Breezway Australia (Holdings) Pty Ltd
[2012] APO 90
•9 August 2012
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Breezway Australia (Holdings) Pty Ltd [2012] APO 90
Patent Application: 2010246569
Title:An Automated Window System
Patent Applicant: Breezway Australia (Holdings) Pty Ltd
Delegate: Ed Knock
Decision Date: 9 August 2012
Hearing Date: 6 June 2012
Catchwords: PATENTS – examiner objection – inventive step – whether prior art could be ascertained – whether PSA would search patent documents – whether patents of a different technology would be searched – prior art held not ascertainable – inventive step objection not sustained – amendments allowed – application accepted
Representation: Patent applicant: Regan Gourley, Cullens, Brisbane
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010246569
Title:An Automated Window System
Patent Applicant: Breezway Australia (Holdings) Pty Ltd
Date of Decision: 9 August 2012
DECISION
The invention defined by claims 1 to 17 is novel and involves an inventive step and thus meets the requirements of subparagraph 18(1)(b) of the Patents Act 1990.
Furthermore I am unaware of any grounds upon which this application should be refused under subsection 49(2).
Under subsection 49(1) I accept the application.
REASONS FOR DECISION
This matter concerns examiner’s objections and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background
Application 2010246569 was filed on 1 December 2010. It was filed as a divisional application of Australian patent application 2005312339. This parent application was filed under the provisions of the Patent Cooperation Treaty on 1 December 2005 as application PCT/AU2005/001811. It entered the national phase in Australia on 25 June 2007 and has proceeded to grant. It claimed priority from two Australian provisional applications dated 2 December 2004 and 20 April 2005, respectively. Parent application 2005312339 also begat one other divisional application, 2010246567 (which is thus a sibling application of the application in suit). Application 2010246567 has been accepted, and is currently under opposition.
The first of a total of six examination reports on this application issued on 15 February 2011, and thus the final date for acceptance of this application is 15 November 2012. This first report raised a single citation US 5413161 A (Corazzini) 9 May 1995 (D1), and the issues it raised were confined to novelty and inventive step. In response to the first report the applicant only filed some submissions, and did not propose any amendments to its application.
A second examination report was then issued, which once again was confined to novelty and inventive step, but which introduced a second citation GB 2396657 A (WILKINS) 30 June 2004 (D2). D1 continued to be a citation, but only for inventive step and only when combined with D2. As well, in the second report objection was taken to the novelty and inventive step of some claims on the basis of D2 on its own, and although these claims were amended slightly in the course of the examination procedure leading up to the hearing, an obvious problem persisted with these claims as they stood at the hearing. At the hearing Mr Gourley gave an undertaking to amend these claims, and he has subsequently proposed amendments which successfully accomplish that purpose.
The second examination report elicited some amendments from the applicant. There were also further submissions, the only one of which that is of any real interest in this matter being that the applicant rejected the examiner’s approach of combining documents D1 and D2 to support a finding of lack of an inventive step, arguing that the examiner had failed to substantiate that D1 and D2 would have been “ascertained”, as required by subsection 7(3) of the Patents Act 1990. In support of this argument the applicant had filed a statutory declaration by an employee of the applicant, Keith James Chaston (the Chaston declaration).
No further amendments of a substantive nature were filed prior to the hearing, and the remainder of the reports and responses were mainly confined to the question of whether the cited prior art would have been “ascertained”. Elements of the evidence in the opposition on the sibling application were introduced in the fifth examination report, but these do not seem to bear upon the matter at hand in any significant degree.
A hearing was set down 6 June 2012. The applicant opted to appear by telephone. Representing the applicant was Regan Gourley of Cullens, Brisbane.
Following the hearing, on 3 July 2012 Mr Gourley fulfilled his undertaking given at the hearing to make amendments to certain of the claims. Also, in response to comments I had made at the hearing in regard to the weight that could be attached to the statutory declaration that had already been filed in relation to this matter, Mr Gourley filed another statutory declaration, by Justin Bradley Reid (the Reid declaration).
The specification
The present invention is said by the specification to relate to a window system, and in particular to an automated window system allowing the opening and closing of a window. The description part of the specification essentially replicates that of the parent, and ranges over a number of aspects of automated window systems in a way which makes it no surprise that it has spawned divisional applications.
