragel contracted Wendi Kenya, a professional fashion model, to pose for photographs modelling the bra which is the subject of the invention for the purposes of packaging graphics, brochures and advertisements. The copyright in the photographs was subsequently assigned to Bragel (exhibit DC-4). One of these photographs appeared in an advertisement in the October 2002 issue of Cosmopolitan magazine in the United States which was released on 16 September 2002 (exhibit DC-9). This advertisement was the first public disclosure of the bra the subject of the invention.
Mr Chen asserts that the packaging for the Invisible Bra exhibited by Ms Qin bears the same photographs of Ms Kenya that were contracted by Bragel, and then states:
“Given that the photographs of Wendi Kenya were only taken on 3 June 2002 and that the photographs were not released until first disclosure on 16 September 2002, I do not understand how Wendi Kenya’s photographs modelling the Bra could have possibly appeared on packaging allegedly shipped from China and publicly supplied around Australia as early as 2 June 2002 through to 1 August 2002.”
Ms Kenya is the professional fashion model contracted by Bragel. She confirms that the Invisible Bra packaging contains photographs of her and that these photographs were among those taken on 3 June 2002. According to Ms Kenya, she had no prior knowledge of the Invisible Bra and has never modelled for Trio.
Ms Odorico is Bragel’s principal legal representative in the opposition. Her declaration essentially presents argument in rebuttal of Mr Adams’ contention that the claimed invention is not novel.
Evidence in reply
The evidence in reply consists of a statutory declaration made by Qin Zhong Min (known as Jack Qin) on 7 February 2007 together with exhibit QZM-1.
Mr Qin is a Director of Trio as well as Sunshine Global Import & Export Pty Ltd (Sunshine) which from time to time imports goods on instruction from Trio. He states that the Invisible Bra was initially packaged as the “Silicone Bra” (exhibit QZM-1) and, although unable to establish when the packaging was changed, confirms that:
“the silicone adhesive bras imported and sold in the respective packaging were identical, and that the “Silicone Bra” was received by Trio in Australia before 2 August 2002.”
The sales invoice of exhibit RQ-2 which forms part of the evidence in support (see above) is said by Mr Qin to relate to the importation of the Silicone Bra into Australia by Trio.
I will make further reference to the evidence where appropriate later in my decision.
ONUS OF PROOF
As submitted by Ms Odorico, the onus of proof in this proceeding rests upon Qin who must establish that it is clear that a valid patent cannot be granted (F Hoffman-LaRoche AG v NewEngland Biolabs Inc 50 IPR 305 at 319). It is settled in law that the standard of that proof is the civil standard on the balance of probabilities (Dunlop Holding Ltd’s Application [1979] RPC 523 at 543).

I think it appropriate here to mention that Mr Chen’s apparent allegation as to breach of copyright by Trio raises issues of law which the Commissioner is not empowered to determine and, consequently, I will have no further regard to that allegation.
DECISION
Clarity
Ms Qin has asserted that the specification does not comply with section 40(3) since a number of the claims cannot be ascribed a clear meaning.
Resolution of this ground of opposition raises questions as to the construction of the claims. The general principles of construction were summarised by Hely J in Flexible Steel Lacing CompanyvBeltreco Ltd 49 IPR 331 at 347-350 where his Honour observed that in determining whether the words of the claims are clear and unambiguous, the specification must be read as a whole. This was confirmed by the High Court in Kimberley-Clark Australia Pty Ltd v Arico TradingInternational Pty Ltd 177 ALR 460 at 466:
“Where the question concerns infringement of a claim or the sufficiency of a claim to “define” the invention, it has been held in this court … that the plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification. However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification” [references omitted]
His Honour also noted that the specification is addressed to the non-inventive person skilled in the relevant art. Accordingly, as said in Populin v HB Nominees Pty Ltd 41 ALR 471 at 476-477, the specification must not be read in the abstract but should be construed by adopting a common sense approach to what the words used convey in the context of the then-existing published knowledge. The facts in Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183 are illustrative of this situation, and the remarks of Lord Diplock (at 242-243) as to a “purposive” rather than a “purely literal” construction are to be understood in that light.
