Brolock Pty Ltd v Fuzhou Autran Industrial Co., Ltd - [2025] APO 4

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Brolock Pty Ltd v Fuzhou Autran Industrial Co., Ltd [2025] APO 4
Patent Application: 2021201367

Title:Damping Hinge

Patent Applicant: Fuzhou Autran Industrial Co., Ltd

Opponent:Brolock Pty Ltd

Delegate:Xavier Gisz

Decision Date: 14 February 2025

Hearing Date: 20 November 2024

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – grounds of opposition: novelty, inventive step, clear enough and complete enough disclosure, support – claims found not to benefit from the earliest priority date – claims split utilising s 43(3) and notionally renamed – the claims not entitled to the earlier priority are found to lack ‘whole of contents’ novelty

Representation: Counsel for the Applicant: Gilbert Tsang
Patent attorney for the Applicant: Philip Gehrig of Wrays
Patent attorney for the Opponent: Lorne Wood-Roe of Adams Pluck

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2021201367

Title:Damping Hinge

Patent Applicant: Fuzhou Autran Industrial Co., Ltd
Date of Decision: 14 February 2025
DECISION

The claims do not all benefit from the earliest priority date. Pursuant to s 43(3), independent claims 1, 17 and 27 are split into separate claims (that is, claims 1A and 1B, claims 17A and 17B, claims 27A and 27B).

The first group of claims (Group 1 which are claims 1A, 17A and 27A) benefit from the earliest priority date (29 July 2019).

The second group of claims (Group 2 which are claims 1B, 17B and 27B) and also claim 22 do not benefit from the earliest priority date, and instead its priority date is the filing date of the application (2 March 2021).

Group 1 (claims 1A, 17A and 27A) is novel in light of the prior art. Group 2 (claims 1B, 17B and 27B) lacks novelty in light of D3 (WO 2021/226657 A1). Claim 22 is novel in light of D3 (WO 2021/226657 A1).

The applicant is given two months from the date of this decision to propose amendments to overcome the lack of novelty findings.
Costs are awarded according to Schedule 8 against the Applicant.
REASONS FOR DECISION