The aspect of the window system with which the present invention is concerned relates to the power operation of its opening and closing mechanism, and, more particularly, to a system for the provision of energy for that power operation. To achieve this, the invention proposes an energy accumulation means which comprises an energy accumulation portion (which may, for example, be some means of producing an electric current) plus an energy storage portion (for example, a battery). The source of the energy is required to be a “repetitious or renewable source”, and “solar power, wind or tidal power or multiple cycle means” are exemplified.
There seems to be only one other essential feature of the invention, namely that the energy accumulation means is required to lie outside the “infill portion” of the window. I take this to mean that the energy accumulation means must be outside the light transmitting area of the window.
10. The specification as proposed to be amended at the time of the hearing concluded with seventeen claims. Three of these claims (1, 14 and 16) are independent claims, and read as follows:
“1. An automated window system including:
a.a window for external use with a surround frame and an infill portion having at least one member moveable between at least one open condition and a closed condition;
b.a window opening/closing mechanism associated with the at least one member; and
an energy accumulation means including an energy accumulation portion and an energy storage portion, such that the energy accumulation portion collects or accumulates energy which is then stored in the energy storage portion, the energy storage portion releases at least a portion of the energy stored therein upon demand to the window opening/closing mechanism to open and/or close the window, the energy accumulation means and the window opening/closing mechanism mounted relative to the surround frame to leave the infill portion substantially unobstructed wherein the energy accumulation portion collects or accumulates energy from a repetitious or renewable source such as solar power, wind or tidal power or multiple cycle means.”
“14.An automated window system including:
a.a window for external use with a surround frame and an infill portion having at least one member moveable between at least one open condition and a closed condition;
b.a window opening/closing mechanism associated with the at least one member; and
c.a rechargeable energy storage portion wherein the rechargeable energy storage portion releases at least a portion of the energy stored therein upon demand to the window opening and closing mechanism to open and close the window, the rechargeable energy storage portion and window opening/closing mechanism mounted relative to the surround frame to leave the infill portion substantially unobstructed.”
“16.An automated window system including:
a.a window for external use with a surround frame and an infill portion having at least one member moveable between at least one open condition and a closed condition;
b.a window opening/closing mechanism associated with the at least one member; and
c.a replaceable energy storage portion wherein the replaceable energy storage portion releases at least a portion of the energy stored therein upon demand to the window opening and closing mechanism to open and close the window, the replaceable energy storage portion and window opening/closing mechanism mounted relative to the surround frame to leave the infill portion substantially unobstructed.”
Also of relevance to this matter are claims 12 and 13, which at the time of the hearing read:
“12. A surround frame for an automated window system for external use as claimed in anyone of the preceding claims wherein the window opening and closing mechanism is contained within the sill surround frame member.
13. A surround frame for an automated window system for external use as claimed in anyone of the preceding claims wherein the window opening and closing mechanism is contained within one of the gallery frame surround frame members. “
The post-hearing amendment
11. The only change resulting from the amendments of 3 July 2012 was to replace the words “when used in” for the word “for” (first occurrence) in each of claims 12 and 13, to make these claims read:
“12. A surround frame
forwhen used in an automated window system for external use as claimed in anyone of the preceding claims wherein the window opening and closing mechanism is contained within the sill surround frame member.
13. A surround frame
forwhen used in an automated window system for external use as claimed in anyone of the preceding claims wherein the window opening and closing mechanism is contained within one of the gallery frame surround frame members.”
12. Although this amendment is modest in its extent, it has a profound effect upon the scope of claims 12 and 13. It transforms these claims from being ones which are only nominally dependent on the preceding claims to ones which are properly dependent on the preceding claims, that is, they import all the features of the preceding claims. Thus if the amendments are allowable as amendments – which, as it will emerge presently, they are - then their validity from a novelty and inventive step perspective will be tied to the question of whether claim 1, to which claims 12 and 13 are appended, is novel and involves an inventive step.