I now turn to the claims which Ms Qin has alleged are unclear.
Claim 1
Mr Adams submitted that claim 1 is not clear as to the meaning of “substantially the entire interior surface”.
I do not accept this submission. It is well understood that the word “substantially” is commonly adopted in the drafting of claims so as to embrace immaterial variants. This involves matters of degree and thus the word “substantially” is, in that sense, imprecise. However, I do not consider that the word “substantially” exhibits ambiguity in its present context since it is plain enough that when construed as dictated by authority the phrase “substantially the entire interior surface” conveys the notion that the layer of pressure sensitive adhesive is disposed so as to cover almost all of the interior surface of each bra cup.
On this basis I agree with Ms Odorico that the coverage of the pressure sensitive adhesive layer according to the language of claim 1 is appreciably greater than “at least more than 50% of the area of the interior surface” as suggested by Mr Adams.
Claims 2 to 5
Claim 2 requires the interior surface of each bra cup to be defined by the thermoplastic film material spoken of in claim 1 which Mr Adams argues is contradictory given that the interior surface is said by the latter claim to be comprised of the pressure sensitive adhesive layer.
Mr Adams is similarly critical of claims 3, 4 and 5. These claims stipulate that the interior surface of the bra cups is defined by an unwoven fabric material, a woven fabric material and a foam material, respectively, none of which (it is argued) constitute the pressure sensitive adhesive layer.
I consider this line of argument to be an example of the overly meticulous verbal analysis repudiated in Catnic. As a matter of ordinary language, it is immediately clear from the expression “disposed thereon” in claim 1 that the pressure sensitive adhesive layer overlays, rather than defines, the interior surface of the bra cups. This interpretation is entirely consistent with the further requirement in claim 1 that the pressure sensitive adhesive layer is supported by a thermoplastic film material.
Furthermore, there can be no dispute that each of claims 2 to 5 is fairly based on the matter described in the specification which indicates at pages 4-5, for example, that the interior surface of the bra cups can be formed from a thermoplastic film material or “any type of film material or fabric material suitable for adjoining to a [pressure sensitive adhesive]” such as unwoven or woven fabrics.
Claim 12
Mr Adams submitted that claim 12 is not clear as to the meaning of “permanently grown”.
In response Ms Odorico directed attention to page 4 of the specification which states that the pressure sensitive adhesive layer “can be permanently grown to the thermoplastic film material, or applied by the other methods discussed above.” Ms Odorico argued that it could be implied from this statement that “permanently grown” denoted a way of applying the pressure sensitive adhesive layer to the thermoplastic film material. However, the specification on any interpretation does not clarify what is meant by “permanently grown”, and thus I agree with Mr Adams that claim 12 lacks clarity.
Claims 13 to 16
Claims 13 to 16 speak of a pair of pull-up devices each comprising a first portion adapted to adjoin to a top portion of one of the bra cups and a second portion adapted to adjoin to the user’s skin. Claim 16 stipulates that the first and second portions are adapted to cooperatively engage each other.
Mr Adams contended that such an arrangement is incompatible with the notion of a strapless bra since the first and second portions of the pull-up devices are described as being connected by a strap portion. However, it would be fanciful in the context of the specification to suggest that this feature, even if defined (which it is not), constituted a “bra strap”.
Mr Adams’ argument concerning the strap portion is in any event incorrect. The strap portion described with reference to Figure 10 does not serve to connect the first and second portions of the pull-up devices but instead constitutes one of those portions, specifically, the second portion. As confirmed by the description on page 8:
“The pull-up device shown in FIG 10 has two separate portions, namely a strap portion 70 and an anchor portion 72. The strap portion 70 is the portion of the pull-up device that attaches to the user’s skin – at a position above the user’s breast – and the anchor portion 72 is the portion that attaches to the top of the bra cup.”
Novelty
The basic test for anticipation or want of novelty has been said to be the same as that for infringement (Meyers Taylor Pty Ltd v Vicarr Industries Ltd 137 CLR 228 at 235). This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at 549).