Background

Patent application 2021201367 (the Application) in the name of Fuzhou Autran Industrial Co., Ltd (the Applicant) (filing date 2 March 2021) is a divisional application of parent patent application 2020277205 (filing date 25 May 2020) which is the national phase entry of PCT/CN2020/092044 (publication number WO2021017596A1) which claims priority from Chinese patent application CN 2019106877912 (publication number CN110259302A) (filing date 29 July 2019). The Application also claims additional priority, as a Convention application, from CN 2020223167433 filed 16 October 2020 and published as CN 213573505 U.
Acceptance was advertised on 2 March 2023. A Notice of Opposition was filed by Brolock Pty Ltd (the Opponent) on 2 June 2023. A Statement of Grounds and Particulars (the SGP) was filed on 31 August 2023.
Evidence in Support was filed on 28 November 2023. Evidence in Answer was filed on 23 February 2023. There was no Evidence in Reply.
The hearing took place by video conference on 20 November 2024.
The amendments to the SGP
The Opponent made a request to amend the SGP on 14 November 2024.
The relevant factors to be taken into consideration in deciding whether to allow an amendment to the SGP were discussed in CSL Limited v Isconova AB et al [2016] APO 82 (“CSL Limited”) at [9] and [12]. Relevantly these are:
·the prospect of undue prejudice to a party
·whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment
·the timing of the amendment request and the reasonableness of the explanation of the delay; and
·the public interest
The Opponent stated in the letter accompanying the proposed amendments:
“The particulars are now amended to refer to D1, D2 and D7 where they previously referred only to D1 and D2. By the applicant’s admission, D7 contains identical teaching to D1 and D2.
A clerical error was also found in relation to the particulars for novelty of D3 which was incorrectly referred to as D1. This error is also corrected in the amendments for clarity.”
The correction of reference to D3 rather than D1 is an obvious mistake that the reader of the original SGP would readily recognise what was intended. I consider that the factors of undue prejudice, sufficient particularisation, and public interest are all in favour of this aspect of the amendment to the SGP being allowed. Although the request to amend the SGP is poorly timed (less than a week before the hearing), I do not consider this to be enough to outweigh the factors in favour of allowing the amendment. I consider this aspect of the amendment to the SGP allowable.
The Opponent has requested that the priority document D7 (CN110259302A) of the presently opposed application be added as a prior art document. This somewhat unusual request is a consequence of the challenge to the priority date being a core part of the opposition.
Both parties are of the view that “D7 contains identical teaching to D1 and D2”. The significance of D7 thus appears to reside in the date of publication (20 September 2019) which is earlier than the date of publication of D1 - WO2021017596A1 published (4 February 2021) and D2 - AU2020277205A1 published (18 February 2021).
As the Applicant has already made detailed submissions about D1 and D2, the inclusion of D7 in the SGP is not considered to unduly prejudice Applicant. The public interest is in the validity of the application being tested in light of all relevant prior art documents. Again, the timing of the request to amend the SGP weighs against the amendments being allowed, but overall the factors in favour outweigh the factor against.
On balance I consider it appropriate that the amendments to the SGP are allowed. As noted in the Delegate’s letter of 15 November 2024, in determining the award of costs the timing of the amendments to the SGP will be taken into account.
Evidence
Evidence in support
The Evidence in Support comprises a declaration by Michael Murauer dated 22 November 2023 and accompanying annexures MM-1 to 4.
Evidence in answer
The Evidence in Answer comprises:
·a declaration by William Samuel Hunter dated 21 February 2024 and accompanying annexures WSH-1 to 14.
·a declaration by Philip Walter Gehrig dated 22 February 2024 and accompanying annexure PWG‑1.
Applicable Law and Onus
The present application is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 as the application was filed after 15 April 2013.
The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to grant exists. Then, if satisfied, I may refuse the application or, where appropriate, give the Applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition, as per Section 60(3A) & (3B) of the Act.
Grounds of Opposition
The amended Statement of Grounds and Particulars opposes the grant of the patent on the following grounds: novelty, inventive step, clear enough and complete enough disclosure, and support.
The experts
Declaratory evidence has been provided by Philip Walter Gehrig, Michael Murauer and William Samuel Hunter.
Philip Gehrig is a patent attorney representing the Applicant. His declaration relates to the translation of terms in the specification, and does not purport to provide expert evidence on technical aspects of the invention.