The central issue
13. The issue which is central to this matter is, broadly speaking, the question of whether the claims, as proposed to be amended, are novel and involve an inventive step. From the examiner’s reports and the applicant’s responses, it is clear that the pivotal point of difference between the examiner and the applicant lies in whether the prior art documents which have been cited by the examiner in relation to inventive step could, in the terms of the Patents Act 1990, “reasonably be expected to have been ascertained”. At the hearing, Mr Gourley hinted that there could be other defences which he might want to mount in relation to lack of inventive step at some later time should I find against him on ascertainment, but I stated my understanding to be that the present hearing was to hear the applicant on all issues relating to the only ground of objection which is effectively outstanding, which is inventive step.
14. The applicant had first raised the ineligibility of D1 to be used for inventive step purposes in its response to the first examination report (in which D1 was originally cited). In its submissions it pointed to the distinction between the venetian blind of the citation and the window for external use defined by the present claims. It was argued that a person skilled in the art (PSA) would neither have ascertained the citation nor, if they had, regarded it as relevant. Two court decision were cited in support of these contentions, namely, JMVB Enterprises Pty Ltd (formerly A*Van Campers Pty Ltd) v Camoflag Pty Ltd [2006] FCAFC 141 and Stena Rederi Aktiebolag v Austal Ships Sales Pty Ltd [2007] FCA 864 (21 June 2007).
15. In his second report, the examiner, after having introduced new citation D2, stated in relation to D1 and in response to the above submission:
“D1 is directed to a problem not dissimilar to the applicant’s problem. While it is conceded that D1 is in the field of window shades and not windows for external use, a diligent searcher in searching the problem as identified above would consider searching the broader field of windows using electric power means and could reasonably be expected to have found, and to have ascertained, understood and regarded, D1 as relevant.”
16. In actual fact the report does not appear to have actually identified a specific problem. However, my interpretation of the problem is that it lies in devising a window system which has a functional, self-contained source of energy.
17. In response to this the applicant submitted that, in order to make good his assertions, the examiner would need to provide evidence from the PSA, citing Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996, at first instance, and Commissioner of Patentsv Emperor Sports Pty Ltd [2006] FCAFC 26. The submissions continued:
“We respectfully submit that the examiner has failed to establish the elements of section 7 either by probative evidence from a person skilled in the art, or by evidence that the administrative decision-maker has the appropriate expertise in the art. Consequently, the examiner has failed to establish a factual basis for the objection.”
18. As already mentioned, the response to the second report also included the Chaston declaration.
19. The third examination report was mainly an attempt to deflect the Chaston declaration. The examiner had obviously carried out some research, and had discovered that Mr Chaston was an inventor. That is relevant information, for reasons I will come to. However, the examiner had looked into the situation even further, and had discovered that a patent application for which Mr Chaston was listed as the inventor referred to several patent documents as being prior art. Also, the examiner cited other patent documents in the field of the present invention that refer to other patent documents as prior art. This, so the reasoning went, “suggests that the PSA as a diligent searcher would search patent specifications”. However, in my view this reasoning does not hold water, since it relies on a link between the drafter of the specification and the inventor which I do not think can be assumed to exist.
20. The response to the third examination report was essentially two-pronged. Firstly the applicant rejected any suggestion that an administrative decision-maker can rely on his own technical expertise to override that evidence of “a person admitted to be a person skilled in the relevant art” (the person in this case being Mr Chaston). I assume that by “admitted” is meant “admitted by the examiner”. While the examiner does appear to have made such a concession in his third report, I have some reservations on this. I will return to this later.
21. The second prong to the applicant’s submissions was that although in Commissioner of Patents v Emperor Sports [supra] the court affirmed the general correctness of the Office practice that examiners should generally proceed on the basis that it could be reasonably expected that the PSA would conduct a search of patent literature, including the patent specifications of major countries, and that any patent document located in a patentability search would reasonably be expected to be ascertained by the PSA, the court noted that this may not be universally applicable; there may be situations where it would not be reasonable to have such an expectation. The applicant pointed to three exceptions to the general principle (taken from The Australian Patent Office Manual of Practice and Procedure at 2.5.2.5.1):
·the patent document is in a location which makes it unlikely that the PSA would come across it, such as in B.C.D. Mecanique Ltee v Madness Gaming Products, Inc.