According to authority, an alleged anticipation must be the same as the claimed invention for the purposes of “practical utility”. This means that a prior publication will only destroy novelty if it contains sufficient information to enable a person skilled in the relevant art to produce the invention. The origin of this principle can be traced to the statement of Lord Westbury in Hill v Evans (1862) L J Ch 457 at 463:
“… the antecedent statement must be such that a person of ordinary knowledge in the subject would at once perceive, understand, and be practically able to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful … If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication.”
The matter was put in this way in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-6 where Sachs LJ said:
“… if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if a patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.”
The directions must be clear and unmistakable. In Flour Oxidising Co Ltd v Carr & Co Ltd 25 RPC 428 at 457 Parker J said:
“But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it.”
The same level of disclosure is required of an alleged anticipatory use of the invention as claimed (Old Digger Pty Ltd v Azuko Pty Ltd 51 IPR 43 at 81).
As I have already indicated, Ms Qin asserts that the claimed invention is deprived of novelty by the information contained in US patent specifications 5755611 and 6257951 as well as prior use of the Invisible Bra and Silicone Bra products.
Prior use
Ms Odorico submitted that the Invisible Bra product could not have been imported into Australia by Trio before the priority date as alleged by Ms Qin. I accept this submission since to my mind the evidence satisfactorily establishes that the photographs of Ms Kenya which appear on the Invisible Bra packaging did not become publicly available until after that date.
On the other hand, although there is no clear link between the Silicone Bra packaging depicted in exhibit QZM-1 and the tax invoices comprising exhibits RQ-2 and RQ-3, I have no reason to doubt the veracity of Mr Qin’s evidence that this product was imported into Australia before the priority date. However, the issue to be ultimately decided in relation to the allegation of prior use is whether the importation of the Silicone Bra disclosed all the essential features of the claimed invention (Stanway Oyster Cylinders Pty Ltd v Marks 35 IPR 71 at 75).
None of the evidence put forward by Ms Qin is determinative of the features possessed by the Silicone Bra. The most pertinent evidence is found in the photographs which appear on the Silicone Bra packaging. These photographs show the Silicone Bra to be a backless, strapless bra, but it is not possible without more to ascertain how it is attached to the user’s skin. There is certainly no indication that the Silicone Bra utilises a pressure sensitive adhesive layer as in
claim 1 for this purpose. I am also not able to discern either a thermoplastic film material, or a connector “adapted to adjoin the bra cups”, from the photographs.
Accordingly, there is insufficient evidence before me to conclude that the importation of the Silicone Bra disclosed all the essential features of the invention claimed by claim 1. I therefore find that the claimed invention is not anticipated by prior use of this product.
The result would be the same if it was assumed that the importation of the Invisible Bra had occurred before the priority date.
Prior publication
US 5755611
This document discloses a number of embodiments of a backless, strapless bra which in general comprises a pair of what are termed “self-supporting” bra cups.
The embodiment shown in Figure 9, for example, is said to comprise:
“a breast cup portion 22 and a flattened peripheral flange 24 underneath and along the sides of the cup portion … On the back side of the flattened peripheral flange 24, as shown more clearly in FIGS 11 and 12, is a double-sided tape strip 26 covered with release sheets 28A and 28B. On the inside surface of the breast cup portion 22 is another double-sided tape strip 30 with release sheets 32A and 32B. These two adhesive tape strips 26 and 30 provide the releasable securing means for securing the [bra] underneath the wearer’s breast without the need for any hooks or straps. As shown more clearly in FIG 13, the tape strip has a first adhesive layer 34 to which the release sheets 28A and 28B (and, ultimately, to the wearer’s body) are releasably secured; a second adhesive layer 36 secures the tape strip to the peripheral flange portion. ”
In use of the bra, the release sheets are removed and the tape strips pressed to the user’s skin.
The embodiment of Figures 18 to 21 is similar in construction except that it has no peripheral flange but rather comprises two inner double-sided tape strips that are disposed on the interior surface of each bra cup. The tape strips as before comprise release sheets secured to an adhesive layer. In addition, the bra cups are provided with respective decorative bands which are tied together to thereby adjoin the bra cups.
