Britax Childcare Pty Ltd v HBG IP Holding Pty Limited

[2019] APO 31

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Britax Childcare Pty Ltd v HBG IP Holding Pty Limited [2019] APO 31

Patent Application:                2015200846

Title:A child restraint for a vehicle

Patent Applicant:                   HBG IP Holding Pty Limited

Opponent:  Britax Childcare Pty Ltd

Delegate:  O L Haggar

Decision Date:  8 July 2019

Hearing Date:  19 February 2019 in Canberra

Catchwords:  PATENTS – opposition to the grant of a patent – construction –  whether the claims when read in context are limited to a particular type of child safety seat – whether the specification when read in light of common general knowledge implicitly discloses certain industry standards – novelty – disclosure of photographs as evidence of alleged anticipatory use – inventive step – usefulness –  disclosure – support – opposition unsuccessful on all grounds  –  costs awarded

Representation:  Counsel for the applicant:  Andrew Fox

Patent attorney for the applicant:  Kerry Chrysiliou of Chrysiliou IP

Counsel for the opponent: Ian Horak 

Patent attorney for the opponent: Anthony Lee and Phillip Boehm of Madderns   

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2015200846

Title:A child restraint for a vehicle

Patent Applicant:                   HBG IP Holding Pty Limited

Date of Decision:                   8 July 2019

DECISION

I dismiss the opposition, and award costs according to Schedule 8 against Britax Childcare Pty Ltd.  Subject to any appeal, I direct that the application proceed to grant.

BACKGROUND

1. Patent application 2015200846 (the application) was filed by Infa-Secure Pty Ltd (Infa) on 19 February 2015 and is now proceeding in the name of HBG IP Holding Pty Limited (HBG) following a transfer of ownership.  The application is a divisional application of application 2012211518 which itself is a divisional application of application 2011221355.  The application is also the parent application of divisional application 2017200566 and divisional innovation patent 2016101119.  The earliest claimed priority date is 6 September 2011.  

1. The application was advertised as accepted on 27 October 2016.  Britax Childcare Pty Ltd (Britax) filed a notice of opposition to the grant of a patent on 27 January 2017 and a statement of grounds and particulars (SGP) on 27 April 2017.  The normal evidentiary stages were completed on 22 December 2017.  On 30 January 2018 HBG requested that certain evidence filed in relation to parallel opposition proceedings be introduced into the present opposition under regulation 5.23.  After an exchange of correspondence, the parties were advised by letter dated 19 June 2018 that the Commissioner intended to invoke regulation 5.23 as requested by HBG and that Britax was accordingly afforded the opportunity to respond.  In the event, Britax filed responding evidence on 19 July 2018.

1. The opposition was heard in Canberra on 19 February 2019.  Both parties appeared in person.  On 5 February Britax filed its outline of submissions (OS).  HBG filed its outline of submissions (AS) one week later.

THE SPECIFICATION

Background to the present invention

1. The specification indicates that the present invention relates to a child restraint, and more particularly to a booster seat, for supporting a child travelling in a vehicle.

1. The specification explains that a variety of child restraints have been developed to improve the safety of children travelling in vehicles, with most child restraints consisting of a seat or chair that is supported on a rear seat of the vehicle.  Type A seats typically refer to rear facing seats or capsules suitable for accommodating babies/infants up to around 6 months of age and/or 70 cm in length and up to 12 kg.  Type B seats typically refer to forward facing seats used to accommodate toddlers and young children from approximately 6 months to 4 years, or from 8 to 18 kg. 

1. Type E or booster seats are typically designed for a child who has outgrown a Type B seat but is too small to safely use a vehicle seat belt as the sole means of restraint.  The term “booster seat” is descriptive of the function of the seat, that is, to elevate or “boost” the child above the surface of the vehicle seat such that the seat belt can be extended across the child in a safe manner.  Early booster seat designs include cushions or pedestals that are placed on the vehicle seat.  The vehicle seat belt is then employed to restrain the child in position upon the cushion or pedestal, with the lap belt portion of the seat belt extending across the child’s lap and the sash belt portion extending across the child’s chest.  However, while these early designs have proven effective in elevating the child above the surface of the vehicle seat, they offer little in the way of back support and side impact protection in the event of a vehicle accident.

1. This has in turn led to the development of booster seats having a shell and a backrest.  However, these seats have traditionally been manufactured from a lightweight plastic material, such as polystyrene, which has a tendency to split or become damaged under the forces associated with a vehicle accident, thereby significantly compromising the safety of the child.  The employment of sturdier and heavier materials, such as injection moulded plastics, to increase the strength of booster seats has also created safety concerns due to the potentially fatal effect of the forces exerted by a child accommodated in a heavier booster seat against the seat belt as a result of a vehicle accident.

1. The specification continues as follows:

“As such, in countries such as Australia regulations have been put in place to ensure that all booster seats over 2 kg in weight are tethered in position on the vehicle seat.  Whilst tethering has proven effective in improving the safety of the child and restraining movement of the booster seat on the surface of the vehicle seat, a tethered booster seat significantly reduces the usability and portable nature of the booster seat.  Hence, in order to remove or reposition the seat it is necessary to disengage the tether from the vehicle anchorage point which can be an onerous task to perform, especially in limited space as is often the case with vehicles.  Further, as tethered booster seats are traditionally rigid in shape and form, they are typically not readily able to be stored in a position that is out of the way, such as the trunk or boot of the vehicle when not in use.”

1. The specification next refers to the consequential need to provide a booster seat that has sufficient lightweight properties so as not to require the use of a tether, and yet has sufficient structural stability to withstand the forces associated with a vehicle accident.

The description

1. The specification describes various embodiments of the present invention with the aid of a series of drawings. The specification points out that (i) although described with particular reference to a booster seat, the present invention is equally applicable to a variety of other types of child safety seats such as a combination Type A/B or Type A/B/E seat,[1] and (ii) although the present invention has been described in relation to a seat shell, a cover will generally be employed for aesthetic purposes and to provide comfort to a child accommodated in the seat.[2]

   [1] Specification at page 6 lines 13-17

   [2] Specification at page 6 lines 23-25

1. The present invention is best understood by reference to Figures 6 and 7 of the drawings.

1. The booster seat 10 illustrated in these drawings comprises a base portion 12 having an upper surface 13 on which the child is seated.  A backrest portion 16 is pivotally mounted to the base portion along its rear edge which enables the booster seat to be easily folded and stored when not in use.  The backrest portion comprises a substantially planar support portion having an inner surface 17a configured to receive the back of a child, and an outer surface 17b configured to rest against the upright portion of the vehicle seat.  The backrest portion further comprises a pair of armrests 20 each of which acts to retain the lap belt portion of the vehicle seat belt (not shown) in position as it passes across the upper thighs of the child.

1. Side wings 18 and 19 extend laterally from opposing sides of the backrest portion.  Side wings 18 are located so as to provide protection to the child’s head and neck against side impact in the event of an accident.  Side wings 19 are located so as to provide side impact protection to the child’s upper body in the event of an accident.  In order to provide additional protection to the child, the side wings 18 may incorporate cushioning or padding, or an energy absorbing material such as polystyrene.  Furthermore, fins 29 may be formed adjacent the front edge of these side wings to provide added rigidity and stiffness.    

1. The present invention is said to remove the need for a tether strap or similar anchorage means typically employed with commercially available child restraints, by reducing the weight of the booster seat while maintaining structural integrity.

2. The base portion 12 is accordingly made from injection moulded polypropylene and provided with an array of holes 22 extending between its upper and lower surfaces.  The holes not only function to reduce the weight of the base portion, but also increase air flow through the booster seat for improved comfort.  A substantially flat portion 15 extends along a respective opposing side of the lower surface of the base portion and is configured to rest on the vehicle seat.  The base portion is relatively thin (around 1.5 to 5 mm).  A plurality of support fins or ribs (not shown) are therefore arranged to extend diagonally between the flat portion to strengthen the base portion so as to support the weight of the child without substantial deformation.

1. The backrest portion 16 is preferably made from an injection moulded plastic material, such as polypropylene, with a thickness of between 1 to 5 mm and is formed with an array of holes 26 that extend from the inner surface 17a to the outer surface 17b.  Similarly to the holes 22, the holes 26 serve to facilitate air flow through the booster seat as well as reducing its overall weight.  A plurality of support struts 28 may be provided along the outer surface 17b of the backrest portion.  Although shown as extending vertically in a parallel fashion, the struts may form a zig-zag or diagonal pattern.  The struts allow for an overall reduction in the wall thickness of the backrest portion while providing strength and rigidity, particularly in the event of a rear end accident.

1. It is convenient here to briefly refer to the alternative embodiments of the present invention that have been described.

1. In a first of these embodiments, the backrest portion comprises a frame portion made of a plastic material and having a central region in the form of a void or open space which receives a lightweight material such as an open mesh or netting for supporting the back and head region of the child.  The nature and extent of the lightweight material enables the weight of the backrest portion to be substantially reduced.  The base portion is similarly configured in that it comprises a frame portion having a central void or opening which receives a lightweight material for supporting the posterior of the child.

1. In another embodiment, the backrest portion comprises a body formed from a lightweight material such as polystyrene and a shell formed from a lightweight moulded plastic material that substantially encapsulates the body.  The shell provides improved strength to the body such that the likelihood of the body fracturing upon impact is substantially reduced.  The base portion likewise comprises a body formed from a lightweight material such as polystyrene which is substantially encapsulated by a shell formed from a lightweight moulded plastic material.  In order to provide additional structural integrity to the booster seat, the shell may be formed with regions of increased thickness and/or strengthening fins or struts that are received within the body of the backrest portion.

1. In yet another embodiment, the backrest portion comprises a back support surface and a pair of side wings preferably made from an injection moulded plastic material, such as polypropylene, and having a thickness of between 1 to 5 mm.  Perforations or holes may be formed in the back support surface and wings to further reduce the weight of the backrest portion.  In order to enhance its structural integrity, the back support surface is provided with vertically extending support members.  A structure may be provided at the rear of the backrest portion to provide further support.  The support structure may comprise a pair of vertical support members that extend from the base portion and are attached to horizontally extending supports at spaced intervals.  Horizontal supports may also be formed in the side wings of the backrest portion.  A similar support structure may be utilised in the base portion of the booster seat.  

2. The specification concludes by stating that:

“The child safety seat of the present invention represents a significant improvement over existing booster seats.  The seat is structurally designed to provide enhanced strength and resistance to deformation such that it is able to withstand significant forces, as may be expected in a vehicle accident.  The seat achieves this while remaining light weight and foldable so as to be simply installed/uninstalled in a vehicle as desired.  Such a seat provides enhanced usability as the seat can be readily transferred between vehicles without the need to fit and secure a tether strap.”