Michael Murauer is a director of Brolock Pty Limited. He has worked in the company designing and manufacturing tools and mechanical components for about 25 years. William Samuel Hunter has worked as a mechanical engineer in various roles for 35 years.
I consider that Mr Murauer and Mr Hunter each have significant experience in mechanical engineering and their expert opinions will be relied upon as needed to resolve the issues considered in this decision.
The Specification
Field of the invention
The description provides a good summary of the field of the invention at paragraphs 2-4:
“Hinges are devices or parts capable of connecting two portions of a machine, vehicle, door, window, or implement, wherein one or both portions connected through the hinge can rotate around the axis of the hinge. Hinges are generally applied to doors, windows, cupboards, and the like. As will be appreciated, in such applications on doors, windows, cupboards, and the like, the hinge is typically arranged such that the hinge axis extends vertically.
Traditional hinges for doors, gates and windows are back-flap hinges without dampers. Doors, gates, and windows without dampers may generate loud noises and violent vibrations if they slam shut, which affects user experience. In view of this, damping hinges are designed with dampers to make sure that doors, gates and windows can move slowly when closing and, with spring-biased self-closing hinges, will return slowly when released by hand due to control from the dampers. Damping hinges generate less noises and fewer vibrations compared with hinges without dampers.
Damping hinges often employ piston-type dampers, such as hydraulic dampers, with a pressure rod movable relative to a cylinder. Applying pressure to the pressure rod from an angle exceeding 3° offset from a longitudinal axis of the pressure rod can lead to damage of the damper piston during use. This is a problem in known damping hinges due to the fact that the dampers of existing hinges are typically arranged in use horizontally, and the surface that abuts or makes contact with the pressure rods rotates together with the relative rotation of the two clamp plates (i.e. two leaf assemblies) of the hinge. The pressure angle of the damper pressure rods will thus change in real time which, in turn, means that the pressure rods are regularly exposed to oblique forces (e.g. in excess of 3°) which then has a negative impact on the damping effect and on the service life of the damper.”
The invention
The invention is a damping hinge mechanism for controlled closing of a door or gate. There are two versions of the invention. The first version (which has several embodiments) utilises two complementary inclined surfaces. The second version (which also has a several embodiments) utilises a roller bearing on an inclined surface.
First version of the invention
An embodiment of the first version of the invention is shown in figure 2:
The hinge has four main sub-assemblies: first clamp plate (4), second clamp plate (5), rotation shaft (6), and damping mechanism (31, 32, 33).
The damping mechanism is shown in figures 5 and 6:
The description describing the damping mechanism states at paragraph 31:
“Referring to Fig. 1 to Fig. 8, a damping hinge 1 comprises a first clamp plate 4 and a second clamp plate 5, wherein one or more damping mechanisms 3 are arranged in the first clamp plate 4 and/or the second clamp plate 5. The damping mechanism 3 includes a fixed pressure block 31, a movable pressure block 32 which is able to move in a vertical direction, and a damper 33 which is arranged vertically and has two ends connected to the fixed pressure block 31 and the movable pressure block 32, respectively. A first inclined surface 34 on the movable pressure block 32 is in abutting connection with a second inclined surface 35 on the other clamp plate 5.”
The description states at paragraphs 33 and 34:
“Furthermore, in a preferred embodiment, the first inclined surface 34 and the second inclined surface 35 are spiral inclined surfaces configured for abutting contact with each other, with the spiral angle of the spiral inclined surfaces preferably being in the range of 5° to 85°. The spiral diameters of the spiral inclined surfaces 34, 35 are typically equal to the rotational diameters of the positions where the spiral inclined surfaces are located.
It should be noted that the spiral inclined surfaces which are configured for abutting contact with each other preferably refers to an upper inclined surface and a lower inclined surface that are cut along or follow the same spiral tangent, wherein one inclined surface serves as the first inclined surface and the other inclined surface serves as the second inclined surface.”
Thus, the inclined surfaces are not flat (as they may appear in a cursory review of the figures), but rather are (preferably) spiral inclined surfaces.
The description states at paragraph 37:
“From the above description, when the first and second clamp plates 4, 5 are opened to the maximum extent, the first inclined surface 34 is preferably still in surface contact with the second inclined surface 35, so that the first clamp plate and the second clamp plate are damped when they start to close, thereby providing a better damping effect. At the same time, compared to solutions where squeezing contact only occurs later during the rotation process, there is no phase of the hinge movement in this embodiment where the rotational force builds up until it reaches a certain level at which point only then does contact occur. This makes the whole closing process of the damping hinge much smoother and avoids damage to the two inclined surfaces which may otherwise be brought about by sudden application of stress.”
Thus, the inclined surfaces slide against each other as the gate closes. The action of the surfaces sliding against each other pushes the pressure block of the damper. The damper is described as a hydraulic damper in other parts of the description. Thus, the pressure block pushes on what is essentially a piston to slow the swinging of the gate to a closed position.
The invention being taught in the first version of the invention is two complementary camming surfaces. That is, the shape of the surfaces match so that they slide over each other in a surface-to-surface configuration. As the hinge rotates, the first surface rotates. The second surface slides across the first surface and is pushed vertically.
The two surfaces in the preferred embodiments are described as being “spiral inclined surfaces” (paragraph 33 and 34). The method of designing the “spiral inclined surfaces” is given in paragraph 35:
“The spiral inclined surfaces are preferably simulated according to the movement paths of the inclined surfaces to cause the first inclined surface and the second inclined surface to always be in surface contact when pressed against each other.”
Second version of the invention
An embodiment of the second version of the invention is shown in figure 14:
The hinge has four main sub-assemblies: first clamp plate (4), second clamp plate (5), rotation shaft (6), and damping mechanism (33, 34, 34’, 35, 35’).
An isolated view of the damping mechanism is shown in figures 15 and 16:
The assembled hinge of the second version of the invention is shown in figure 17:
The description describing the damping mechanism states at paragraph 78:
“With particular reference also to Figs. 15-17, each damping mechanism 3 in the hinge 1 of this embodiment incorporates a roller 34' rotatably mounted on a roller axle or pin 8 in the movable pressure block 32. An outer periphery or circumference of the roller 34' forms the first inclined surface 34 of the moveable pressure block 32 in the damping mechanism 3 on one of the clamp plates 4, 5 configured for rolling engagement with the second, spiral inclined surface 35 on the extension 35' from the other clamp plate 5, 4. The spirally curved surfaces 35 of the two damping mechanisms 3 in this embodiment are particularly visible in Fig. 17, which shows the second clamp plate assembly 5 rotated to an open position about the hinge axis 6. As the second clamp plate assembly 5 rotates back towards the closed position, the extension 35' of each damping mechanism 3 will engage the roller 34' in the respective moveable pressure block 32 such the that spiral inclined surfaces 35 on the extensions 35' will come into rolling engagement or contact with the outer surfaces 34 of the rollers. This will actuate movement of each moveable pressure block 32 in a vertical direction, thereby transferring force to the hydraulic piston dampers 33, which in turn will retard or brake the closing action of the hinge 1 under the self-closing bias of the torsion spring 66 as the hinge moves to the closed position. In this way, the damping hinge 1 provides the desired 'soft-close' operation.”
Thus, the relative movement of the spirally curved surface and the roller (34’) will cause the roller to roll on the spirally curved surface. This will actuate movement of each moveable pressure block 32 in a vertical direction, thereby transferring force to the hydraulic piston dampers 33.
Disclosure of parent specification
The parent (AU2020277205) specification contains figures 1-8 which are identical to figures 1-8 of the presently opposed application. The parent application has a description which corresponds to these figures. This is the first version of the invention.
The parent specification does not contain an explicit disclosure of the second invention as there is no explicit mention of a roller.
The parent specification discloses at paragraph 25:
“From the above description, when the first clamp plate and the second clamp plate rotate, the first spiral inclined surface and the second spiral inclined surface are pressed upon each other to make the movable pressure block continuously compress the damper. That is to say that the inclined surfaces rotate horizontally and move vertically at the same time, on the whole. The spiral inclined surfaces are simulated according to the movement paths of the inclined surfaces to cause the first inclined surface and the second inclined surface to always be in surface contact when pressed against each other. Compared with line-to-line or point-to-point contact, the stress is more uniform, the squeezing effect is more ideal, and damage to the two inclined surfaces is avoided, thereby guaranteeing the damping effect and service life of the damper.”