In Mr Adams’ opinion, the adhesive layer and the tape strips disclosed by US 5755611 meet the description of a pressure sensitive adhesive layer supported by a thermoplastic film material. He then states that on viewing Figure 20 of this document “the area of the tape strips … appears to be greater than 50% of the area of the interior surface of the bra cup.”
However, US 5755611 does not direct the skilled reader to form the tape strips from a thermoplastic film material, and nor can the provision of a pair of tape strips on the interior surface of each bra cup be equated to the arrangement defined in claim 1 wherein the interior surface of the bra cups is provided with a single pressure sensitive adhesive layer. In any event, and for the reasons already discussed in relation to clarity, the tape strips shown in Figure 20 are not disposed on substantially the entire interior surface of the bra cups.
For the sake of completeness I note that Figures 11 and 16, for example, of US 5755611 disclose bra cups having a single tape strip, but the tape strip of these embodiments does not extend over anywhere near substantially the entire interior surface of the bra cups.
US 6257951
The backless, strapless bra disclosed by this document is also attached to the skin of a user by a pressure sensitive adhesive.
Mr Adams has especially drawn attention to the following passage which begins at line 51 of column 4:
“The pressure-sensitive adhesive is preferably a double-sided adhesive tape which is applied directly along an inside surface of at least the flattened ridge 40 of the bra 10. Depending on the preference of the wearer, the adhesive can also be applied to the inner surface of each cup as needed” [my emphasis]
Mr Adams submits that this passage teaches the skilled reader to apply pressure sensitive adhesive to the entire interior surface of the bra cups if needed. However, I am far from convinced that the skilled reader would inevitably be led to this result.
The primary object of the invention disclosed by US 6257951 is to address the need for an improved bra which allows a more aesthetically pleasing appearance. It does this by embedding at least one shaping mechanism into the bra cups which can be manually manipulated to obtain a desired support shape. The ability of the bra to produce this effect is totally unrelated to the manner in which it is attached to the user’s skin and thus, not surprisingly, the positioning of the pressure sensitive adhesive on the bra receives little attention. In any event, it is apparent from an overall reading of US 6257951 that the pressure sensitive adhesive is principally applied to the aforementioned flattened ridge which is formed beneath the bra cups. This becomes self-evident from the “consistory clause” at the head of column 2 and the description at column 4 lines 61-2 which speak of adhering the bra to the rib cage of the user.
The passage on which Mr Adams relies alerts the reader to the possibility of applying additional adhesive to the interior surface of the bra cups. This is confirmed by column 4 at lines 58-64:
“To apply the adhesive, a first backing is removed and the tape is smoothed onto the [flattened ridge] of the bra. The second backing is then removed and the bra with its exposed adhesive is placed on the wearer’s rib cage directly beneath the breast (and on the wearer’s breasts if adhesive is placed in the cups) as the wearer leans forward slightly.” [my emphasis]
Although these disclosures indicate that the amount of adhesive applied to the interior surface of the bra cups is a matter of user choice, it would in my view be speculative to suggest that they teach the skilled reader to extensively apply adhesive to the interior surface given that the utilisation of the bra cups as an additional point of attachment is entirely optional. It is to be additionally noted in this regard that the expression “as needed” which I have emphasised in the first passage above may in its broadest sense simply refer to the application of a single strip of double-sided adhesive to the interior surface of each bra cup in common with a number of the embodiments disclosed in US 5755611.
Mr Chen takes the matter further by referring to the ineffectiveness of providing double-sided tape across substantially the entire interior surface of a bra:
“The double-sided adhesive tape described in the US patents comes in the form of strips that are merely stuck to flat portions or small concave portions on the interior surfaces of the bra cup. There are problems on placing double-sided adhesive tape over large non-flat areas and in this case double-sided adhesive tape cannot be placed across substantially the entire concave surface of a bra cup without crumpling and leaving air gaps between the interior surface and the double-sided tape.”
I therefore consider that US 6257951 does not contain clear and unmistakable directions to apply the pressure sensitive adhesive to substantially the entire interior surface of the bra cups. Further to this, there is no disclosure of a thermoplastic film material which supports the pressure sensitive adhesive.
In summary, then, I have found that neither of the US patent specifications relied on by Ms Qin disclose all the essential features of the invention claimed by claim 1. Consequently, these documents do not deprive the claimed invention of novelty.