The claims

1. The specification ends with nineteen claims.  Claim 1 is the only independent claim and may for ease of reference be rewritten as follows:

(1.1) A child safety seat including:

(1.2) a base portion; and

(1.3) a backrest portion connected to the base portion, (1.4) the backrest portion including a top edge and a bottom edge, a front surface and a rear surface, and (1.5) a plurality of holes between the top and bottom edges, wherein

(1.6) the backrest portion includes a plurality of support members extending longitudinally along a substantial portion of the backrest, and

(1.7) the child safety seat has an overall weight of 2 kg or less.

1. This was essentially the approach adopted by the parties.  The complete set of claims is reproduced in the Annex to this decision.

THE OPPOSITION

Relevant law

1. Examination of the application was requested after 15 April 2013.  As a consequence, the present opposition is governed by the Patents Act 1990 as amended by the Intellectual Property LawsAmendment (Raising the Bar) Act 2012 (the Raising the Bar Act). This includes the amendments to sections 7 and 40, as well as subsection 60(3A).  Under the latter provision I may refuse the application if satisfied on the balance of probabilities that a ground of opposition to grant exists, and in this Britax carries the onus of proof.

Grounds of opposition

1. The SGP indicates that the grounds relied on by Britax are that (i) the claimed invention is not novel, (ii) the claimed invention does not involve an inventive step, (iii) the claimed invention is not useful, and (iv) the specification does not comply with subsections 40(2) and 40(3).

1. All grounds were pressed at the hearing.

The evidence

1. The parties have adduced evidence by a number of declarants as set out below.

Evidence in support

1. The evidence in support consists of:

• a declaration made by William Samuel Hunter on 27 July 2017 (Hunter 1) with Exhibits WSH-1 to WSH-24; and
• a declaration made by Michael Andrew Lumley on 27 July 2017 (Lumley 1) with Exhibits MAL-1 to MAL-5.

1. Mr Hunter is a qualified mechanical engineer and the founding principal of Bill Hunter Design Services, a mechanical engineering consultancy.  He has extensive mechanical design experience across several fields including transport, heavy engineering and medical devices.  In the early 1990s, Mr Hunter assisted Britax in the design of a new lightweight plastic moulded shell for a child safety seat (the Galaxy seat).[3]  He has also provided expert evidence in relation to a dispute between Britax and Infa concerning child safety seats which was the subject of proceedings brought before the Federal Court.[4]

   [3] Hunter 1 at [20]; Chrysiliou Annexure KC-4 at P-727

   [4] Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (Britax) [2012] FCA 467, Britax Childcare v Infa-Secure Pty Ltd(No 4) [2015] FCA 651

1. Mr Lumley is the founding principal of a consultancy which trades as Mike Lumley Consultancy (AUS).  Prior to forming his consultancy in August 2015, Mr Lumley was employed by Britax beginning as a Technical Manager in July 1987 before moving to the position of Technical Director which he held for over 10 years.  He is now retained by Britax as a Technical Consultant and in this capacity provides input to the Child Restraint Evaluation Program (CREP) which involves a consortium of government agencies and motorist organisations, including the National Roads & Motorists’ Association (NRMA) and Kidsafe Australia, dedicated to improving the safety of children travelling in vehicles.        

Evidence in answer

1. The evidence in answer consists of:

• a declaration made by Kerry Chrysiliou on 30 October (Chrysiliou) with Annexures KC-1 to KC-6;
• a declaration made by Richard Munro Horsfall on 30 October 2017 (Horsfall 1) with Annexures RH-1 to RH-28;
• a declaration made by Peter Damian Miller on 30 October 2017 (Miller) with Annexures PDM-1 to PDM-8;
• a declaration made by John Rafferty on 30 October 2017 (Rafferty) with Annexures JR-1 to JR-4; and
• a declaration made by Derek Wainohu on 30 October 2017 (Wainohu) with Annexures DW-1 to DW-3.

1. Ms Chrysiliou is a registered patent attorney and director of the firm that is representing HBG in the present opposition.

1. Mr Horsfall is an employee of HBG and one of two co-inventors named in the application.  He has considerable experience in the design, development, testing and compliance certification of vehicle child restraints to the standard governing child safety seats in Australia and New Zealand: AS/NZS 1754 (the Standard).   

1. Mr Miller was accredited as a fitter of vehicle child restraints in the early 2000s.  He is a Foundation Member of the Australian Child Restraint Resource Initiative (ACRI) which is a network specialising in providing individuals and organisations with child restraint training and support.  Between 2008 and 2015, Mr Miller managed a child restraint fitting facility in South Australia, and since then has been largely involved with the delivery of training to various government agencies including Kidsafe Australia’s nationally accredited training on child restraint installation.

1. Mr Rafferty is a toolmaker with over 20 years’ experience in the manufacturing industry.  In 2005 he started his own company, Elemental Manufacturing Pty Ltd, which provides services to manufacturing industries in Australia and elsewhere including the design of injection moulds and products for injection moulding.  In September 2011, his company was engaged by Infa to assist with the mould design for the “CS6010 project”.  CS6010 is the model number under which a commercial embodiment of the present invention was first released into the marketplace.[5]

   [5] Horsfall 1 at [12]

1. Mr Wainohu has been employed by HBG since March 2016.  From approximately November 2009 until 2013 his company, Restraint Research Pty Ltd, provided services to Infa in relation to child restraints.  Between 1977 and 2009, Mr Wainohu gained experience with a number of bodies, such as the Roads and Traffic Authority NSW (RTA Crashlab), in testing of occupant restraint products (including child restraints) in vehicles.  RTA Crashlab is the sole authority throughout Australia which is capable of testing child restraints for the purpose of certification under the Standard.   

Evidence in reply

1. The evidence in reply consists of:

• a declaration made by William Samuel Hunter on 22 December 2017 (Hunter 2) with Exhibit WSH-25; and
• a declaration made by Michael Andrew Lumley on 22 December 2017 (Lumley 2) with Exhibits MAL-6 and MAL-7.

New evidence

1. The new evidence introduced by HBG under regulation 5.23 consists of an extract comprising paragraphs [58] to [63] and Annexure RH-26 of a declaration made by Richard Munro Horsfall on 21 December 2017[6] (Horsfall 2).

   [6] Filed as evidence in answer in the opposition by Britax to application 2011200851

Responding evidence

1. The evidence filed by Britax in response to the new evidence consists of a declaration made by William Samuel Hunter on 19 July 2018 (Hunter 3) with Annexures WSH-26 and WSH-27.

Credibility

1. As can be seen from my broad overview of the evidence, Mr Hunter is the principal declarant for Britax.  Mr Horsfall is the principal declarant for HBG. 

1. Britax submits that where there is a difference between the evidence adduced by Mr Hunter on the one hand and Mr Horsfall on the other in relation to technical matters, the evidence of Mr Hunter is to be preferred.  It says that, in contrast to Mr Hunter, Mr Horsfall does not have tertiary qualifications in mechanical engineering and nor is he an independent expert.  It is also said that as Mr Horsfall is listed in the application as a joint inventor, the opinions he has expressed cannot be regarded as those of a non-inventive skilled person. 

1. HBG has rejected this submission.  It firstly argues that Mr Hunter is named as an inventor in a range of applications which, although unrelated to child restraints, nevertheless attest to his inventiveness and the consequential need to treat his evidence, particularly in relation to inventive step, with “considerable caution”.  HBG is especially critical of Mr Hunter’s limited practical experience in the design of child restraints as compared to the extensive industry knowledge of Mr Horsfall.  It emphasises the fact that his only relevant experience was gained when part of the project team working on the Galaxy seat in the early 1990s which is well before the priority date and did not involve a non-tethered seat of any type, let alone a booster seat.[7] 

   [7] Horsfall 1 at [58], [62]

1. The same criticism arose in Britax, and was addressed at [251]-[252] as follows:

“Mr Hunter has had some limited practical experience of designing and testing child safety seats and associated restraint systems before the earliest claimed priority date … However, putting aside this experience, Mr Hunter, as a trained and well-qualified mechanical engineer, is appropriately qualified to assist the Court by his evidence without more.  The relevant art falls within the scope of mechanical engineering, and his training and qualifications give Mr Hunter sufficient qualification.

Despite this, Infa attacked Mr Hunter’s qualification as a relevant addressee on the ground that his sole experience in child safety seats consisted of supervising and participating in a multi-person team involved in the adaptation of a single child seat for Britax in 1993.  Whether this is so or not, in view of Mr Hunter’s mechanical engineering experience and qualification, is of no consequence.”

1. Then at [253]-[254]:

“The priority date for the Tenth Patent is 1 August 1994 and the priority date for the First to Ninth Patents is 9 June 2004.  In my view, putting aside any issue as to inventiveness, Mr Hunter was qualified as a skilled addressee as at the priority date of the Tenth Patent.  His engineering qualifications and experience made him inherently capable of addressing design, manufacture and testing issues concerning child safety seats.  It can then at least be said that from his experience with Britax in 1993, he had specific industry knowledge and experience in the design, manufacture and testing of child safety seats, and the technology associated with the components of such seats.

Further, a span of 10 years between the priority date of the Tenth Patent and the First to Ninth Patents, of itself, cannot disqualify Mr Hunter as a skilled addressee given his consultancy experience as a skilled engineer.  He retained his inherent knowledge and capability as a consulting engineer and so was able to give competent and compelling evidence to assist the Court.”

1. The Court later disagreed with Mr Hunter on some issues of construction, but at no stage questioned the credibility of his evidence.  Nevertheless, it must be borne in mind for present purposes that the earliest priority date is 6 September 2011 which has the effect of considerably increasing the “span of 10 years” spoken of in Britax.  This in turn raises serious concerns as to whether Mr Hunter has remained sufficiently skilled in the field of child safety seats. 

1. As for Mr Horsfall, I have not been given any reason to suspect that the objectivity of his evidence has suffered as a result of his employment by HBG.  I make the same observation in connection with the evidence of Mr Lumley, and Messrs Miller, Rafferty and Wainohu, who are either employed by or have some other association with the respective parties.  This is also the case with Mr Hunter’s evidence even though his alleged independence is somewhat questionable.  Apart from his involvement in the Galaxy seat project, he has provided expert evidence on behalf of Britax in the Federal Court. 

