Breville Pty Ltd v Sunbeam Corporation Limited
[2010] APO 28
•9 December 2010
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Breville Pty Ltd v Sunbeam Corporation Limited [2010] APO 28
Patent Applications 2005201507
Title:Kettle with Lid Dampening Mechanism
Patent Applicant: Breville Pty Ltd
Opponent: Sunbeam Corporation Limited
Delegate: Dr S. K. Aggarwal
Decision Date: 9 December 2010
Hearing Date: 14 September 2010, in Canberra
Catchwords: PATENTS – opposition to grant – claims fairly based – prior art includes a lid damping mechanism – cups are the only rotating parts in the damping mechanism – cups do not cooperate with a section carried by the lid – lack of novelty of claims not established – opponent did not argue that claims were not inventive in light of common general knowledge alone – prior art could have reasonably been ascertained, understood and regarded as relevant by the skilled addressee – insufficient evidence to establish that claims lack inventive step in light of common general knowledge and prior art – invention clearly a manner of manufacture – cost in accordance with Schedule 8 awarded against the opponent.
Representation: Patent applicant: Molins & Co, Sydney
Opponent:Freehills Patent & Trademark Attorneys, Sydney
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005201507
Title:Kettle with Lid Dampening Mechanism
Patent Applicant: Breville Pty Ltd
Date of Decision: 9 December 2010
DECISION
The opponent does not succeed on any of the grounds of opposition. I direct that the application proceed to sealing unless the Commissioner is served with a notice of appeal within 28 days from the date of this decision.
I award costs against the opponent.
REASONS FOR DECISION
Background
Patent application 2005201507 directed to a Kettle with Lid Dampening Mechanism was filed on 11 April 2005 by Breville Pty Ltd (“Breville”). The application claims priority from provisional application 2004902070 filed on 19 April 2004. The application 2005201507 was advertised accepted on 21 June 2007.
A notice of opposition to the application 2005201507 was filed on 21 September 2007 by Sunbeam Corporation Limited (“Sunbeam”) and a statement of grounds and particulars was served on 21 December 2007.
On 24 January 2008, Breville requested the Commissioner to direct Sunbeam to supply further particulars in respect of the statement of grounds and particulars, and dismissal of certain grounds. Following a direction from a delegate of the Commissioner, Sunbeam filed an amended statement of grounds and particulars on 26 March 2008, which was allowed on 1 July 2008. Sunbeam completed their evidence in support on 23 September 2008.
On 31 October 2008, Sunbeam filed a further amended statement of grounds and particulars, which was allowed on 21 November 2008.
On 17 March 2009, Breville filed a request to amend their specification which was allowed on
7 September 2009. Breville completed their evidence in answer on 8 December 2009. No evidence in reply was filed by Sunbeam.The matter was heard in Canberra on 14 September 2010. Mr Christian Dimitriatis (Counsel), assisted by Mr Michael Molins, of the patent attorney firm Molins & Co, Sydney represented the applicant. Mr Angus Lang (Counsel), assisted by Mr John Dower and Huw Edwards, of the patent attorney firm Freehills Patent & Trademark Attorneys, Sydney represented the opponent. Mr Nick O’Loughlin, a representative of the opponent, also attended the hearing.
The Statement of Grounds and Particulars
The grounds of opposition specified in the statement of grounds and particulars are that the specification does not comply with paragraphs 18(1)(a), 18(1)(b), 18(1)(c), 40(2)(a) and sub-sections 40(3) of the Patents Act 1990.
The statement of grounds and particulars raises manner of manufacture as a ground of opposition stating that the alleged invention is nothing more than a new use of known features. In relation to novelty, two prior use items have been cited. However in relation to inventive step, a number of prior art specifications and prior use items have been cited. The statement of grounds and particulars also asserts that the invention defined in claim 1 is not useful as it does not achieve the stated objective of the invention to provide a vessel that can be operated with one hand. No assertion has been made in respect of paragraph 40(2)(a). Several aspects of non-clarity and two of fair basis are raised in respect of sub-section 40(3).
The Specification
The impetus for the present invention appears to have come from the difficulty in operating kettles having hinged or removable lids. The specification indicates that a kettle with a hinged lid must generally be operated with two hands, one hand to hold the handle of the kettle and a second hand to open the lid, and that it would be advantageous to provide a kettle having a lid that could be opened with one hand rather than two.
The specification further indicates that one way of solving the problem would be to provide a spring operated lid that is biased into an open position. However, the release of a spring-biased lid would cause the lid to open in a rapid and abrupt fashion, which has the potential of ejecting hot water from the underside of the lid. The invention is to provide a kettle with a lid damping mechanism wherein a person holding the kettle’s handle with their hand can open the lid by operating a button on the handle by the same hand.