[2001] APO 70 (for which I was the delegate). In this case the patent was in the files of the Dominican Republic Patent Department, and no evidence was brought forward as to how the PSA could access it, or even divine its existence,
·the relevant technology is one in which it could not be reasonably expected that a PSA would consult patent literature, such as in Commissioner of Patents v Emperor Sports [supra] where it was considered that a Rugby League or Australian Rules coach, referee, umpire or administrator would not have conducted a search in the United States Patent Office, and
·the PSA skilled in the art could not be reasonably able to find the information in the document. Thus, for example, an obscure statement in a large document may not be ascertained if the bulk of the document is not relevant to the problem.
22. The fourth examination report once more questioned whether Mr Chaston “speaks for all persons skilled in the art of window design”. In doing so, I think the examiner was raising one of the fundamental issues in this matter, namely, what weight to attach to the Chaston declaration (and a similar issue obtains to the Reid declaration). The examiner then cited two further instances of Australian patent documents in the present art where the admitted prior art includes patent documents. As I have already noted, I do not think anything of significance can be concluded from those circumstances. The applicant’s response to this report was devoted to a rebuttal of the examiner’s reasoning, and, since, for reasons which I have already explained, I am inclined towards the applicant’s view on this, it is not necessary that I dwell on the applicant’s response.
23. The fifth report was, not unexpectedly, in the main a reiteration of arguments which had made in the previous reports. However, it did introduce five new citations, which seem to have been sourced from the evidence in the opposition on the sibling divisional application. In the fifth report these citations have been combined with D1 to craft an inventive step objection. The applicant has responded to this by contending that the way these citations had emerged pointed away from them being ascertainable, since previous searches had not turned them up.
24. The sixth and last examiner’s report was only an outline of the outstanding issues, and as such did not introduce anything new in nature. The applicant’s response to this was to provide a “Request for Review”, in which it is explicitly stated that it (The Request for Review) is not a response to the sixth report. This Request for Review surveyed the examination history of the examination.
On 13 February 2012 an Assistant General Manager wrote to Mr Gourley and advised him he had carried out a review of the case and had concluded that the proper processes had been followed, and suggested that Mr Gourley request a hearing. Mr Gourley made such a request on 5 March 2012.
The statutory declarations
The Chaston declaration
26. Mr Chaston is a long-term employee of the applicant. He is inventor or co-inventor of “a number of” patented inventions who considers himself to be “aware of the process for gaining patent protection”. He claims to be:
“…well qualified to declare as to what a person skilled in this art would or would not do as well as declaring as to what constitutes common general knowledge available to a person skilled in the art.”
He considers himself to be a PSA, and states that since he does not search patent documents to solve a problem, the examiner’s contention that the PSA could reasonably be expected to have ascertained D1 and D2 is incorrect. He furthermore does not agree that the PSA would look to the field of window shades, blinds or any internal window furniture for the solution to a problem in relation to windows for external use, or that the PSA would be motivated to combine the disclosure of two patent documents directed to blinds and shutters to reach a solution to a problem faced in relation to a window for external use.
The Reid declaration
27. Mr Reid is employed as a Product Design Manager with a company which manufactures and distributes aluminium joinery systems. Since 1999 he has dealt with product design, manufacturing prototypes and performance testing of window systems, and he declares that he has no relationship, past or present, with the present applicant. He states that “window designers simply do not look to patent documentation for solutions to problems”, and that he has never known a window designer to search patent documents. Moreover, he says that the solution provided by apparatus designed for internal use, such as window shades, blinds or any window furniture, rarely, if ever, provides a solution to a problem faced in the design of external windows. Likewise, he asserts that a PSA of window design knows the difference between blinds and shutters and windows for external use and knows that the systems used in the two are very different and rarely, if ever, could a device designed as a blind or shutter be used, or even adapted to be used, in a window for external use. Therefore, a designer of windows would not look in the field of blinds, shutters and awnings for a solution to a problem faced in the field of design of windows for external use. And in particular, even if D1 and D2 were located, a PSA of window design would dismiss them as being irrelevant to any problem in the field of windows for external use that the person was trying to solve.
The hearing
28. The hearing was mainly confined to Mr Gourley traversing over much of what was already contained in his responses to the examination reports. One worthwhile piece of new information which Mr Gourley brought to attention is that there was nothing in the evidence in the opposition to the sibling application to contradict the position of the declarants in the present case that the PSA would not conduct searches of patent documents.