1. And finally, I note that Messrs Hunter, Lumley and Horsfall have between them been listed as an inventor in numerous applications.  Mr Horsfall and Mr Lumley are inventors in the field of child safety seats.  However, it is clear from authority that the inventiveness of a person does not of itself disqualify them from giving evidence.  As observed in Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21; 188 ALR 280 at [44]:

“Mr Ahrens stated that he considered himself to be an inventor.  Firebelt contends that this diminishes the force of his evidence because he was not speaking as the uninventive notional addressee referred to in the authorities.  However, when a similar complaint was made to the trial judge, his Honour correctly observed:

‘It is true that Mr Ahrens considers himself to be an inventor, but that of itself cannot disqualify him from giving evidence as to obviousness.  To describe oneself as an inventor is merely to say something about one's capacity to identify and solve a problem.  The line between a competent technician, able to solve problems on the basis of an established state of knowledge in his or her industry and an inventor will not always be easily discerned.  Further, a person who is an inventor may well also perform non-inventive work.’"

1. As further observed in Britax at [242]:

“As a matter of general principle, I do not see the absolute need for a person to have a non-inventive quality before they can be qualified as a skilled addressee in giving evidence on construction of a patent.  Undoubtedly, an inventive person may have certain predilections in considering issues relating to the validity of a patent.  There may be a risk that evidence is tainted as a result of a witness applying hindsight or a particular bias.  However, even then, as with all witnesses who present evidence to a court of law, this can be evaluated in considering the evidence and the ultimate weight to be given to it.”

1. This observation is particularly apposite.  It is well settled that in the context of opposition proceedings, “the weighting and evaluating of evidence” is “the normal work of a delegate of the Commissioner of Patents”: see for example SNF (Australia) Pty Ltd v Ciba Speciality ChemicalsWater Treatments Limited [2016] APO 8 at [73]. This is simply indicative of the role exercised by the Commissioner as an administrative decision-maker (Minister for Immigration and Ethnic Affairs v Pochi [1980] FCA 85; 31 ALR 666 at 689). Thus in terms of the present opposition, where the evidence is conflicting it may be necessary for me to form an opinion based on the foregoing considerations whether to prefer the evidence of one declarant to that of another.

CONSTRUCTION

1. Before proceeding to consider the grounds of opposition pressed by Britax, it is necessary to deal with the competing views of the parties regarding the construction of the specification. 

Legal principles

1. The legal principles which are relevant to the task of construction are well established.  In Eli Lilly andCompany Limited v Apotex Pty Ltd [2013] FCA 214; 100 IPR 451 at [139], it was said that this task should be approached from the outset:

“with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent.  From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”

1. Some other principles are also material to the issues of construction presently in dispute:

• It is not legitimate to narrow or expand the boundaries of monopoly as fixed by the clear  words of a claim by adding to those words glosses drawn from other parts of the specification (Flexible SteelLacing Co v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [74]).

• There is a fine line between reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and common sense way and impermissibly limiting the clear words of the claim because the reader skilled in the art would be likely to apply those wide words only in a limited range of all of the situations that they would describe (SachtlerGmbH & Co KG v RE Miller Pty Ltd [2005] FCA 788; 65 IPR 605 at [42]).

• There is no warranty for adopting a method of construction that gives a patentee what it might have wished or intended to claim, rather than what the words of the relevant claim actually say.  While such an approach may be appropriate where there is a genuine ambiguity, it is not permissible to read an entire limiting integer into the claim as written, when the claim clearly does not contain it (H Lundbeck A/S Alphapharm Pty Ltd [2009] FCAFC 70 (Lundbeck) at [60]).

1. Ultimately, the construction of a specification, including the claims, is a question of law for the Court (Lundbeck at [53]). This underlying principle logically extends to the Commissioner.

The issues in dispute

1. Britax contends that HBG has improperly sought to limit the claimed invention to a child safety seat that complies with the 2010 edition of the Standard (AS/NZS 1754:2010).  This was the edition of the Standard in force at the priority date.[8]  HBG denies that it has attempted to read down the claims by importing glosses drawn from other parts of the specification.  It points out that Britax does not dispute that the 2010 edition of the Standard formed part of the common general knowledge in the field of the present invention.  HBG consequently argues that if construed in light of the prevailing common general knowledge, the skilled person “would understand that the child safety seat defined in the claims was in accordance with the 2010 Standard.”[9]   

   [8] Horsfall 1 at [11]

   [9] AS at [31]

1. A second issue in contention is whether the overall weight limitation of 2 kg stipulated by feature 1.7 of claim 1 does or does not apply if the claim is construed as including a cover for the child safety seat, but this issue has not proven to be of any consequence.

Consideration

1. The construction of the specification has been the subject of a good deal of debate between the parties.  Indeed, Britax views this issue as central to the present dispute.[10]  The construction for which HBG contends appears to originate from the evidence of Mr Horsfall that in 2011 he:

“designed a lightweight, versatile folding booster seat for 4-8 year old children.  I developed and compliance tested this booster in 2011 and 2012.  This was a totally new concept which combined the strength required to be certified to the 2010 edition of the Standard while still remaining below a 2 kg weight limit set by the Standard … The Application relates to this seat.”[11]

[10] OS at [34]

[11] Horsfall 1 at [6C(h)]

1. By way of background, Mr Horsfall compares the requirements of the 2010 edition of the Standard with those of the 2000 and 2004 editions as they relate to booster seats.  The 2010 edition imposed more rigorous requirements which included:

(a)A minimum seat backrest portion height of 630 mm as measured in accordance with the 2010 edition.

(b)The minimum height requirement meant that the upper region of the backrest portion of the seat needed to be sufficiently strengthened to resist rearward rotation during rear impact testing.

(c)The use of larger and more substantial side wings having energy attenuation properties and/or structural support means to comply with side impact testing.[12]

[12] Horsfall 1 at [25]-[33], [60]-[61]

1. In order to satisfy these requirements, it was necessary to add material to the test booster seat, thereby increasing its weight.  Mr Horsfall makes the point that while the 2010 edition increased the maximum weight for tethered booster seats to 7.5 kg in recognition of the need for additional material, no such compensation was provided in respect of the weight of non-tethered booster seats which remained at a maximum of 2 kg.  Mr Horsfall moves on from this background to again express the view that the present invention resides in a booster seat that is compliant with the 2010 edition of the Standard.  This is in fact a consistent theme of the evidence he has given in support of HBG’s defence of the opposition.

1. The position taken by HBG on construction is effectively grounded on an asserted equivalence between Mr Horsfall’s characterisation of the present invention, and the way in which the claims would be understood by the skilled person in light of the state of the common general knowledge as at the priority date. 

1. Turning then to the claimed invention, claim 1 is directed to a child safety seat.  On my reading of the evidence, this is a generic term of art used interchangeably with “child restraint” in the industry to signify a seat that has been specifically designed to protect children during vehicle accidents.  The ordinary meaning of “safety” imports some degree of structural integrity.  Claim 1 does not expressly refer to any particular type of child safety seat.  It needs to be remembered though that the words of a claim are not to be read in isolation from the context in which they are set having regard to the specification as a whole.  In the present case, the subject child safety seat is defined as having a maximum overall weight of 2 kg (feature 1.7).  Taken alone, this weight restriction appears arbitrary.  However, its significance becomes apparent from the penultimate paragraph of page 2 of the specification which indicates that industry regulations permit the weight of a booster seat to exceed 2 kg, provided the booster seat is tethered to a vehicle anchorage point.  After identifying the practical difficulties arising from the mandatory use of a tether, the specification immediately proceeds to set out what amounts to the promise of the present invention which is in part to fulfil the need for “a booster seat that has sufficient lightweight properties so as not to require the use of a tether”.  Logically, this can only mean a booster seat which in common with feature 1.7 of claim 1 has a weight of 2 kg or less.  

2. I therefore consider that when read in context claim 1 is in effect limited to a booster seat.  Britax has adopted the same construction[13].

   [13] OS at [26]; Hunter 2 at [8.1]

1. Claim 1 next defines the subject child safety seat as broadly comprising two components, namely, a base portion (feature 1.2) and a backrest portion (feature 1.3). Britax has submitted that these components are typical of those employed in the industry. While the evidence confirms as much, what is relevant for present purposes is that neither component has been defined using language that reflects the requirements of the 2010 edition of the Standard, such as the minimum height of the backrest portion or the “side wings” feature. The backrest portion is simply said to include a plurality of holes and longitudinal support members. Furthermore, and as observed by Mr Hunter, the first mention of wings does not occur until dependent claims 3 and 4,[14] and even here the wings are not defined with reference to industry compliance requirements.

   [14] Hunter 2 at [8.5], [15.4]

1. The specification does not assist HBG either.  Put briefly, the specification describes a number of preferred embodiments of the present invention in considerable detail, and yet does not refer to either the Standard in general or any edition of it.  The closest the specification comes in this respect is again found in the penultimate paragraph of page 2 which states that “in countries such as Australia regulations have been put in place to ensure that all booster seats over 2 kg in weight are tethered in position on the vehicle seat”.  In Mr Hunter’s submission, with which I agree:

“There is no reference to a particular national or regional standard and while Australia is given as one example, the passage above refers to regulations applying to multiple ‘countries’”.[15]

[15] Hunter 2 at [8.3]

1. As I understand HBG’s position, the issue that consequently arises is whether compliance with the 2010 edition of the Standard is a feature of the present invention that can be properly inferred from the prevailing common general knowledge.  A closely analogous issue arose in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 107 IPR 177 (AstraZeneca).  Although decided in the context of a novelty attack, the reasoning of the Full Court applies equally to the present situation where the central issue is again one of construction. 

1. In AstraZeneca the Court at first instance had held the patent under challenge to lack novelty in the face of a certain publication (“Watanabe”).  Watanabe disclosed the substance rosuvastatin, but not the particular dosage regime using rosuvastatin claimed in the challenged patent.  The Court at first instance nevertheless found that Watanabe anticipated the challenged patent because the skilled person would supply the missing feature from common general knowledge: the dosage regime claimed was the typical dosage regime for similar statins.  The Full Court upheld AstraZeneca’s appeal against this finding.  The Full Court concluded that the Court at first instance had impermissibly supplemented the disclosure of Watanabe by reference to information that was part of the common general knowledge, but not part of the disclosure which Watanabe itself made.

1. Likewise in Orion Corporation v Actavis Pty Ltd [2015] FCA 909, Zetco Pty Ltd v AustworldCommodities Pty Ltd (No 2) [2011] FCA 848, and Melbourne v Terry Fluid Controls Pty Ltd 28 IPR 302, the Court in essence held that when construing a document, common general knowledge cannot be used complementarily to arrive at a disclosure which the document of its own account does not make.