The specification concludes with fifteen claims of which only claim 1 is independent. The claims read as follows:
1.A vessel for handling food and having a body and a lid, wherein:
a resilient bias is interposed between the vessel’s body and the lid, the lid being biased into an open position;
the lid and the body of the vessel having affixed between them, a damping mechanism;
the damping mechanism further comprises a stationary cavity and a rotating part, the rotating part cooperating with a section carried by the lid;
the lid is retained by a latch, the latch being released by an activator located on or adjacent to a handle, so that a person holding the handle with their hand can operate the lid with that same hand.2.The vessel of claim 1, wherein:
the vessel is a kettle.3.The vessel of claim 2, wherein:
the damping mechanism is concealed within an area of the body adjacent to a handle of the kettle.4.The vessel of any one of claims 1-3, wherein:
the rotating part is an impeller.5.The vessel of any one of claims 1-4, wherein:
the rotating part carries a gear portion that cooperates with a gear section carried by the lid, a space between the stationary cavity and the rotating part being filled with a fluid.6.The vessel of claim 5, wherein:
the fluid is a food grade fluid.7.The vessel of any one of claims 1-6, wherein:
the lid, when in motion, has an axis of rotation that is located between a longitudinal axis of the vessel and a gap located between the outer edge of the lid and the body.8.The vessel of any one of claims 1-7, wherein:
an upper surface of the lid at an outer edge is generally flush with a surrounding portion of the body.9.The vessel of any one of claims 1-6, wherein:
the resilient bias is a torsion spring that surrounds an axis of rotation of the lid.10.The vessel of any one of claims 1-7, wherein:
the lid is flush and has a transparent central portion.11.The vessel of claim 10, wherein:
the lid is round.12.The vessel of any one of claims 1-11, wherein:
an upper extent of the body forms an uninterrupted width that surrounds the lid.13.The vessel of any one of claims 1-12, wherein:
the damping mechanism is located within an inner wall of the vessel and is exposed to steam.14.The vessel of any one of claims 1-13, wherein:
the damper acts to reduce the velocity of the lid so that condensate is not ejected from the underside of the lid.15.The vessel of any one of claims 1-14, wherein:
a top surface of the vessel, except for the activator, is unencumbered by external features.Evidence
The evidence in support consists of a single statutory declaration from each of Mr Christopher Michael Desmond Ware, Mr Mark Anthony Thomas, Mr Paul Cockburn, Mr Huw Arwel Edwards and Mr John Christopher Dower.
Mr Ware is the former Director of Design and Product Development in Sunbeam. The Ware declaration relies on the following exhibits in support of the opponent’s case:
CW1 Flight itinerary of Mr Ware
CW2Emails from February 2003 between Mr David Allen of Pulse Home Products Ltd (“Pulse”) and Mr Ware
CW3Page from 2003 Rowenta (Germany) website (cached on
7 April 2003) showing that model number ‘KE807’ corresponds with Rowenta’s Brunch KettleCW4Emails from July 2004 between Mr David Allen of Pulse and Mr Ware
CW5Emails from May/June 2003 between Mr Robert Levy of Pulse and Mr Ware
CW6Emails in April 2004 between Mr Stewart Gordon and
Mr WareThe Ware declaration is about the purchase of three kettles including the Rowenta KE 807 by Mr Ware through Pulse, the practice of purchasing samples of competitors’ products in the kettle manufacturing industry for new ideas for future products, and Sunbeam’s varying degree of success with the kettles that included some form of damped lids before 7 April 2004.
Mr Thomas is the Design Manager (non-kitchen appliances) in Sunbeam. Prior to this, he was a Senior Designer for the same company from May 2002 - January 2008. The Thomas declaration relies on the following exhibits in support of the opponent’s case:
MAT1 Curriculum vitae of Mr Thomas
MAT2Sample pages taken from the websites of Breville (Australia), Kenwood (Australia), Kitchen Aid,
Moulinex (UK), Rowenta (Germany) and Tefal (UK)
cached between April 2003 and April 2004MAT3An example product specification list provided to
Mr Thomas by Mr Nick Edmonds of Sunbeam on
28 October 2002MAT4A sample page taken from the website of Cube Industrial Design of Sydney
MAT5Design Registration AU155382S for Breville’s SK500 kettle
MAT6Photographs of Rowenta Brunch kettle dated 18 February 2003
MAT7Sample pages taken from the website of ITWDelpro showing small rotary dampers cached between December 2002 and July 2003
MAT8Photograph of a Self Opening Laptop Style Calculator
MAT9Email from Mr Thomas to Gary Layton of Australian Springs dated 4 June 2003
MAT10Autocad files attached with Exhibit MAT9 to explain the intent of damping mechanism
MAT11JPEG image showing the lid in position in the body moulding
MAT12Email from Mr Thomas to Sunbeam’s Chinese Manufacturer dated 25 November 2003 and the attached data sheet
MAT13Image from the pilot run of the manufacture of Sunbeam KE4500 kettle dated January 2004
MAT14Design Registration AU152838S for Sunbeam KE4500 kettle
MAT15Invoices showing dispatch of Sunbeam KE4500 kettles to retailers
MAT16Extract taken from Morphy Richards Australia website on
10 September 2008 showing six versions of KT43687 kettleMAT17Kenwood’s instruction booklet for the SJ370 and SJ380 series kettles
MAT18A June 2003 newsletter from Kenwood to its ‘Kclub’ members featuring SJ370/380 kettle
The Thomas declaration mainly elaborates upon the design and development of the Sunbeam KE4500 kettle.