More details of Mr Gourley’s submissions, where relevant, are provided at appropriate points in this decision.
Decision
Section 104 amendment
The allowability of amendments is governed by section 102, which provides:
"(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
Certain amendments of complete specification are not allowable after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
Meaning of relevant time
(2A) For the purposes of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted;.
.
.(3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification."
31. The amendment under section 104 of the Patents Act which the applicant filed on 3 July 2012 (the details of which have already been set down above at [11]) are clearly in substance disclosed (subsection 102(1)), narrow the scope of the claims (subsection 102(2)) and do not cause the specification to be non-compliant with section 40.
I therefore find that the proposed amendments contained in the statement of proposed amendments filed on 3 July 2012 comply with the requirements of section 102 of the Patents Act 1990, and I allow the amendments to the complete specification of patent application 2010246569 in accordance with that statement of proposed amendments.
Inventive step
33. Section 7 of the Act states that:
“(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the relevant art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person… could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
34. The two aspects of subsections 7(2) and 7(3) which are the focus of this matter are the phrase “person skilled in the art” and the requirement for the information to be considered for inventive step to be information which the PSA could “be reasonably expected to have ascertained”. In the case of the latter it is apparent that identifying the characteristics and capabilities of the PSA is a precursor to the determination of whether a prior art document could be reasonably expected to have been ascertained, and it is the question of whether one particular prior art document (D1) could have been expected to have been ascertained that is pivotal to this matter. The subject matter of D1 is a solar powered venetian blind.
35. The reason that D1 is pivotal is that following the amendments of 3 July 2012, the only outstanding issue preventing acceptance of this application is an inventive step objection predicated on combining D1 with certain other patent documents. If I were to consider that D1 would not have been ascertained then the inventive step objection falls away. The reason that D1 is crucial to the viability of the inventive step objection is that it is the only citation in the broad field of window-related systems that discloses a system which includes an energy storage means. Of course it would have been possible in principle to dispense with D1 and instead rely on common general knowledge, or even raise manner of manufacture (new use of a known contrivance), but the examiner has chosen not to go down those paths – a choice with which I am inclined to agree.
36. The applicant has contended that D1 could not be expected to have been ascertained on two bases. Firstly, it is argued that the Chaston and Reid declarations establish that the PSA would not have conducted any search of patent documents. Secondly, it is argued that even if such a search had been carried out, D1 would not have been found.
37. As a preliminary issue I will note that paragraph 49(1) (a) of the Patents Act 1990 requires that the Commissioner “be satisfied” that the claimed invention involves an inventive step, that is, the standard of proof applying to the issue of inventive step is the civil standard of balance of probabilities.
38. An often quoted elucidation of the characteristics of the PSA is that given in Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited (1972) RPC 346 (cited with approval by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 294):
“It is not disputed that the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a 'mosaic' out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity.”
39. In Commissioner of Patentsv Emperor Sports Pty Ltd [supra] at [34] the court stated:
“The Australian Patent Office Manual of Practice and Procedure says (par 4.2.5.1):
‘Examiners should generally proceed on the basis that it would be reasonably expected that the person skilled in the art would conduct a search of patent literature, including the patent specifications of major countries, and that [subject to certain exceptions not relevant for present purposes] any patent document located in a patentability search would reasonably be expected to be ascertained by the person skilled in the art.’
We would not wish to cast any doubt on the general correctness of that statement. However, in its own terms it allows that it is not necessarily universally applicable; there may be situations where it would not be reasonable to have such an expectation.”
I take from that that it is reasonable to proceed upon the assumption that ordinarily the PSA will conduct a search of patent literature, and then give consideration to any prevailing circumstances which may cause that assumption to break down. That initial presumption seems a reasonable one to me, given the hypothetical, and in some ways idealized, nature of the PSA. (For example, no real person can be said to be wholly uninventive and unimaginative). That the PSA would be aware of the patent system and its function as a repository of technical information I think is consistent with the idealized nature of the PSA, and that the PSA would want to search extensively enough to cover patent documents is consistent with the uninventive nature of the PSA, who, as a consequence of their lack of inventiveness, would thus be thrown upon the technical knowledge he or she could garner from information already in the public domain. It is in the exceptional circumstances that act to limit the extent of such a search of patent documents that the analysis becomes a real-world consideration.