1. I agree with Britax that HBG has sought to use common general knowledge in the same way disapproved of by the above authorities.  The evidence establishes that the commercial embodiment of the present invention has received regulatory approval under the 2010 edition of the Standard.  However, as previously discussed, nothing to this effect is expressly or implicitly disclosed by the specification and claims.   

1. Accordingly, I do not accept the construction put forward by HBG.

1. I will now consider the grounds of opposition pressed by Britax.

NOVELTY

Statutory framework

1. Subsection 7(1) provides that an invention is taken to be novel when compared with the prior art base as it existed before the priority date unless it is not novel in the light of certain “kinds of information”, one of which is prior art information made publicly available in a single document or through doing a single act.

The test for novelty

1. A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [248]). It is well established that the general test for anticipation or want of novelty is the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd ([1977] HCA 19; 137 CLR 228 at [19]), and this test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co ([1990] FCA 40; 16 IPR 545 at [19]).

1. To meet this requirement, an alleged anticipatory prior publication must contain “clear and unmistakable directions” to produce the invention as claimed (Pfizer Overseas Pharmaceuticals v Eli Lilley andCompany [2005] FCAFC 224; 68 IPR 1 at [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the claimed invention, but would at least as likely be carried out in such a way that would not do so, the invention as claimed will not be anticipated (General Tire & Rubber Co v Firestone Tyre &Rubber Co Ltd [1972] RPC 457 at 485-486; 1A IPR 121 at 138, Novozymes A/S v Danisco A/S [2013] FCAFC 6; 99 IPR 417 at [177]).

1. The same level of disclosure is required of a drawing or photograph used as an alleged anticipation (Van der Lely NV v Bamfords Ltd [1963] RPC 61 at 71), or an alleged prior use of the invention as claimed (Insta Image Pty Ltd vKD Kanopy Australasia Pty Ltd [2008] FCAFC 139; 78 IPR 20 (Insta Image) at [151]; Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31; 318 ALR 483 (Damorgold) at [9]-[12]).

1. In addition, an alleged prior use “must be strictly proved” (Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]-[200]). As further elaborated in Damorgold at [9]:

“in order to establish lack of novelty through doing a single act, it is necessary to establish that the prior art information was made publicly available through the doing of that act … This is a matter of evidence.”  

The novelty challenge

1. The SGP indicates that Britax’s novelty challenge is based on the alleged disclosure of the invention as claimed by prior use as well as in the following prior specifications:

• CN 201646455U (D3) and English language translation (D3a)[16]
• US 2007/0246982 (D4)[17]
• EP 0770515 (D5)[18]
• US 2005/0264065 (D6)[19]
• US 2004/0090099 (D7)

[16] Hunter 1 Exhibits WSH-9 and WSH-10

[17] Hunter 1 Exhibit WSH-11

[18] Hunter 1 Exhibit WSH-12

[19] Hunter 1 Exhibit WSH-13

1. However, it transpired at the hearing that Britax does not place any reliance at all on D7, and only relies on D3 to D6 under the ground of inventive step.  This in effect means that Britax has confined its case on novelty to the alleged anticipatory use of the invention as claimed.

1. The entitlement of the application to its earliest claimed priority date of 6 September 2011 is not in dispute.

Consideration

1. Britax contends that the claimed invention is anticipated by the commercial distribution and sale of its product known as the Travel-Safe Child Booster Seat (the Travel-Safe seat) between 1986 and 2000.  

1. HBG has objected that this contention is not corroborated by contemporaneous documentation such as sales invoices or receipts.  I agree there is no evidence that strictly proves that any Travel-Safe seats were actually sold by Britax.  However, I readily accept that these products were at least made available for sale.  Mr Hunter and Mr Lumley have each exhibited a copy of an instruction manual titled “Travel-Safe Child Booster Seat – Instructions for Installation and Use” (the Manual).[20]  The title alone of the Manual clearly indicates that it had been published with a view to an eventual sale of the Travel-Safe seat which lends credence to Mr Lumley’s evidence that the handwritten date of 1 June 1998 on the exhibited copy of the Manual indicates that it had been checked and approved for use in production to be supplied with the seat as of that date.[21]  Importantly, the offer for sale meant that the Travel-Safe seat had been made “publicly available” in the relevant sense (Insta Image at [124]) before the priority date.

   [20] Hunter 1 WSH-8; Lumley 1 MAL-2 (designated as D2 in the SGP)

   [21] Lumley 1 at [36]

2. According to Mr Lumley, the Travel-Safe seat was formed from polypropylene and weighed less than 2 kg.  It comprised a base which in use was positioned on the seat of a vehicle, and a backrest pivotally connected to the base to allow the backrest to be folded forward from a vertical position where it rested against the upright portion of the vehicle seat to a horizontal position where it extended parallel to the base.  The Travel-Safe seat became the subject of design registration in September 1987.[22]  However, this early version of the seat incorporated an upper tether strap for connection to a vehicle anchorage point.[23]  

   [22] Hunter 1 Exhibit WSH-7 (designated as D1 in the SGP)

   [23] Lumley 1 at [39]

1. Mr Lumely further states that some issues with the tether strap were identified when assessing the performance of the Travel-Safe seat in accordance with the new dynamic testing requirements introduced by the 1995 edition of the Standard.  He then proceeds as follows:

“As the Travel-Safe seat weighed less than 2 kg, a practical solution to this dynamic testing issue was to remove the tether strap from the Travel-Safe seat as the 1995 Standard permitted booster seats weighing 2 kg or less to be used in vehicles without requiring an upper tether strap.”[24] 

[24] Lumley 1 at [42]

1. Mr Lumely is referring here to Clause 3.2.7 of the 1995 edition of the Standard (AS/NZS 1754:1995) which stipulates at paragraph (h) that:

“The maximum permissible mass of booster seats shall be not more than 2 kg except when attachment to an upper anchorage point is provided by an upper anchorage strap designed to restrain the back of the booster seat in a vehicle impact.”[25]

[25] Lumley 1 Exhibit MAL-4

1. The 2010 edition of the Standard mandates the same weight restriction.[26]  Furthermore, it will be recalled that the maximum weight of the child safety seat defined by claim 1 is correspondingly limited by feature 1.7 to 2 kg.

   [26] Horsfall 1 Annexure RH-6

1. Mr Lumely goes on to say that the Travel-Safe seat was later certified as meeting the requirements of the 1995 edition of the Standard and, consequently, supplied to retailers without a tether strap.  He adds that this is the version of the seat depicted in the Manual.  As will soon become apparent, Mr Lumley’s evidence regarding certification of the Travel-Safe seat is verified by contemporaneous documentation.

1. This brings me to the question of whether the offer for sale of the Travel-Safe seat amounted to the public disclosure of all of the essential features of the claimed invention.  No physical example of the Travel-Safe seat has been provided in evidence, and nor does the Manual disclose precise details of its structure.  Britax instead relies on a series of photographs which were provided to Mr Hunter for analysis by the patent attorney firm (Madderns) representing Britax in the present opposition. [27]

   [27] Hunter 1 Exhibit WSH-3; Lumley 1 Exhibit MAL-3 (designated as A1 in the SGP)

1. This state of affairs poses some initial difficulties for Britax.  Firstly, the photographs are undated but it seems most likely given the timing of Mr Hunter’s evidence that they were not taken until well after the priority date.  And secondly, Mr Lumley states that he has:

   “accessed and reviewed price lists from Britax official records which indicate that as of August 2000 the Travel-Safe seat ceased being supplied by Britax.  It is my expectation that it would have been at least a further 4-8 months before existing stock was sold out by retailers and I would have expected that the Travel-Safe seat would have been available for purchase by customers throughout at least calendar 2000.”[28]

   [28] Lumley 1 at [45]

1. The fact that all existing supplies of the Travel-Safe seat are said to have been sold within a relatively short period following its withdrawal from sale implies that the seat depicted in the photographs was never made available for purchase.  This would explain why the seat is evidently still in the possession of Britax, as well as its as-new appearance.  HBG has taken the matter further in submitting that the photographs merely depict a “specimen for test” which “lacks the certification which would be required for sale.”[29]  This submission is based on the evidence of Mr Miller that he:

“was requested by [Infa] to inspect, photograph and take measurements of a Travel-Safe seat located at the premises of Madderns … I visited those premises on 3 and 6 October 2017 … I noted that there were no Standards Certification stickers affixed to any part of [the seat].  The only stickers present were an orange Quality Assurance Services sticker numbered 200353 with the words ‘Specimen for Test’, as well as a white, hand written sticker …”[30]

[29] AS at [97]

[30] Miller at [13]

1. Both stickers are clearly visible in the photograph labelled TS02 showing the rear view of the seat.  Mr Lumley has confirmed that the photographs depict a specimen seat provided to RTA Crashlab for certification testing, and that the orange sticker observed by Mr Miller was issued by Quality Assurance Services Pty Ltd (QAS), the certifying authority at the time.[31]  He then exhibits a copy of QAS’ certification document for the Travel-Safe seat.[32]  As explained by Mr Lumley:  

“This is for certification of the Travel-Safe seat to AS/NZS 1754:1995 which was granted in April 1998.  [QAS] issued licences for product certification for the Standardsmark (the 5 ticks) … As can be seen from inspection of the certification document, the Travel-Safe seat is classified as a Type E seat.”

[31] Lumley 2 at [14]-[15]

[32] Lumley 2 Exhibit MAL-8

1. This evidence establishes that the Travel-Safe seat had been certified as conforming to the 1995 edition of the Standard in respect of booster seats, thereby authorising its release into the marketplace, and that certification was granted more than 10 years before the priority date.  I should also mention that the certification document referred to by Mr Lumley designates the goods on which the Standardsmark may be used as the Britax “Series 4000/95 Child Booster Seat” which largely corresponds with the series number identified in the Manual.  However, Mr Lumley’s evidence does not dispel the uncertainty as to whether the example of the Travel-Safe seat depicted in the photographs was itself offered for sale at any time.  This key evidentiary shortcoming assumes greater significance when considered in conjunction with Mr Hunter’s analysis of the photographs. 

1. Mr Hunter has set out the results of his analysis in an “integer table” in which he compares the features of the claimed invention with those which in his opinion are disclosed by the photographs. [33]  The table includes marked-up copies of the photographs which Mr Hunter says support the opinions he has expressed.  However, the manner in which Mr Hunter has conducted his analysis does not meet the level of stringency required to establish prior use.  The following principles relevantly emerge from the authorities:   

• The act must have resulted in disclosure of each and every one of the essential integers of the claim such that a person of ordinary skill in the art would at once perceive, understand and be able practically to apply the invention without making further experiments or gaining further information (Insta Image at [124]).
• The information that is made publicly available does not destroy novelty unless it extends to the invention so far as claimed in a claim.  That is, it must extend to each of the essential integers of the claim; a general idea of the mechanism of an invention is not sufficient (Damorgold at [11]).
• The issue is whether what the skilled addressee observes on inspection is sufficient to enable him or her to comprehend the complete invention (Insta Image at [151]).