Mr Cockburn is the Managing Director and Senior Designer of Design Field Pty Ltd. The Cockburn declaration relies on the following exhibits in support of the opponent’s case:
PC1 Curriculum vitae of Mr Cockburn
PC2Extracts from a 2004 Domayne catalogue
PC3Extracts from a 2004 Good Guys catalogue
PC4Extracts from a 2004 Harvey Norman catalogue
PC5Extracts from a 2004 Myer catalogue
PC6Extracts from a 2004 Retravision catalogue
PC7Photographs of sample kettles provided to Mr Cockburn
PC8Photographs of Rowenta Brunch kettle
PC9Photographs of Rowenta Brunch kettle
PC10Photographs of Sunbeam KE4500 kettle
The Cockburn declaration mainly elaborates upon two items of prior use namely the Rowenta Brunch kettle and the Sunbeam KE4500 kettle.
Mr Edwards is a Senior Legal Associate with the patent attorney firm representing the opponent. The Edwards declaration puts into evidence the following exhibits in support of the opponent’s case:
HAE1A copy of Exhibit PC10 (photo ‘H’) of the Cockburn declaration without labels. The photo is of Sunbeam KE4500 sample taken from Sunbeam’s design workshop.
HAE2A copy of the receipt for the purchase of Sunbeam KE4500 kettle on 20 August 2008
HAE3A long exposure photograph of Sunbeam KE4500 kettle purchased on 20 September 2008
Mr Dower is the patent attorney for the opponent. The Dower declaration puts into evidence copies of the following twenty two patent specifications in support of the opponent’s case:
JCD1 UK Patent Application Number GB 2254539 A
JCD2 UK Patent Application Number GB 2312152 A
JCD3United States Patent Application Number
US 2002/0038804 A1JCD4 German Utility Model Number DE 29703089 U1
JCD5 German Patent Application Number DE 19730831 A1
JCD6United States Patent Number US 6172341 B1
JCD7 German Utility Model Number DE 20102349 U1
JCD8 German Patent Number DE 10357965 B3
JCD9United States Patent Number US 4342135
JCD10United States Patent Number US 4426752
JCD11 United States Patent Number US 4468836
JCD12United States Patent Number US 4513473
JCD13United States Patent Number US 4614004
JCD14United States Patent Number US 4638528
JCD15 United States Patent Number US 5001809
JCD16United States Patent Number US 5083343
JCD17 United States Patent Number US 5839548
JCD18Japanese Patent Application Number JP 2001-037630
JCD19 United States Patent Number US 6298960 B1
JCD20 European Patent Application Number EP 1217159 A2
JCD21United States Patent Application Number
US 2003/0228918 A1JCD22 United States Patent Number US 6662405 B2
The evidence in answer consists of a single statutory declaration from each of Mr Richard Hoare, Mr Andrew Crick and Ms Olwyn Balfour.
Mr Hoare has been the Director of Design and Innovation in Breville since 2002. He was previously employed by the opponent in a number of different roles where he was involved in design-related aspects of the business. The Hoare declaration relies on the following exhibits in support of the applicant’s case:
RH1Australian Patent Application Number 2005201507 C1
RH2Design drawings and photographs of a prototype of the Ikon kettle dated 25 August 2003 and 19 September 2003, taken from Breville’s records
RH3Email from Bryan McHutchison of Breville confirming his intent to buy and examine Sunbeam KE4500 kettle
RH4Promotional material relating to Sunbeam KE4500 kettle and Breville’s Ikon kettle
RH5Australian Standard AS 2070-1999, section 4.1 covering plastic materials and colourants
RH6Email correspondence between Breville and manufacturers of damping mechanisms
RH7Market research data from GfK providing an overview of sales figures for kettles in the Australian market from 2006 to 2009
RH8Email correspondence and product literature for Bodum IBIS kettle (launched around May 2007), the Philips HD4690 kettle (launched around early 2006) and the Magimix 1.7 litre kettle (launched around mid 2006)
RH9Translation of a page from Rowenta (Germany) website using Google translate service. This page was shown in German in Exhibit CW3 of the Ware declaration.
The Hoare declaration mainly elaborates upon the Breville’s “ikon project”, the Rowenta Brunch kettle and the Sunbeam KE4500 kettle. The Hoare declaration also rebuts some of the assertions made in the Ware and Thomas declarations.
Mr Andrew Crick is the Managing Director of Schremmer Crick Associates Pty Ltd which conducts an industrial design consultancy business in New South Wales. The Crick declaration relies on the following exhibits in support of the applicant’s case:
AC1Australian Patent Application Number 2005201507 B2
AC2Sample Sunbeam KE4500 kettle
AC3Guidelines for Expert Witnesses in Proceedings in the Federal Court of Australia
The Crick declaration mainly elaborates upon whether the Sunbeam KE4500 kettle includes a damping mechanism. Mr Crick also responds to some of the comments made in the Cockburn declaration.