It is noted that a roller makes line-to-line contact with a surface. The line-to-line and point-to-point contact mentioned in this paragraph – and whether it amounts to an implicit disclosure of a roller – will be considered in more detail later in this decision.
Claims
Independent claims
There are 32 claims; four independent claims (claims 1, 17, 22, 27) and 28 dependent claims. The four independent claims are reproduced below:
1. A damping hinge for controlled closing of a door or gate, especially a glass door or gate, the damping hinge comprising:
a first clamp plate and a second clamp plate connected with one another for relative rotation about a vertical hinge axis, wherein one of the first clamp plate and the second clamp plate is to be mounted to a panel of the door or gate and the other of the first clamp plate and the second clamp plate is to be mounted to a supporting structure;
a damping mechanism arranged on the first clamp plate or the second clamp plate, the damping mechanism including a damper arranged substantially parallel to the hinge axis, with one end of the damper being connected to a fixed pressure block and an opposite end of the damper being connected to a movable pressure block that is movable vertically to transmit force to the damper;
wherein the movable pressure block of the damping mechanism on said first or second clamp plate has a first surface configured for abutting connection with a second surface provided on an extension from the other clamp plate, and wherein the abutting connection between the first and second surfaces operates to move the movable pressure block in a vertical direction upon relative rotation of the first and second clamp plates towards a closed position for transmitting force to the damper which, in turn, controls closing of the hinge.
17. A damping hinge for controlled closing of a door or gate, comprising:
a first clamp plate configured to be mounted to a fixed supporting panel;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a hinge axis; and
a damping mechanism arranged on at least one of the first clamp plate and the second clamp plate including a damper arranged substantially parallel to the hinge axis and configured to retard or control relative rotation of the second clamp plate towards the first clamp plate during closing of the hinge;
wherein one end of the damper is connected to a fixed pressure member and an opposite end of the damper is connected to a movable pressure member which is movable in a vertical direction, wherein the movable pressure member on said first or second clamp plate has a surface which engages with a surface from the other clamp plate for effecting movement of the movable member in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit a force to the damper during closing of the door or gate.
22. A damping hinge for controlled closing of a glass door or gate, comprising:
a first clamp plate configured to be mounted to a supporting structure;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a vertical hinge axis;
a damping mechanism arranged on the first clamp plate or the second clamp plate and having a damper that extends substantially parallel to the hinge axis, wherein one end of the damper is operatively connected to a fixed pressure block and an opposite end of the damper is operatively connected to a movable pressure block that is movable vertically to transmit force to the damper; and
an actuating member that extends towards the clamp plate on which the damping mechanism is arranged from the other clamp plate to operatively engage with the movable pressure block;
wherein the movable pressure block includes a roller configured for rolling engagement with the actuating member, wherein the engagement between the actuating member and the roller effects movement of the movable pressure block vertically upon relative rotation of the second clamp plate towards the first clamp plate about the hinge axis to transmit force to the damper which, in turn, retards or controls closing of the hinge.
27. A damping hinge for controlled closing of a door or gate, comprising:
a first clamp plate configured to be mounted to a supporting structure;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a vertical hinge axis;
a damping mechanism arranged on the first clamp plate or the second clamp plate and including a damper arranged substantially parallel to the hinge axis, one end of the damper connected to a fixed pressure block and an opposite end of the damper connected to a movable pressure block that is able to move in a vertical direction; and
an actuating member that extends towards the clamp plate on which the damping mechanism is arranged from the other clamp plate for operatively engaging with the movable pressure block;
wherein a surface of the actuating member engages with a surface of the movable pressure block to effect movement of the movable pressure block in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit force to the damper during closing of the door or gate.
Analysis of claims