[33] Hunter 1 Exhibit WSH-18

1. By contrast, Mr Hunter freely admits that he “was unable to assess the presence of some of [the integers of the claims] based on the Travel-Safe photos”.  This is not surprising at least as far as the weight requirement prescribed by feature 1.7 of claim 1 is concerned which clearly cannot be judged by the eye alone.  Mr Hunter was as a consequence “provided with the Travel-Safe seat depicted in the photos to complete this task”.  On completing his inspection of the seat, and then weighing it, Mr Hunter formed the opinion that the photographs disclose all of the features of the claimed invention.   

1. It is particularly important to remember that Britax relies on the disclosure of the photographs as evidence of anticipatory use.  It does not rely on physical evidence as such.  However, by Mr Hunter’s own admission, the photographs were not sufficiently informative to enable him to discern some of the features of the claimed invention.  It was only after inspecting the physical example of the Travel-Safe seat, which I again stress is not in evidence, for the express purpose of looking for the features “missing” from the photographs that Mr Hunter was able to deduce their presence.  This evidence shows that Mr Hunter’s analysis of the photographs was impermissibly informed by hindsight.  Most relevantly, it also establishes that the extent of the disclosure of the photographs does not satisfy the standard laid down by the authorities to which I have referred.

1. In view of the foregoing, the evidence for Britax does not on balance satisfy me that the photographs (i) depict a physical example of a Travel-Safe that was actually offered for sale and thus made publicly available and (ii) of themselves disclose all of the essential features of the claimed invention.

1. This ground of opposition accordingly does not succeed.

INVENTIVE STEP

Statutory framework

1. Subsection 7(2) provides that an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date, whether considered separately or together with the kinds of information mentioned in subsection 7(3).  As with subsection 7(1), this information includes prior art information made publicly available in a single document or through doing a single act.

1. It is apparent from subsection 7(2) that the question of whether a claimed invention is obvious (non-inventive) is to be determined in the light of the common general knowledge as it existed before the priority date, and by reference to the perspective of the person skilled in the relevant art.  This in turn necessitates an enquiry as to the identity of the skilled person and what information would have constituted the common general knowledge available to them. 

The person skilled in the relevant art

1. The person skilled in the relevant art (the PSA) is a skilled worker in the field of the invention who is not particularly imaginative or inventive (Alphapharm at [30]).  In Root Quality the PSA was generally said to be “the person who works in the art or science with which the invention is connected.”  As further explained at [71]:

“In Catnic Lord Diplock said (at 242) that skilled addressees are ‘those likely to have a practical interest in the subject matter of [the] invention’.  A variety of people may have that interest.  There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”

1. However, the PSA is not a real person, but an artificial construct that is used as a tool of analysis when making a determination on the question of inventive step.  As noted in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 257 CLR 356 at [23]:

"The notional person is not an avatar for expert witnesses whose testimony is accepted by the court.  It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step."

1. Britax has said very little as to the identity of the PSA for present purposes, but clearly draws heavily on the expertise of Mr Hunter in support of its inventive step challenge.[34]  HBG contends that as the present invention involves a new child safety seat design, rather than the modification of an existing design, the PSA “is most likely to be a team which comprises persons skilled in engineering or tool making, design of child safety seats, and have an intimate knowledge of the [2010 edition of the Standard] and knowledge of testing required for certification of child safety seats.”[35] 

100.I consider the PSA to be a person likely to have a practical interest in the design and/or construction of child safety seats, and can be taken to be a team whose combined skills are to be employed.  On this basis I accept that in view of their particular area of expertise, the declarants for both parties are in a position to provide evidence for the purposes of the opposition.  However, I again express my concerns as to whether Mr Hunter has remained sufficiently skilled in the field of child safety seats.  Furthermore, and as I have already made clear, where there is a conflict in the evidence I may need to determine which evidence should be given greater weight.

[34] OS at [13]

[35] AS at [43]

Common general knowledge

101.The notion of common general knowledge (CGK) was described in Minnesota Mining& Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9; 144 CLR 253 at 292 as involving:

“... 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.”

102.The CGK encompasses not only material that is retained in the memory of the PSA, but also material that the PSA knows of, and to which they might refer as a matter of course, or habitually consult.  This material could include, for example, standard texts and handbooks (ICIChemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]).

103.However, information does not constitute CGK merely because it might be found in a publication.  Rather, it must be shown that the information formed part of the CGK.  As observed for example in Alphapharm Pty Ltd v H Lundbeck A/S [2008] FCA 559; 76 IPR 618 at [221]:

“… it was held in Astra that information recorded in a document, even a document widely circulated within the art, is not part of general common knowledge merely because the skilled addressee could be expected to locate it.  The question is whether it is ‘generally accepted without question’ or ‘generally regarded as a good basis for further action’ by the bulk of those in the art.”

104.The state of the CGK is a question of fact which must be determined on the basis of expert evidence.

105.In the present case the evidence establishes that the following matters can be regarded as commonly known by those working in the relevant art:

• The Standard as revised from time to time, including the 1995 and 2010 editions

• All child safety seats offered for sale in Australia, whether manufactured locally or overseas, must be compliant with the applicable edition of the Standard[36]

[36] Horsfall 1 at [9], [13]; Lumley 1 at [24]

• The 2010 edition of the Standard was in force at the priority date
• Type E or booster seats, both tethered and non-tethered[37]

[37] Horsfall 1 at [22]

• The performance testing requirements prescribed by the 2010 edition of the Standard in respect of booster seats are more rigorous than those provided for in earlier editions, with the result that a booster seat certified as meeting the requirements of an earlier edition may not conform to the 2010 edition[38]

[38] Horsfall 1 at [14], [23]

• As with previous editions of the Standard, the 2010 edition allows booster seats to be installed without being restrained by a tether strap attached to a vehicle anchorage point, but only if the weight of the seat is no more than 2 kg

106.Furthermore, the specification states that polypropylene “has a proven application to child restraints and has been shown to withstand forces typical therewith”.[39]  The acknowledgement of prior art in a specification is an admission which can carry considerable weight.  As stated in Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316; 46 IPR 553 at [30]:

[39] Specification at page 9 lines 1-3

“If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court – or the Commissioner – would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the Act, part of ‘the common general knowledge as it existed in the patent area’.  In other words, what is disclosed in such terms may be taken as an admission to that effect.”

1. The expression “would ordinarily proceed” in the above statement means that the circumstances in any particular case must be assessed on their merits (Biessbarth GmbH v Snap-OnTechnologies Inc [2001] APO 20). In the present case I have not been provided with any reason to doubt whether the use of polypropylene in the manufacture of child restraints, due to its proven ability to withstand the forces associated with a vehicle accident, formed part of the CGK.

108.In addition, Mr Hunter has stated, with the apparent concurrence of Mr Horsfall, that expanded polystyrene foam (EPS) is commonly used in booster seats to reduce their weight.[40]  Mr Hunter also states that the use of ribbing is a standard technique for increasing the rigidity of many types of structural members, while the weight of such members can be reduced without compromising their rigidity by the inclusion of apertures.[41]  However, the evidence does not demonstrate that either of these techniques was commonly known among those engaged in the field of the present invention, and indeed the only example Mr Hunter has given of their practical implementation is “the reinforcement ribbing used in aircraft wings”. 

[40] Hunter 1 at [28.3]; Horsfall 1 at [77]

[41] Hunter 1 at [21], [23]

109.Britax does not assert that any one of the prior specifications on which it relies had assimilated into CGK.

Legal principles

110.The principles to be applied when assessing whether a claimed invention involves an inventive step were conveniently summarised in Albany Molecular Research Inc v Alphapharm Pty Ltd [2011] FCA 120; 90 IPR 457 at [152]:

“Armed with common general knowledge, and possibly also with one of the kinds of information referred to in s 7(3), the invention in question will have been obvious to the skilled person referred to in s 7(2) if he or she ‘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’: Wellcome Foundation Limited v VR Laboratories (Aust) PtyLtd (1981) 148 CLR 262, 286; Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 [Alphapharm], 432 [50]. The content of the concept of ‘a matter of routine’ approved by the High Court in the latter case was that provided by Graham J in Olin Mathieson ChemicalCorporation v Biorex Laboratories Ltd [1970] RPC 157, 187-188:

‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art ... directly be led as a matter of course to try [that which was invented under the patent in suit] ... in the expectation that it might well produce [the solution to the problem which gave rise to the invention in suit]?’”

111.However, this reformulation of the so-called “Cripps question” is not of universal application (Generic Health Pty Ltd v Bayer Pharma Aktiengsellschaft [2014] FCAFC 73 at [71]). Thus it has, for example, been said in Dynamite Games Pty Limited v Aruze Gaming Australia PtyLimited [2013] FCA 163 at [95] that as a precursor to an inventive step “there must be some difficulty overcome or some barrier crossed”.

112.Furthermore, if the claimed invention lies in a combination of features (as in the present case), the question is whether the combination as a whole, rather than a selection of one or some of the features, is obvious (Alphapharm at [41]). 

The inventive step challenge

113.Britax’s inventive step challenge is based on the CGK either considered separately or together with (i) prior use of the Travel-Safe seat, (ii) each one of D3 to D7 or (iii) each one of:

• US 6908151 (D8)[42]

[42] Hunter 1 Exhibit WSH-15

• US 2007/0236061 (D9)[43]

[43] Hunter 1 Exhibit WSH-16

114.The SGP also lists US 7229132 (D10) under this ground of opposition.  However, Britax has not had any further regard to D10 when pursuing its inventive step challenge.

Consideration

Inventive step in the light of CGK alone

115.As best understood, the case put by Britax primarily rests on the contention that the features of claim 1 were individually known by those working in the relevant art as at the priority date.[44]  As I have said with regard to feature 1.7, the evidence establishes that it was commonly known that the Standard placed a weight limitation of 2 kg or less on non-tethered booster seats.  However, as also said earlier, the evidence does not support the conclusion that features 1.5 and 1.6 had entered the body of CGK in the field of child safety seats.  Even if I were to assume otherwise, Britax has not provided any reasoning as to why the skilled person would as a matter of routine have selected all of the features of claim 1 and arrived at the combination it defines.  Indeed it seems to me that in dissecting claim 1 into its constituent features, Britax is impermissibly relying on hindsight analysis (Alphapharm at [21]).