Ms Balfour is a bookkeeper and administrative assistant with the patent attorney firm representing the applicant. The Balfour declaration puts into evidence the following exhibits in support of the applicant’s case
OB1Purchase receipt and tax invoice dated 9 January 2009 for three Sunbeam KE4500 kettles
OB2Copy of the packaging of a Sunbeam KE4500 kettle purchased on 9 January 2009
OB3Copy of the packaging of another Sunbeam KE4500 kettle purchased on 9 January 2009
Sunbeam did not file any evidence in reply.
Submissions at the hearing
During the hearing, Mr Lang indicated that the opponent only relied on the Sunbeam KE4500 Quantum Evo Kettle (“Sunbeam KE4500”) and the damping mechanism of the Rowenta
KE 80 Brunch Kettle (“Rowenta KE80”) for the purpose of novelty and inventive step respectively. He also indicated that the opponent did not press the grounds that the invention is not useful, the specification does not describe the invention fully, and that the claims are not clear and succinct. Therefore, I will not comment on the remaining prior art and the above grounds of opposition.
On my request, the opponent provided to me one sample each of the Sunbeam KE4500, Rowenta KE80 and Kenwood SJ380 kettles as exhibits. The applicant did not raise any objection to these exhibits.
I will provide the details of what is contained in the evidence, and the details of parties’ submissions, where relevant, later in my decision.
Decision
Onus of Proof
In proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd's Application [1979] RPC 523). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini Edison S.p.a. v Eastman Kodak (1971) 45 ALJR 593).
Furthermore, as a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992).
Claims Construction
In my view, there are three terms/features of the independent claim 1 which require analysis in determining the present matter. These terms/features are “damping mechanism”, “rotating” and “cooperating”.
In construing the above terms, I am guided by the rules of construction which state that the words of a specification should generally be given their ordinary English meaning (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478) except where a word or an expression has a special meaning in the relevant art, in which case the specialised meaning should be adopted (Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 41). I am also aware that a specification may indicate that a special meaning is to apply to a word (known as the Dictionary Principle, as reflected in British Thomson-Houston Company Ltd v Corona Lamp Works Ltd (1922) 39 RPC 49 at page 67).
Other rules of construction having relevance in this matter are that the specification must be read as a whole (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69), must be given a purposive construction rather than a purely literal one (Catnic Components Limited v Hill and Smith Limited (1981) FSR 60), and that where a claim is capable of more than one construction, then an absurd construction should be rejected in favour of an alternative construction (Henriksen v Tallon (1965) RPC 434).
There is no evidence before me which suggests that any of above three terms carry special meaning in the relevant art. Therefore, I will construe these terms according to the submissions made at the hearing, my understanding of their ordinary English meanings, and the information presented in the opposed specification as a whole.
For “damping mechanism”, Mr Lang directed my attention to the definitions of the verb “damp” given in The Macquarie Dictionary Online. It defines “damp” as meaning “8. to check or retard the energy, action, etc., of” and “9. to cause a decrease in amplitude of (an oscillation)”. He also referred me to the Oxford English Dictionary Online which defines the verb “damp” as meaning “to impose or to act as a resisting influence on (an oscillation or vibration of any kind), so that it is either progressively reduced in amplitude, or, if the resistance is sufficiently great, converted into non-oscillatory return to an equilibrium position”. He submitted that by reference to these definitions, a damping mechanism is one which “retards the action of”, or “acts as a resisting influence on” something.
In response, Mr Dimitriatis drew my attention to other definitions given in the above dictionaries and stated that some definitions encompass a substantive effect on the things being considered. He put the view that the “damping mechanism” must be something that has an appreciable or obvious effect, and that this was supported by the context in which the words “damping mechanism” appear in claim 1 and the rest of the specification. He particularly referred me to page 4 lines 13-15 of the specification where the damper effectively reduces the acceleration and velocity of the opening lid so that water droplets or condensate are not ejected from the underside of the lid.
I am inclined to agree that in the present context a damping mechanism is one which “retards the action of” or “acts as a resisting influence on” something. However, the above definition would mean that an ordinary hinge also qualifies as a damping mechanism because it retards the action of a moving part due to friction between its surfaces. Considering that the primary purpose of a hinge is to allow turning or pivoting of a part on a stationary frame, it will be absurd to call any hinge a damping mechanism just because the hinge exhibits some dampening effect. Analogously, the primary purpose of a damping mechanism is to retard the action of a moving part. Therefore, I consider that a damping mechanism is one which is primarily intended to retard the action of a moving part, however small that retarding action may be.
The Macquarie Dictionary (Third Edition) defines the term “rotate” as meaning “to cause to turn around like a wheel on its axis”. In my view the above definition implies that the whole wheel must turn around its axis and it does not include a situation where only one side of the wheel is turned or twisted while the other side is held stationary.