Inventive Step
Broadly speaking, under section 7(2) a claimed 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.
It is therefore apparent that the state of the common general knowledge in the relevant art in Australia must be established as a precursor to a conclusion as to obviousness.
The state of the common general knowledge is a question of fact which must be determined on the basis of expert evidence. In the present case I do not have the benefit of evidence of this kind, and neither did Mr Adams pursue the matter during the course of the hearing.
Accordingly, I am unable to find that the claimed invention does not involve an inventive step.
Manner of Manufacture
Although not argued at the hearing, the statement of grounds and particulars asserts that on the basis of what was known, either as revealed on the face of the specification or by comparison with the prior art base in existence before the priority date, the claimed invention is not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
The majority view of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 at 454 was that the words “a patentable invention” in section 18(1) retain a threshold requirement that the alleged invention be a manner of manufacture. The court held that this threshold requirement will, notwithstanding an assertion of newness, remain unsatisfied if it is apparent on the face of the specification that the subject matter of the claimed invention is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture for the purpose of the Statute of Monopolies.
In the present case there is nothing on the face of the specification to suggest that the threshold requirement of inventiveness inherent in section 18(1) has not been met. As I have already indicated, the backless, strapless bra according to the claimed invention includes a pair of cups each having an interior surface comprised of a pressure sensitive adhesive layer thereby enabling the bra cups to be attached directly to the user’s skin. There is no suggestion whatsoever of these features of the claimed invention by the body of prior knowledge as revealed on the face of the specification which instead has relied on the use of extension tabs as the means of attachment.
Furthermore, it is clear from the majority view in Philips that the question of the existence of a threshold requirement under section 18(1) must be considered independently of the specific provisions of section 18(1)(b) as to novelty and inventive step. Even if the range of enquiry could be extended beyond the content of the specification, this would not assist Ms Qin since the subject matter of the claimed invention has not been proven to be either common general knowledge or public knowledge.
Accordingly, I dismiss this ground of opposition.
CONCLUSION
I have found that the opposition does not succeed under the grounds of manner of manufacture, novelty or inventive step. However, I have found that claim 12 lacks clarity. Consequently, the opposition has been successful under the ground of non-compliance of the specification with section 40.
I allow Bragel 60 days from the date of this decision to file suitable amendments.
COSTS
The power of the Commissioner to award costs is discretionary, so I must take account of all relevant circumstances.
In the present case Ms Qin has established that the specification does not comply with section 40, and the usual practice in these circumstances is for costs to follow the event. However, the only deficiency identified in the specification is relatively minor, and I therefore do not consider that Ms Qin is entitled to her costs.
Furthermore, at the commencement of the hearing Mr Adams admitted that Ms Qin:
“was not so concerned about whether or not the opposition is successful; basically their concern is that they want freedom to continue to sell and import the bras referred to in the evidence.”
Mr Adams’ written submissions explain the real motive for opposing the application:
“The Opponent, and Trio Brothers Trading Pty Ltd, wish to continue to (i) import into Australia, (ii) sell in Australia, and (iii) offer for sale in Australia the “Invisible Bra” without threat of infringement of Patent 2003249034, should it be granted to Bragel International, Inc.
… if the Commissioner finds that each and every feature of a particular claim is not contained in the “Invisible Bra”, then, on grant, Bragel International Inc could not allege infringement of that claim by the importation/sale/offer for sale of the “Invisible Bra”.”
Although perhaps not placing the opposition under the category of a frivolous or vexatious action, the outcome sought to be attained by Ms Qin in instituting this proceeding is nevertheless contrary to the purpose for which the pre-grant opposition procedure is intended. Moreover, the question of whether infringement has taken place is for the court to decide, not the Commissioner, and even so the case presented by Ms Qin as to alleged prior use was of no help in determining whether or not the Silicone Bra or the Invisible Bra had taken all the essential features of the claimed invention.
For these reasons I award costs against Ms Qin and in favour of Bragel.
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Griffith Hack, Melbourne, Vic
Patent attorneys for the opponent: Fisher Adams Kelly, Brisbane, Qld