[44] OS at [135]-[138]

116.In an alternative line of attack, Britax has briefly referred to the alleged distribution and sale of the Travel-Safe seat.  For reasons which I have discussed elsewhere in relation to the issue of prior use, I agree with HBG that “there is no satisfactory or cogent evidence that the Travel-Safe seat [depicted in the photographs exhibited by Mr Hunter] was distributed in Australia, let alone in sufficient quantities to form part of the common general knowledge”.[45]

[45] AS at [105]

117.This aspect of Britax’s inventive step challenge accordingly does not succeed.

Inventive step in the light of subsection 7(3) information and CGK

118.I note from the outset that Mr Horsfall has consistently dismissed the relevance of the subsection 7(3) information on which Britax relies for the reason that, in contrast to the present invention, it does not teach a product that qualifies as a “child safety seat” under the 2010 edition of the Standard.[46]  However, as I have already found when considering the issue of construction, Mr Horsfall’s characterisation of the present invention in these terms is misguided.  I have as a consequence discarded it from any further consideration.

[46] Horsfall 1 at e.g. [78]-[80], [131]

A1 and CGK

119.I should again explain that A1 consists of a series of photographs of a physical example of the Travel-Safe seat that were analysed by Mr Hunter for the purposes of Britax’s case on anticipation by prior use.

120.As a preliminary issue I note that Mr Hunter was asked in the instructions he received from Madderns to consider the question of “what routine modifications to the Travel Safe seat would you have tried as a matter of course at the relevant date that would have functioned to preserve or enhance the Travel Safe seat’s lightweight and structural properties?”[47]

[47] Hunter 1 Exhibit WSH-2

121.Mr Hunter states that he was able to determine that a number of the existing features of the Travel-Safe seat would function in this way, and that the modifications he would have made broadly fell into two categories, namely, making the seat lighter and improving the structural properties of the seat while still preserving the same weight.  More particularly, Mr Hunter says the introduction of ribbing in various forms is the first feature he would have tried with the expectation that he could improve the structural properties of the Travel-Safe seat without compromising its weight.  He also refers to the use of other features such as apertures.  However, I have already found that the evidence for Britax does not confirm that these features were CGK in the field of the present invention. 

122.Turning to the photographs themselves, the fundamental difficulty which Britax again faces is the lack of conclusive evidence that the physical example of the Travel-Safe seat they depict was ever made publicly available through an offer for sale.   It is further significant that Mr Hunter was unable to deduce the presence of all of the features of the claimed invention on the basis of the photographs alone.  Mr Hunter has not identified which features he could not derive from a visual examination of the photographs, and thus the starting point of his analysis of them is unknown, but one of the “missing” features is self-evidently the weight limitation imposed by feature 1.7 of claim 1.  He submits with respect to feature 1.6 that the photographs disclose a plurality of longitudinal flanges on the side edges of the backrest portion of the seat which function to stiffen or “support” it.  The photographs labelled as TS01 to TS03 between them show only a single flange which extends continuously along the top and side edges of the backrest portion.  As a matter of construction, I am not convinced that this unitary flange can be properly regarded as constituting a “plurality” of longitudinal support members in accordance with feature 1.6.  I would in any event question the consistency of Mr Hunter’s evidence since he subsequently appears to equate portions of the plurality of flanges allegedly disclosed by A1 with the distinct “wing” features of the subsidiary claims.[48]        

[48] Hunter 1 Exhibit WSH-18 Integers 3.2 and 4.2

123.On the basis of the foregoing, I find that Britax has failed to establish on balance that A1 when considered together with CGK would naturally lead the PSA to the claimed invention.  This aspect of Britax’s inventive step challenge accordingly does not succeed.

D3/D3a and CGK

124.D3a is a machine translation of D3 which is in the Chinese language, and has as a consequence presented considerable difficulties when attempting to assess the true extent of the disclosure of the source document.  Nevertheless, it is clear enough that D3 discloses a child safety seat comprising a backrest portion and a seat portion.  The backrest portion includes a plurality of holes.  The purpose of these holes is not stated, but on balance I accept that they would be understood as reducing the weight of the seat.  Mr Hunter surmises that Figure 3 “appears” to show a pair of longitudinally extending tubular elements which would serve to stiffen the backrest portion.[49]  For his part Mr Horsfall argues that in view of their location on the backrest portion, the tubular elements do not function as support members.[50]  I am not persuaded either way.  There is no reference to “tubular elements” or “support members” in D3a, and it is simply not possible from a visual inspection alone of the drawings accompanying D3 to determine conclusively what information they convey.

[49] Hunter 1 Exhibit WSH-19; Hunter 2 at [40]

[50] Horsfall 1 at [84] (2nd occurrence)

125.Mr Horsfall estimates that the weight of the child safety seat illustrated by D3 is 7.5 kg, and sets out a number of reasons related to its structure on which he has based this estimation.  Mr Hunter questions the accuracy of Mr Horsfall’s weight estimate, and posits (with added emphasis) that “D3 does not show a top tether strap and as such if the D3 seat was sold in Australia as a booster seat without a top tether strap the weight would need to be 2 kg or less to meet regulatory requirements”.[51] 

[51] Hunter 2 at [42]

126.This is a recurrent theme of the evidence provided by Mr Hunter concerning the ground of inventive step which for convenience will be dealt with now. 

127.In Mr Horsfall’s submission, the PSA would realise that:

“it would have been an impossible task to reduce the weight of D3, D4, D5, D6 and [D8 and D9] without totally redesigning the seats and omitting many of the features which are essential to the character of those seats as disclosed.”[52]

[52] Horsfall 1 at [131]

128.On the other hand, Mr Hunter makes no attempt to demonstrate why the PSA would be inclined to modify the child safety seat of D3 for introduction into the Australian market by reducing its weight to 2 kg or less and, most relevantly, how this objective could be achieved as a matter of course without significantly altering the essential character of the seat or compromising its structural integrity.  As aptly put by Mr Rafferty:

“it is [a] relatively straight-forward process to simply reduce the weight of any product assembly, but to both reduce the weight and maintain structural integrity is an extremely difficult and often impossible task that should be in no way underestimated.”[53]   

[53] Rafferty at [25]

129.I note with interest in this respect that application 2014202615[54], which was filed by Britax almost 3 years after the earliest priority date claimed by the present application, in similar vein acknowledges that producing a booster seat having sufficient strength and a maximum weight of 2 kg is not easily achieved.

[54] Horsfall 1 Annexure RH-24

130.For the reasons discussed above, I consider that Mr Hunter’s dismissal of the inventiveness of the claimed invention as not involving any technical difficulty to be overcome is pure supposition which lacks proper legal or evidentiary support.  It is also suggestive of the misuse of hindsight.

131.Britax’s inventive step challenge based on D3 when viewed together with CGK accordingly does not succeed.

D4 and CGK

132.This document discloses a child safety seat comprising a seat portion pivotally connected to a backrest portion, and a headrest portion adjustably mounted to the backrest portion.

133.This aspect of Britax’s inventive step challenge does not succeed for the very reasons I have set out in my consideration of D3.  It is to be also noted that the structural elements alleged by Mr Hunter to constitute longitudinal support members are located on the headrest portion of the child safety seat of D4, and not the backrest portion as defined by claim 1.[55]   Common sense indicates that because the headrest portion is adjustable in height relative to the backrest portion, these portions form two distinct components of the seat.

[55] Hunter 1 Exhibit WSH-20 Integer 1.6

D5 and CGK

134.This document discloses a child safety seat having a back portion integrally formed with a seat portion and in which both portions are provided with a plurality of holes to lighten the seat while retaining rigidity.  Mr Horsfall has submitted that the seat disclosed by D5 is a “Type A/B rearward/forward seat with integral harness”, and not a booster seat.[56]  This submission is consistent with the disclosure of D5 at column 1:

[56] Horsfall 1 at [104]

“The present invention pertains to safety chairs for children, and more particularly chairs designed to be fitted on a car seat either facing forwards or facing backwards … Said safety chairs are also provided with belts which are usually anchored onto the back of the chair body.  They pass through slots provided at various heights in the backrest and fasten the child in at the front.  The chair belts however must be adjusted for height as the child grows taller … A further object of the invention is to provide a safety chair whose backrest comprises longitudinal openings for the passage of chair belts which permit to accurately adjust such belts for height without being bound to use only few slots [sic] in fixed positions.”

135.Furthermore, Mr Horsfall’s submission has been effectively ignored by Mr Hunter who instead merely reiterates that “D5 does not show a top tether strap and as such if the D5 seat was sold in Australia as a booster seat without a top tether strap the weight would need to be 2 kg or less to meet regulatory requirements”.[57]  This is again purely conjectural and in this instance is also contrary to the teachings of D5 which are unrelated to a booster seat.  

[57] Hunter 2 at [61]

136.This aspect of Britax’s inventive step challenge accordingly does not succeed. 

D6 and CGK

137.This document discloses a child safety seat comprising a seat portion pivotally connected to a backrest portion.  Mr Horsfall submits that he recognises this seat as a Type A/B seat having an integral harness in which the “holes in the backrest are for the integral harness” and the “upper holes are for a carry strap”.[58]  Mr Hunter does not contest this submission, but nevertheless argues that from his knowledge:

[58] Horsfall 1 at [111]

“some Type B seats which are designed to have an integral harness can be capable of having that integral harness tucked away when the child grows old enough to start using the seat as a Type E seat.  When that occurs, the child starts using the Type B/E seat with a regular lap/sash seat belt.  I see no reason why that could not apply to D6.”[59] 

[59] Hunter 2 at [68]

138.However, as before, the position taken by Mr Hunter with respect to D6 is without proper legal or evidentiary basis.  This aspect of Britax’s inventive step challenge accordingly does not succeed.

D8 or D9 and CGK

139.The disclosure of these documents is closely similar, and I will therefore focus on D8 which discloses a booster seat having a seat portion pivotally connected to a backrest portion.  The backrest portion is comprised of a “fixed back member” and a “movable back member” which is adjustable in height relative to the fixed back member and includes a “head rest area”.

140.The fundamental shortcomings in Mr Hunter’s evidence considered to this point also emerge from his analysis of the disclosure of D8 (and, likewise, D9).[60]  It is not necessary to revisit those shortcomings here, but I make the following additional observations so far as his evidence relates to D8:

[60] Hunter 1 Exhibits WSH-23 and WSH-24

• All but one of the structural elements alleged by Mr Hunter to constitute longitudinal support members are not described as imparting strength to the fixed back member.  For example, item 82 shown in Figure 5 is simply referred to at column 6 lines 7-8 as an “instruction pouch”.
• The only express reference to structural integrity can be found in the final paragraph of column 5 which refers to the provision of ribs 135 in the fixed back member, but as easily seen in Figure 5 these ribs extend transversely and not longitudinally of the fixed back member.