The Macquarie Dictionary (Third Edition) defines the term “cooperate” as meaning “to work or act together or jointly; unite in producing an effect”. From the above definition and my understanding of the sense in which the word “cooperate” is used, two separate entities are required to cooperate with each other.
I will have regard to the above constructions/conclusions whenever required.
Fair basis
The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69, 98-99 as being relevant to the consideration of fair basis is:
· whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
· whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge (1977) 180 CLR 236].
Mr Lang submitted that within the meaning of claim 1, the operation of the lid with one hand includes opening and closing it. Although one hand may be required to open the lid of the kettle as described in the specification, the other hand must be used to close it because the lid is biased in the open position. He argued that there is no real and reasonably clear disclosure of the
single-handed operation of the lid which includes closing it. Mr Dimitriatis, on the other hand, termed Mr Lang’s contention as misconceived and stated that the claim is entirely consistent with the body of the specification. He advocated that one needs to refer to the “operation of the lid” in the context of the claim and the specification, and that it only refers to opening the lid. Reading the opposed specification as a whole, I agree with the view put forward by Mr Dimitriatis. Therefore, I conclude that the claim is fairly based.Novelty
Law Relating to Novelty
Section 7 of the Patent Act 1990 provides that
(2) For the purpose of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than mentioned in paragraph (c)) made publicly available in a single document or through doing a single Act;
(b) prior art information (other than mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
The test for novelty has been discussed in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [ 2005] FCAFC 224 (see paragraphs 311 et seq) and Bristol-Myers Squibb Company v FH Faulding & Co Limited (2000) 97 FCR 524. As noted in both the decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement.”
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367).
However, as Pfizer (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim, there must be "clear and unmistakable" directions to the claimed invention. In that regard, the Full Court referred to three key decisions:
Canadian General Electric Co v Fada Radio Limited [1930] AC 97:
"it is not 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 contain clear and unmistakeable directions to use it."
General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 45:
"a signpost, however, clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
ICI Chemicals v Lubrizol Corp (2000) 106 FCR 214:
“.. skilled addressees are not required to rummage through the prior patentee's "flag locker" to find a "flag which the [prior patentee] possessed and could have planted.”
Novelty can however be found where a feature is not explicitly mentioned but nonetheless present as an inherent feature as an inevitable result of the disclosure. As noted in General Tire (supra) at page 486:
“if in carrying out the directions contained in a prior inventor's publication will inevitably result in something being made or done which, if the claim of the opposed specification were a claim of a valid patent, would constitute an infringement of that claim, then that claim would have been anticipated.”
In addition, as noted in the Pfizer (supra) decision, to deprive a claim of its novelty, a citation must be the same as the claimed invention for the purposes of "practical utility". In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure. The basic principle is explained in Hill v Evans (1862) 4 De G F & J 288; 45 ER 1195be where the court noted:
“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 something remains to be ascertained which is necessary for the useful application of the discovery that affords sufficient room for another valid patent.”
Novelty Determination in the Current Case
None of the parties made submissions that any of the features of the claims were not essential features. Therefore, I will proceed on the basis that all features of the claims are essential.
The Sunbeam KE4500 kettle (Exhibit AC2) is the only item of prior art advanced by the opponent as rendering the present invention not novel.
The Sunbeam KE4500 kettle is a product of the opponent and has a body, a lid and a handle. The lid is biased into an open position using springs interposed between the kettle’s body and the lid. The lid is retained in closed position by two latches which can be released by a button located on the handle. By reason of the location of the button, a person holding the handle with one hand is capable of opening the lid with the same hand by pressing the button.
Based on the evidence before me, I understand that there are two springs acting upon the lid of the Sunbeam KE4500 kettle. The springs are contained within two plastic “drums” (each drum open at one end, with a flange across their diameter at the other end), which in turn sit within “cup” mouldings at the ends of two pivot arms of the lid. The cup mouldings have slots to receive the ends of springs. One end of each spring is fixed to the flange-end of the drum while the other end of each spring is fixed in the slot provided in the cup moulding. When the lid is released by pressing the button on the handle, it opens as the mechanical energy stored in the springs is released as a rotational force.
Mr Thomas, the opponent’s witness, stated that the Sunbeam KE4500 was designed over an
18 month period over 2002-2003 and the design of the Sunbeam KE4500 was registered with
IP Australia on 19 August 2003 as Registration AU 152838S. Mr Thomas also stated that the first production date for the Sunbeam KE4500 was on 9 January 2004 with the deliveries dispatched to the retailers in Australia on 27 February 2004. None of this information was disputed by the applicant. I am, therefore, satisfied that the Sunbeam KE4500 was publicly available before the priority date of the claims of the opposed specification.Detailed submissions were made by both the parties on the point whether the Sunbeam KE4500 incorporates a damping mechanism.