40. I turn now to the first basis upon which the applicant contends that, on the balance of probabilities, the PSA would not have ascertained D1, namely, that the PSA would not have thought to carry out any search at all. The justification of the applicant’s contention lies in the Chaston and Reid declarations.
41. Regarding Mr Chaston, I note that his position as an employee of the applicant means that he does not qualify as an independent witness. Furthermore, I observe that the documentation on file clearly establishes that he has inventive capacity. While this does not necessarily render his evidence of no value – indeed, he seems well-placed to comment on the attributes of the hypothetical person who is considered to be the PSA – the fact that at one point he refers to himself as being a PSA of window design raises questions about the reliability of his evidence.
42. With Mr Reid, the applicant has largely overcome my reservations expressed above in relation to Mr Chaston. However, I have another reservation relating to both Mr Chaston and Mr Reid. Both declarants state that they are window designers. Windows in general have a high aesthetic content as well as technical content. For someone to style themselves as a designer of window systems does not provide much insight into whether the person is involved in the technical side of window design, although I note that Mr Chaston is an inventor of window systems which suggests that he at least has a technical bent. However, assuming that both declarants are involved in the technical side of window design, the present invention is noteworthy in the way it crosses technical boundaries (which may account for the apparent paucity of prior art in the area). It marries structural aspects of windows with powered actuation for windows. Neither of our declarants gives any indication of their background in power actuation, or of what the practices of our uninventive PSA are, with respect to that technical field. Therefore, notwithstanding the declaration of Mr Reid in particular, I am not satisfied that the PSA would reject patent documentation as being a worthwhile source of information on the problem the present invention addresses.
43. As one final observation on the Chaston and Reid declarations, these days, at least, I am not sure how meaningful it is to say that the PSA would, or would not, conduct a search of patent documents, if by reference to “patent documents” is meant a collection or database exclusively of patent documents. As many commentators have noted recently, the way mankind accesses information these days has undergone a radical change. Today, to access information on a particular topic it is extremely commonplace to “google it” on the internet. Such a search will potentially include patent documents amongst its “hits”. For example, googling the words “automated window solar powered” will give results listing D1 on the first page. There seems good reason to expect that a prudent, non-inventive PSA setting out these days to, for instance, design a window, would most likely feel compelled to google the area of its subject matter at some stage. Whether or not that is the case, however, I do not think the same can be said to apply in the matter at hand, noting that the earliest priority date of the present application is in 2004 when the internet was far less pervasive.
44. The second leg upon which the applicant contends that D1 would not have been ascertained is it fits into the second category referred to in [21], above. Here I think the applicant is on more solid ground. In my view, in Commissioner of Patentsv Emperor Sports Pty Ltd [supra] the factor most likely at work was the insularity of some sporting codes, and in particular the alien nature of American football in the Australian context, such that it took a mental leap to realize that a search in the United States Patent Office could be fruitful. In the present case, there have been submissions from the applicant which have been supported by two statutory declarations from experts in the field which have asserted strongly that the art of windows per se is separate and distinct from the art of window furnishings, and that there is negligible crossover between the two. This distinction is reflected in the respective roles of each. On the one hand a window of the closable type is intended to provide a physical barrier between the exterior and interior of the structure in which it is located. On the other hand a venetian blind is a device intended to control the passage of light through it – in the words of Mr Gourley, a “flimsy” structure compared with that of the window system of the present invention.
45. These considerations lead me to conclude that it would have required an excessive degree of lateral thinking for the PSA to have chosen to search in the art of venetian blinds for the solution to the present problem, which is cast as relating to window systems. Therefore my finding is that it could not have reasonably been expected that D1 would have been ascertained by the PSA, from which it follows that D1 is not available for consideration under subsection 7(3) of the Patents Act 1990. Accordingly, with regard to the prior art in consideration in this matter, the invention defined by the claims as amended by the amendments of 3 July 2012 is novel and involves an inventive step.
Conclusion
46. I have found that in present application 2010246569 the invention defined by the claims as amended on 3 July 2012 is novel and inventive. As there are no other lawful grounds for objection, pursuant to subsection 49(1) of the Patents Act 1990, I accept this application.
E J Knock
Delegate of the Commissioner of Patents
0
5
0