141.Britax’s inventive step challenge based on D8 or D9 when viewed together with CGK accordingly does not succeed.

Summary

142.In view of the foregoing, the evidence for Britax does not on balance satisfy me that the claimed invention lacks an inventive step in the light of CGK, whether considered separately or together with any one of the items of subsection 7(3) information on which it relies.

143.This ground of opposition accordingly does not succeed.

USEFULNESS

Statutory framework

144.Subsection 18(1) relevantly provides that the invention, so far as claimed in any claim, must be useful.  Section 7A, which was introduced by the Raising the Bar Act, imposes the further requirement that:

1. For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

1. The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

145.As explained in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Explanatory Memorandum) at item 6:

“The item bolsters the existing requirement that the claimed invention be useful with the requirement that the invention has a specific, substantial and credible use.  The intent is that specific, substantial and credible be given the same meaning as is currently given by the US courts and the United States Patent and Trade Mark Office (USPTO).

Currently, the US courts interpret the terms as follows:

• ‘specific’ means a use specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’
• ‘substantial’ means the claimed invention does not require further research to identify or reasonably confirm a ‘real world use’. ‘An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research’.
• an asserted use will be ‘credible’ ‘unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.’”

Legal principles

146.In Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29; 117 IPR 210 at [121], it was stated that an assessment of the usefulness (“utility”) requirement involves an analysis of what the specification itself says is the promise of the invention, and whether by following the teaching of the specification the claimed invention does attain the result promised:

“Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?”

147.In Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162; 100 IPR 285 (Apotex (No 4)) at [352], the Court adopted the following submission as summarising the applicable principles:

“Section 18(1)(c) requires that an invention be ‘useful’.  This will be the case if the claimed invention does what it is intended by the patentee to do, in the sense of meeting the object or promise in the specification, and the end result obtained is itself useful.  For this purpose, the claims must be construed from the perspective of a skilled person in a common sense way, and not in a way that any such addressee would appreciate would lead to an unworkable result.

148.It is not necessary for the description in the specification to spell out matters which the skilled person could supply without the exercise of any inventive faculty in order to achieve the promise of the invention.  The patentee is entitled to assume that the reader has a reasonably competent knowledge of what was known before and reasonably competent skill in the practical mode of doing what was then known.  A purposeful adoption of an embodiment that would obviously lead to an unworkable or inferior result is not an appropriate way of testing utility.  It is also relevant to pay attention to the nature of the alleged ‘promise’ in the specification. Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification” (citations omitted).

The utility challenge

149.Britax has submitted that “the claims are so broad that they encompass configurations that would not work”.  It more specifically submits that “… the mere fact that the seat might weigh less than 2 kg, have supports and a plurality of holes in the backrest does not mean that it will [provide sufficient crash resistance on any measure]”. [61]   

[61] OS at [70]

Consideration 

150.Britax says that the present invention promises a child safety seat “which has sufficient structural stability to withstand forces associated with a vehicle accident.”[62]  Although unchallenged by HBG, this statement is not entirely consistent with the promise throughout the specification of a child safety seat that has been reduced in weight and yet remains structurally stable under the forces normally encountered in a vehicle accident. 

[62] OS at [67]

151.The illustrated embodiments of the present invention envisage a number of alternative arrangements for fulfilling this composite promise.  In terms of the invention defined by claim 1, these arrangements involve the provision of a plurality of holes in the backrest portion of the child safety seat (reflected in feature 1.5) to reduce the weight of the backrest portion, and a plurality of longitudinal support members that extend along a substantial portion of the backrest portion (reflected in feature 1.6) to ensure that its strength and rigidity are not compromised by the inclusion of the plurality of holes. 

152.The evidence adduced by Britax does not specifically address the ground of usefulness.  However, Mr Hunter has asserted following his analysis of the disclosure of the specification that “it is not clear to me how the invention described in Figures 9A to 9F would work”.[63]  This assertion lacks proper evidentiary support, but as in any event said in Apotex (No 4) it is not appropriate to test the requirement for usefulness on the basis of an embodiment that would obviously lead to an unworkable or inferior result.

[63] Hunter 2 at [102]

153.In view of the above, I am not satisfied on balance that the claimed invention is not useful.

154.This ground of opposition accordingly does not succeed.

DISCLOSURE

Statutory framework

155.Paragraph 40(2)(a) provides that the specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by the PSA.

Legal principles

156.This provision was introduced by the Raising the Bar Act.  In order to comply with the requirement of disclosure, the specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention (Novartis AG vJohnson& Johnson Medical Limited [2010] EWCA Civ 1039 at [74], Kirin-Amgen Inc v HoechstMarion Roussel [2004] UKHL 46; [2005] RPC 9 at [103]).

157.As stated by the Explanatory Memorandum at item 8:

"The item is intended to modify the wording of paragraph 40(2)(a) of the Act so as to require enablement across the full width of the claims … A specification that provides a single example of the invention may satisfy the requirements, but only where the skilled person can extend the teaching of the specification to produce the invention across the full width of the claims, without undue burden, or the need for further invention.  However, it is expected to be more likely that, where the claims are broad, the specification will need to give a number of examples or describe alternative embodiments or variations extending over the full scope of the claims.  This ensures that the monopoly extends only to that which could reasonably be said to be disclosed and no further.”

The disclosure challenge

158.Britax contends that the disclosure of the specification is insufficient in two respects:

“First when one considers that there is no general principle of application provided, and further, when particular structural embodiments are provided there is insufficient detail in those embodiments to make a seat of less than 2 kg and which would withstand forces of an accident without significant trial and experimentation.”[64]

[64] OS at [56]

Consideration

159.Britax says with regard to the first aspect of its disclosure challenge that the specification does not disclose an invention that involves a new principle.  Britax has argued that in claiming a child safety seat weighing 2 kg or less, the invention according to claim 1 is simply based on a commonly known requirement of the Standard and as such does not represent any advancement in the state of the relevant art.  However, HBG points out that Britax’s argument is misconceived since claim 1 is in fact directed to a particular combination of features, and not merely a child safety seat having an overall weight of 2 kg or less.     

160.The second aspect of Britax’s disclosure challenge arises from the evidence given by Mr Hunter following his consideration of the description of the preferred embodiments of the present invention.  As indicated under the ground of usefulness, the specification has described and illustrated a number of alternative embodiments for attaining a child safety seat that has been reduced in weight and yet remains structurally stable under the forces normally encountered in a vehicle accident.  The structural features disclosed by the specification as achieving this result have already been discussed at some length, but it is instructive to list some of them here:  

• Page 4, lines 4-5: Both the backrest portion and the base portion can be made from polypropylene (which has a proven application to child restraints: page 9, lines 1-3).
• In relation to the embodiment in Figures 4 to 7, at page 9, lines 30-32: “The backrest portion 16 is preferably made from injection moulded plastic material, such as polypropylene, with a thickness of around 1-5 mm, preferably around 3 mm.”

• In relation to the embodiment of Figures 4 to 7, at page 9 lines 25-28: “It will be appreciated that the configuration of the base portion as discussed above and as shown in Figures 4 and 5 provides for a lightweight support … and which also utilises materials that have been proven to withstand significant forces, as would be expected in a vehicle accident”.

• In relation to the embodiment in Figures 4 to 7, at page 9, lines 32-35: “An array of holes 26 are formed [in the backrest portion], arranged over a planar support surface 17.  The holes 26 extend through the backrest portion from the inner surface 17a to the outer surface 17b, as can be seen in Figure 7.”
• Figure 6 shows the child safety seat as having a number of large round holes in backrest portion 16.  Page 9, line 36 to page 10, line 3, disclose that one purpose of the holes is to “reduce the overall weight of the backrest by creating open spaces therein.”  Page 10, lines 3-9 proceed to disclose a variety of other forms of holes which could be used.

• Figure 7 shows the child safety seat having support struts (support members) on the backrest portion.  Page 10, lines 10 -23 disclose “three support struts 28 provided with the central support strut 28 extending along the central axis of the backrest 16, substantially the length of the backrest with the other two struts 28 equally spaced therefrom and having a shorter length … The struts 28 generally function to provide strength and rigidity to the backrest 16, particularly in the event of a rear end accident.  It will be appreciated that these struts allow for an overall reduction in the wall thickness of the backrest whilst maintaining the strength required in the event of an accident or other emergency.”  
• In the embodiment in Figures 10A to 10C, at page 13, lines 23-35, there is disclosure of a backrest portion comprising a back support surface and a pair of side wings being made from injection moulded polypropylene, with a thickness in the range between 1 and 5 mm, preferably 3 mm, with holes formed in the thin walls of the back support surface to further reduce its weight (lines 23-26); the entire surface of the backrest may have a reduced thickness or only dedicated regions may have a reduced thickness, depending on weight requirements of the seat (lines 27-30); in order to enhance the structural integrity of the thin back support surface, vertical support members are provided to extend substantially along its the height (lines 31-35).

161.However, Mr Hunter has expressed the opinion that none of the preferred embodiments provide sufficient information “to be able to construct a practicable booster seat based on the drawings and accompanying description”.[65]   More specifically:

[65] Hunter 1 at [51]-[76]

“The diagrams and text do not show me how to make a booster seat under 2 kg without a tether strap, and I consider that a large amount of engineering development would have been necessary to go from the concept sketches shown in the Opposed Application to a child safety seat which would meet any type of minimum regulatory requirements.”[66]

[66] Hunter 2 at [90]

162.I will return to this evidence shortly.

163.In Apotex Pty Ltd v Warner-Lambert Company LLC (No 2) [2016] FCA 1238; 122 IPR 17 (Apotex) , the Court when considering the issue of sufficiency of disclosure referred at [248] to the following observations of Lord Parker in Osram Lamp Works Ltd v Pope’s Electric Lamp Co Ltd 34 RPC 369 at 391:

“A specification may therefore be considered as addressed, at any rate primarily, to the persons who would, in normal course, have to act on the directions given for the performance [of the invention].  These persons may be assumed to possess not only a reasonable amount of common sense, but also a competent knowledge of the art or arts which have to be called into play in carrying the patentee’s directions into effect.  I say ‘art or arts’ because in carrying out the directions given by the patentee it may well be necessary to call in aid more than one art.  Some of the directions contained in a specification may have to be carried out by skilled mechanics, others by competent chemists.  In such a case, the mechanic and chemist must be assumed to co-operate for the purpose in view, each making good any deficiency in the other’s technical equipment.  The specification cannot be considered insufficient merely because the mechanic without the aid of the chemist, or the chemist without the aid of the mechanic would be unable to comprehend the meaning of or to carry into effect the directions given by the patentee.”