Mr Lang referred me to the Thomas declaration and submitted that the Sunbeam KE4500 was designed to incorporate a damping mechanism, the mechanism being a rotary damper having silicon grease to produce concentric friction. The Cockburn declaration also confirms that the motion of the lid in the Sunbeam KE4500 was controlled due to the grease that surrounds the two drums when they sit in the cups. In support of his contention, Mr Lang also directed my attention to the statement of Mr Hoare, the applicant’s witness, who stated that they found the presence of some components in the Sunbeam KE4500 that looked to be an attempt to add something more than a plastic hinge. Mr Lang also took me to the statement of Mr Crick that the opening motion of the lid was not slowed or controlled in any significant way, arguing that the above statement implied that some damping effect was observed in the Sunbeam KE4500.
On the contrary, Mr Dimitriatis argued that the Sunbeam KE4500 did not incorporate the feature of a damping mechanism as claimed. He directed my attention to Mr Crick’s statement that the use of a damping mechanism entails a proposition that the motion of the lid be dampened to an extent that would be readily perceptible to the ordinary consumer or user of such a vessel. He submitted that when Mr Cockburn originally evaluated the Sunbeam KE4500, it was not apparent to him that the motion of the lid was controlled. Mr Dimitriatis described the later conclusion of Mr Cockburn that the Sunbeam KE4500 includes, in its own context, a damping mechanism as luke warm. Taking the matter further, Mr Dimitriatis argued that even if there was an attempt by Sunbeam to incorporate some form of damping into the opening mechanism of the Sunbeam KE4500, it was plainly ineffective and did not constitute a damping mechanism. Mr Dimitriatis also submitted that the opponent does not promote its Sunbeam KE4500 kettle as having a lid dampening feature.
Based on the Thomas declaration, I am satisfied that the Sunbeam KE4500 was designed to incorporate a damping mechanism. Considering the statements of the witnesses from both the parties, I am also convinced that the motion of the lid of the above kettle is somewhat controlled due to this mechanism, but not readily perceptible. I have already given my understanding of the words “damping mechanism” under the heading “Claims construction” and based on that I cannot accept that the Sunbeam KE4500 would cease to have a damping mechanism just because its damping mechanism is not readily perceptible or the product is not being promoted as having a lid dampening feature. Therefore, I conclude that the Sunbeam KE4500 incorporates a damping mechanism within the meaning of claim 1.
Having concluded the presence of a damping mechanism in the Sunbeam KE4500, I will now consider the remaining integers of claim 1.
Mr Lang referred me to the Cockburn declaration and submitted that the Sunbeam KE4500 embodies the remaining integers of claim 1. He further submitted that in relation to the one-handed opening feature, the Sunbeam KE4500 has a button activating the lid located on the handle while in relation to the damping mechanism, the Sunbeam KE4500 has a stationary cavity and a rotating part. In response, Mr Dimitriatis submitted that the Sunbeam KE4500 did not include the feature that “the damping mechanism further comprises a stationary cavity and a rotating part, the rotating part cooperating with a section carried by the lid” as defined in claim 1.
Regarding the above feature, Mr Cockburn, the opponent’s witness, stated that if the body of the kettle is taken as a reference then a drum formed a stationary cavity, and a cup which is a part of the lower lid moulding formed a rotating part. He also put the view that a spring is a second rotating part of the damping mechanism and that one end of the spring fits into the slot within the cup which is a part of the lower lid moulding. Mr Cockburn answered in affirmative to the question whether the rotating part cooperates with a section carried by the lid in both the cases.
In response, Mr Dimitriatis argued that a spring could not be considered as a rotating part in the above mechanism because one end of the spring is fixed, and that the only rotating parts in the above mechanism are the cups. He further argued that the cups do not cooperate with a section carried by the lid as defined in claim 1 because the cups are the integral parts of the sections carried by the lid.
Based on my construction of the terms “rotating” and “cooperating”, I consider that the cups are the only rotating parts in the damping mechanism of the Sunbeam KE4500 and that they do not cooperate with a section carried by the lid within the meaning of claim 1. In view of this, I find that claim 1 is novel in light of the Sunbeam KE4500 kettle. The remaining claims of the opposed specification are appended to claim 1 and hence are also novel.
Inventive Step
Law Relating to Inventive Step
Section 7 of the Patent Act 1990 provides that
(2) For the purpose of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the 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 mentioned in subsection (2) 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.
The High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 confirmed that “obvious” means “very plain” as stated by the English Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd where it was said:
"'Obvious' is, after all, a much-used word and it does not seem to [us] that there is any need to go beyond the primary dictionary meaning of 'very plain'.”
A person skilled in the art is a non-inventive worker who is not overly qualified and has a practical interest in the subject matter of the invention. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242, Finkelstein J stated:
"Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected.”
While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Common General Knowledge
As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to the person skilled in the art. A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.
Approach Used to Assess Inventive Step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"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.”