164.Although the Court was addressing paragraph 40(2)(a) as it stood before the introduction of the Raising the Bar Act, I consider that the above principles remain apposite.  This is illustrated in Eli Lilly & Co v Human Genome Sciences, Inc [2008] EWHC 1903; [2008] RPC 29 at [241]:

"The [sub-section of the UK Act relating to disclosure] , by using the words clearly enough and completely enough, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention.  In so doing he must seek success.”

165.Mr Hunter’s evidence indicates to me that rather than adopting the practical approach affirmed by the above authorities, he has misdirected his enquiry under paragraph 40(2)(a) to the question of whether the specification describes the manner in which the present invention is to be performed “with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it” (Apotex at [256]). The following examples of his evidence[67] are in point:   

[67] Hunter 1

“[53] In the backrest portion 16, in Figures 2 and 3, it is not clear whether the backrest is intended to be a single shell portion with front and rear surfaces 17a and 17 b respectively, or a 2 part assembly.  In particular, I have problems understanding the following: … [53.4] The array of circular shapes in the backrest seems to be a randomly-chosen pattern of shapes.  It is not clear whether these are apertures or pockets.  If they are apertures, then two of the circles seem to create a major point of weakness between the headrest portion of the seat and the lower portion of the backrest.  There is no description of these shapes for this embodiment.”

“[56]: In regard to the base portion shown in [Figures 4-7], and the accompanying description, I consider that there is insufficient description described to be able to develop this component.  In particular: [56.1] The ribs 24 are shown without any indication as to what depth they may extend to.  A diagonal rib pattern is shown and the diagonally-arrayed ribs are said to provide a degree of stiffness to support the weight of the child without substantial deformation … A lateral array of ribs connecting the support feet 15 would be likely to better support the weight of the child.”

“[56.2] There is no reference to why the particular array [of ribs 24] (which appears to have been sketched at random) shown in Figures 4 and 5 was chosen, and what the purpose of this array is (other than saving weight).”
“[57.1] to [57.2] The array of apertures in the backrest seems to be randomly-chosen pattern of shapes.  There is no reason disclosed for the shapes or the pattern of the array shown.  Any weight-saving from the apertures would appear to be offset by the reinforcing longitudinal ribs 28, and lateral ribs 28a … Such ribs would add a very considerable amount of weight, in my view, from Figure 7, any weight-saving benefit obtained from the holes would be offset as a weight penalty from the addition of these reinforcing ribs, so it is not clear to me how this arrangement provides an improved strength: weight ratio.”

“[75] Like the embodiment [shown in Figures 4-7], it is not clear to me how any weight saving benefit arising from the reduction of material due to the perforations [shown in Figures 10A-10C] could be derived, given that there is a substantial addition of material required in the base and backrest portion of the seat due to the presence of the ribbing structure.”

166.Mr Hunter goes on to state that “the ideas disclosed [in the prior art documents] have been generally resolved to a higher level of detail than in the description of the Opposed Application”.[68]   I particularly note in this respect Mr Hunter’s acknowledgement that the machine translation of D3 is “difficult to follow” and that D5 is “brief” – D5 is in fact merely comprised of 2 pages of description and 2 sheets of drawings - and yet he has essentially argued under the ground of inventive step that the disclosure of these documents is nevertheless sufficient to enable the PSA to produce the claimed invention without the need for inventive ingenuity.  This evidence reinforces my initial view that when assessing the sufficiency of the present disclosure, Mr Hunter has not shown that he is “willing or wishing” to put the invention into effect (Philpot v Hanbury 2 RPC at 38).

[68] Hunter 1 at [83]-[86]

167.There is one more issue to deal with under this ground.  HBG submits that Mr Hunter’s evidence underscores the fact that the only relevant experience he has acquired was in the early 1990s as part of a project team working on the Galaxy seat which was a Type A/B seat incorporating a tether strap.  HBG draws attention to Mr Hunter’s consideration of the question of “what would be required in terms of design effort to move from the described embodiment[s] to a practicable seat?”  According to Mr Hunter, this exercise would “entail a large amount of engineering effort” starting with a number of “primary steps” that “would typically take at least 12 months with a design team of 3-4 people involved throughout the project”.[69]  Mr Rafferty has submitted that he regards the primary steps identified by Mr Hunter as “very much routine” and the at least 12 months timeline to be “excessive”.[70]  However, Mr Rafferty’s evidence is based entirely on his involvement with the commercial embodiment of the present invention and, consequently, is of no relevance to the issue of sufficiency of disclosure.   

[69] Hunter 1 at [79]-[80]

[70] Rafferty at [20]-[22]

168.Nevertheless, Mr Hunter has not led any evidence to establish that the steps he asserts are necessary to perform the invention are anything other than ordinary steps of trial and error, or that in seeking to produce a practical result by following the disclosure of the specification, the PSA would take considerably longer than would be typically expected in the field of child safety seats. To the contrary, the evidence overall suggests that many if not all of the steps identified by Mr Hunter are simply matters of normal design practice, using for example known computer simulation or modelling techniques,[71] and Mr Hunter has stated that the time spent by Britax on the Galaxy seat (which had similar design steps) “was more like around 18 months”.[72]  Furthermore, although a substantial period including research, enquiry or experiment may be needed to implement the present invention, there is no evidence that this would impose an undue burden on a skilled but non-inventive design team looking to a successful outcome through the iterative evaluation of any initial failures.

[71] Horsfall 1 at [11]; Hunter 2 at [115-116], [119]; Lumley 1 at [28]

[72] Hunter 2 at [120]

169.In view of the foregoing, the evidence for Britax does not on balance satisfy me that the specification fails to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by the PSA.

170.This ground of opposition accordingly does not succeed.

SUPPORT

Statutory framework

171.Subsection 40(3) relevantly provides that the claims must be supported by matter disclosed in the specification.  The requirement of "supported by matter disclosed" was introduced by the Raising the Bar Act as a replacement for the former requirement of fair basis.

Legal principles

172.The requirement for support is intended to ensure that there is a basis in the description for each claim, and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art.  There must also be consistency, or basis, for each claim in the description.  This has been stated as meaning that “the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description.  In other words ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art” (Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [97] per Lord Neuberger quoting with approval from Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653). 

173.In Biogen Inc v Medeva plc [1996] UKHL 18; [1997] RPC 1 at [57], Lord Hoffman referred to Asahi Kasei Kogyo KK’s Application [1991] RPC 485 to iterate that, for matter to be capable of supporting an invention, it must contain an “enabling disclosure”. That is, it must disclose the invention in a way which will enable it to be performed by a person skilled in the art. Lord Hoffmann subsequently described (at [63]) a long-established principle of patent law in the UK:

“... namely, that the specification must enable the invention to be performed to the full extent of the monopoly claimed.  If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms.  The patentee need not show that he has proved its application in every individual instance.  On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them.”

The support challenge

174.The case briefly put by Britax repeats the position is has taken under the ground of disclosure.[73]

[73] OS at [65]-[66]

Consideration

175.I have found when considering the ground of disclosure that the specification discloses the present invention in a way which will enable it to be performed by the PSA.  The parties are essentially agreed that in the present situation the same finding of enablement is also determinative of the requirement for support.  Consequently, I am not satisfied on balance that the claims are not supported by matter disclosed in the specification.  This ground of opposition accordingly does not succeed.

CONCLUSION

176.I have found that the opposition does not succeed on any of the grounds relied on by Britax.  The opposition is therefore dismissed.

COSTS

177.Britax has not been successful and I can see no reason why costs should not follow the event.  I therefore award costs against Britax.

O L Haggar
Delegate of the Commissioner of Patents

Annex

1.  A child safety seat including:
a base portion; and
a backrest portion connected to the base portion, the backrest portion including a top edge and a bottom edge, a front surface and a rear surface, and a plurality of holes between the top and bottom edges, wherein
the backrest portion includes a plurality of support members extending longitudinally along a substantial portion of the backrest, and the child safety seat has an overall weight of 2 kg or less.

2.  The child safety seat of claim 1, wherein the plurality of support members is integral to the backrest portion.

3.  The child safety seat of claim 1 or 2, wherein the backrest portion includes a pair of headrest wings disposed on opposite sides thereof and extending longitudinally along a head region of the backrest portion.

4.  The child safety seat of claim 1, 2 or 3, wherein the backrest portion includes a pair of side wings disposed on opposite sides thereof and extending longitudinally along a side region of the backrest portion.

5.  The child safety set of any one of the preceding claims, wherein the backrest portion includes a pair of armrests formed at a lower region thereof.

6.  The child safety seat of any one of the preceding claims, wherein the backrest portion is formed from a plastic material with a thickness of about 1.5 to 5 mm.

7.  The child safety seat of claim 6, wherein the plastic material is polypropylene.

8.  The child safety seat of claim 7, wherein the polypropylene is about 3 mm thick.

9.  The child safety seat of any of the preceding claims, wherein the plurality of support members includes a central support member extending longitudinally along a central axis of the backrest and a pair of longitudinally extending side members equally spaced on either side of the central support member and having a shorter length than the central support member.

10. The child safety seat of claim 8, wherein the plurality of support members further includes a plurality of support members extending perpendicularly to the longitudinal support members and attached to the backrest portion at spaced intervals longitudinally along the central axis.

11. The child safety seat of claim 3, wherein each of the headrest wings includes a plurality of fins formed adjacent a front edge thereof.

12. The child safety seat of claim 4, wherein each of the headrest wings or side wings includes a plurality of fins formed adjacent a front edge thereof.

13. The child safety seat of claim 3, wherein each of the headrest wings includes a polystyrene insert.

14. The child safety seat of claim 4, wherein the backrest portion is pivotally connected to the base portion and the base portion is receivable within the side wings of the backrest portion to form a substantially rectangular shape.

15. The child safety seat of any one of the preceding claims, wherein the base portion includes a seating portion for receiving a child, the seating portion having a thickness of about 1.5 to 5 mm.

16. The child safety portion of claim 15, wherein the seating portion has a thickness of about 1.5 to 2 mm.

17. The child safety seat of claim 15 or 16, wherein the seating portion includes a plurality of holes arranged there across.

18. The child safety seat of any one of claims 15 to 17, wherein the base portion includes support members arranged diagonally across the seating portion.

19. The child safety seat of any one of the preceding claims, including padding material on the base portion and the backrest portion.