More recently, the High Court in Aktiebolaget Hassle (supra) referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the `Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances which includes a knowledge of all the relevant prior art and of the facts of the nature and success of [compound], directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
However, in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21, the High Court advised caution with the use of a “problem solution approach” in combination patents. The High Court observed:
“Such developments were considered and distinguished in Alphapharm. This Court rejected confining the question of obviousness to a "problem and solution" approach, particularly with a combination patent. This should not be misconstrued. The "problem and solution" approach may overcome the difficulties of an ex post facto analysis of an invention, which may be unhelpful in resolving the question of obviousness. However, it is worth repeating that the "problem and solution" approach may be particularly unfair to an inventor of a combination, or to an inventor of a simple solution, especially as a small amount of ingenuity can sustain a patent in Australia. Ingenuity may lie in an idea for overcoming a practical difficulty in circumstances where a difficulty with a product consisting of a known set of integers is common general knowledge.” (references omitted).
Inventive Step Determination in the Current Case
None of the parties advocated the use of a “problem solution approach” for assessing inventive step in the current case. Mr Dimitriatis submitted that the invention is a combination and the question is whether the combination, not each integer, is obvious. I agree that the opposed specification is concerned with a combination patent, and note that for the opposition to succeed, it will not be sufficient to just establish that the integers of the claimed invention were known at the priority date. The opponent will clearly need to show that no inventive ingenuity existed in combining those integers to arrive at the claimed invention.
The opponent submitted that the claimed invention would have been obvious to a person skilled in the relevant art in the light of common general knowledge and the Rowenta KE80 damping mechanism.
Before determining the inventive step, I will identify the person skilled in the art and the common general knowledge of that person at the priority date of the claims of the opposed specification. I will also determine whether Rowenta KE80 would have been ascertained, understood and regarded as relevant by the skilled addressee.
The person skilled in the art
Mr Lang submitted that the relevant skilled person is a designer of small electrical appliances. In the absence of any contrary suggestion from Mr Dimitriatis, I regard the person skilled in the art as one with knowledge of designing small electrical appliances.
The common general knowledge in the art
Based on the declarations filed by the parties, I am of the view that the following were common general knowledge in the art in Australia before the priority date of the claims of the opposed specification:
1.Vessels, such as kettles, with hinged lids.
2.Hinged lids biased to the open position using a spring.
3.Hinged lids biased to the open position using a spring and retained in the closed position by a latch.
4.The latch which could be released by an actuator button.
5.An actuator button located on or adjacent to a handle so that a person holding the handle with one hand could open the lid by pressing the button using the same hand with which the person was holding he handle.
Rowenta KE80 ascertained, understood and regarded as relevant by the skilled addressee
Based on the evidence before me, I understand that the Rowenta KE80 kettle is a product of Rowenta Inc. and includes a body, a lid and a handle. The lid is biased into an open position using a spring interposed between the kettle’s body and the lid. The lid is retained in closed position by a latch which can be released by a button located on the upper surface of the lid. The lid has a damped action and a bar having teeth on one side connects the lid with the body. The teeth on the bar engage with a cogwheel which is a part of a rotary damper attached to the body of the kettle. When released using the button on its upper surface, the lid opens slowly and smoothly to its fully open position without snapping against a mechanical stop.
Mr Lang submitted that Rowenta’s German website confirms that the Rowenta KE80 was available from June 2002. He further submitted that Mr Ware, the opponent’s witness, observed the Rowenta KE80 during his overseas trip in January 2003 either at a tradeshow or during a store visit and was impressed with its soft opening lid. Soon afterwards, Mr Ware requested a sample of the Rowenta KE80 through Pulse and provided it to Mr Thomas in February 2003. Of immediate interest to Mr Thomas was the “soft opening motion of the lid” and he disassembled the kettle and took a series of photograph, dated 18 February 2003. Mr Lang contended that attending international trade fairs and retail stores on overseas trips was a routine exercise in the industry to inspect the products displayed by competitors, and that the ascertainment of Rowenta KE80 and its features represents nothing but routine steps which could be expected to have been undertaken by designers in keeping abreast of the market at that time.
Mr Hoare, the applicant’s witness, stated that he first became aware of the Rowenta KE80 at a trade fair in either February or March 2004 during his overseas visit to three trade fairs. He did not notice anything of particular interest in the product except its external appearance. He further stated that he was unable to get close to or handle the product samples, because the staff at the Rowenta stand were endeavouring to ensure that only customers and not competitors examined the products. Mr Hoare also stated that he did not encounter the Rowenta KE80 on any of his store visits in February and March 2004, however those visits were essentially devoted to non-electric homeware products. He also stated that to his knowledge, the Rowenta KE80 was not sold in Australia prior to April 2004 and nor has it been sold in Australia since that time.
Based on the declarations from both the parties, I am convinced that it was a routine activity in the small appliances industry for the designers to visit trade fairs and retail stores to inspect the features of competitors’ products. While Mr Ware was able to ascertain the damping mechanism of Rowenta KE80 at a trade fair, Mr Hoare was unable to do so because he could not get close to the product. In my view, it would be well established that exhibitors at trade fairs are keen to demonstrate the features of their products to the people who are present at their stands irrespective of who they are. While competitors may not be able to handle and examine a product personally, they would have the opportunity to watch the demonstrations carried out by the respective stand operators. In the present case, my expectation is that while being demonstrated, a soft opening lid of the Rowenta KE80 would have been clearly visible to a competitor. In view of this, I am satisfied that the Rowenta KE80 damping mechanism could have reasonably been ascertained, understood and regarded as relevant by the skilled addressee.
Inventive step in light of the common general knowledge only
Mr Lang did not argue that the claimed invention was not inventive in light of common general knowledge alone in the art in Australia. Furthermore, there is no evidence before me suggesting that vessels with lid damping mechanism were common general knowledge in the art in Australia before the priority date of the claims of the opposed specification. Therefore, I can not find the claims to be lacking inventive step on this ground.
Inventive step in light of the prior art information & common general knowledge
Mr Lang submitted that a designer observing the soft opening mechanism of the Rowenta KE80 before the priority date of the claims of the opposed specification would have considered that to be a desirable feature. He stated that if Mr Cockburn were designing a kettle in April 2004, then having reviewed the range of kettles which he had been provided, including the Rowenta KE80, he would have incorporated both the single-handed opening feature and the soft opening lid in his design.
Taking the matter further, Mr Lang contended that having observed the Rowenta KE80 in 2003, Mr Thomas decided to incorporate a form of damping into the Sunbeam KE4500. However, because of certain constraints applying at that time to the design of Sunbeam KE4500, he did not incorporate a rack and pinion mechanism used in the Rowenta KE80, but instead developed a hinged damper. Mr Lang submitted that had Mr Thomas been free to adapt the design to use a rack and pinion mechanism, it may be safely inferred that he would have no difficulty in doing so, based upon the Rowenta KE80 and his knowledge of such a mechanism, and where to source them.
Mr Dimitriatis criticized the evidence of Mr Cockburn stating that the artificiality of the exercise engaged in by him is not reflective of obviousness. For his exercise, Mr Cockburn had to engage in a detailed survey of numerous kettles available on the market for the purpose of identifying features rather than proceeding from his knowledge of the design of electric kettles and their typical features. Subsequently, Mr Cockburn was provided with a sample of the Rowenta KE80 and after inspecting the sample, he referred to the dampened opening of the lid as a feature he was impressed with. Mr Cockburn was then asked to revisit his earlier conclusion as to features he would adopt from the Rowenta KE80 in his hypothetical design for a new kettle. Mr Dimitriatis stated that even then, Mr Cockburn’s conclusion is equivocal and does not indicate that he would have adopted the mechanism from the Rowenta KE80.
In relation to the Thomas declaration, Mr Dimitriatis submitted that the opponent’s own evidence suggests that it tried and failed to produce a design for a kettle that incorporated the feature of a damping mechanism in its project that led to the Sunbeam KE4500. He further submitted that difficulties were experienced and the result was not a damping mechanism in accordance with the claims.
In regard to the evidence of Mr Cockburn, I consider that the approach taken by the opponent was incorrect. In my view, it is tantamount to having led the skilled addressee and encouraged him to exercise ingenuity. For example, Mr Cockburn was asked to explain any additional features he would have taken from the Rowenta KE80 in his hypothetical design of a new kettle. Mr Cockburn stated that he would have conducted an analysis of the lid opening mechanism of Rowenta KE80, not with the intention of copying it, but with the intention of bettering it for the client. This seemingly indicates that Mr Cockburn was putting a high degree of thought into advancing kettle designs. On the contrary, it is noteworthy here that neither Mr Cockburn nor Mr Thomas categorically declared that it would have been obvious to a PSA to have taken the Rowenta KE80 kettle and as a matter of routine incorporated the single-handed opening feature.
I have found that there is insufficient evidence to establish that claim 1 lacks an inventive step in light of common general knowledge and the Rowenta KE80 damping mechanism. Therefore, I conclude that the claims of the opposed specification are inventive.
Manner of Manufacture
Section 18 of the Patent Act 1990 provides that:
(2) Subject to subsection (2), an invention is a patentable invention for the purpose of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
The law as to manner of manufacture has been set out in the High Court decision of NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 32 IPR 449 and confirmed in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 40 IPR 243, and in the Full Federal Court decision of Bristol-Myers Squibb Company v F.H. Faulding & Co. Ltd (2000) 46 IPR 553.
The opponent submitted that on the face of the specification, claim 1 is for nothing but a new use of known features, and is accordingly not a manner of manufacture. In my view, the above contention is without any basis. I agree with the applicant that the invention is a combination of features and it does not matter that the individual features, or some of them were known. I have already found the claims to be novel and inventive, and on this basis the opponent’s argument cannot be sustained.
I find that the invention is clearly a manner of manufacture as required by paragraph 18(1)(a) of the Patents Act 1990.
Conclusion
The opponent does not succeed on any of the grounds of opposition.
I direct that the application proceed to sealing unless the Commissioner is served with a notice of appeal within 28 days from the date of this decision.
Costs
The award of costs is a discretionary matter. It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. I have found that the opponent has been unsuccessful in all respects. I therefore award costs in accordance with Schedule 8 against the opponent.
Dr S. K. Aggarwal
Delegate of the Commissioner of Patents
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