Claims 1 has the feature of:
“wherein the movable pressure block of the damping mechanism on said first or second clamp plate has a first surface configured for abutting connection with a second surface provided on an extension from the other clamp plate, and wherein the abutting connection between the first and second surfaces operates to move the movable pressure block in a vertical direction upon relative rotation of the first and second clamp plates towards a closed position for transmitting force to the damper which, in turn, controls closing of the hinge.”
Claim 17 has the feature of:
“wherein the movable pressure member on said first or second clamp plate has a surface which engages with a surface from the other clamp plate for effecting movement of the movable member in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit a force to the damper during closing of the door or gate.”
Claim 27 has the feature of:
“wherein a surface of the actuating member engages with a surface of the movable pressure block to effect movement of the movable pressure block in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit force to the damper during closing of the door or gate.”
Claims 1, 17 and 27 define the one surface is in ‘abutting connection’ (claim 1) or ‘engages’ (claims 17 and 27) a second surface, to transmit force. Because the geometry of the surfaces is not defined in the claims, these claims include within their scope surfaces of any shape. This includes the possibility that one of the surfaces is circular/cylindrical, and further includes the possibility that the circular/cylindrical surface can rotate as it engages with the other surface. This possibility is made explicit in dependent claim 9 which defines that “the first surface comprises an outer periphery of a roller that is rotatably mounted on the movable pressure block for rolling contact with the second surface”. Thus, claims 1, 17 and 27 have been drafted in such a way that they include the first and second versions of the invention.
Priority
The priority date of a claim is determined according to Section 43 of the Act, and by Division 2 of the Regulations. Section 43 of the Act requires that:
(1) Each claim of a specification must have a priority date.
(2) The priority date of a claim is:
(a) If subsection (2A) applies to the claim – the date determined under the regulations;
(b) Otherwise – the date of the filing of the specification.
(2A) This subsection applies to a claim if:
(a) prescribed circumstances apply in relation to the invention defined in the claim; and
(b) a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
The priority date of a claim is the date of filing of the specification unless the two conditions given in section 43(2A) apply. The first of these conditions is that prescribed circumstances apply in relation to the invention defined in the claim. Regulation 3.13A sets out the prescribed circumstances applying to the determination of priority for a PCT application. Regulation 3.13B sets out the prescribed circumstances applying to the determination of priority for a Convention application. Regulations 3.13D sets out the prescribed circumstances applying to the determination of priority for divisional applications. For clarity I have limited the cited sections to those that are relevant in the present case:
Regulation 3.13A
Priority date for PCT application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (2) (a prescribed circumstance for paragraph 43(2A)(a) of the Act) applies to the invention defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (4) (a prescribed document for paragraph 43(2A)(b) of the Act) clearly discloses the invention in the claim; or
(ii) 2 or more of those documents (a prescribed set of prescribed documents for paragraph 43(2A)(b) of the Act), considered together, clearly disclose the invention in the claim.
Regulation 3.13B
Priority date for Convention application
(1) This regulation applies to a claim if:
(a) the circumstance mentioned in subregulation (1A) (a prescribed circumstance for paragraph 43(2A)(a) of the Act) applies to the invention defined in the claim; and
(b) either:
(i) a document mentioned in subregulation (2) (a prescribed document for paragraph 43(2A)(b) of the Act) clearly discloses the invention in the claim; or
(ii) 2 or more of those documents (a prescribed set of prescribed documents for paragraph 43(2A)(b) of the Act), considered together, clearly disclose the invention in the claim.
Regulation 3.13D
Priority date for divisional application filed prior to grant of patent
(1) This regulation applies to a claim if:
(a) the specification containing the claim that defines the invention was filed for:
(i) a divisional application under section 79B of the Act; or
(ii) a complete application that has been amended to become a divisional application under section 79B of the Act; and
(b) the specification mentioned in subsection 79B(1) of the Act (the earlier specification) clearly discloses the invention in the claim.
Regulation 3.12 provides a definition of this term as follows:
(4) In this division, a document, or a set of documents considered together, clearly discloses an invention if the document, or set of documents, discloses the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art.
The three priority questions to resolve
There are three priority questions to resolve:
·whether the parent application 2020277205 benefits from the priority date of the provisional application CN 201910687791.2 (Regulation 3.13A)
·whether the present application 2021201367 benefits from the priority date of the Chinese Convention document CN 2020223167433 (published as CN 213573505 U) (Regulation 3.13B)
·whether the present application 2021201367 benefits from the priority date of the parent application 2020277205 (Regulation 3.13D)
Does parent application AU 2020277205 benefit from the priority date of the provisional application CN 2019106877912 (publication number CN110259302A)?
An English translation of CN 2019106877912 is provided in Annexure WSH-9. A comparison of the contents of CN 2019106877912 and WO 2021/017596 A1 is in Annexure WSH-8 which states:
“This is to certify that the content of text in the description and claims of the document provided to us as Chinese Patent Application No 2019106877912 in the Chinese language is, to the best of the knowledge and ability of NAATI-credentialed translator Dr. Thomas McConochie, (NAATI identification number CPN8LV78R), substantially identical to the text in the description and claims of the document provided to us as International Patent Application No. PCT/CN2020/092044, published as WO 2021/017596 A1 in the Chinese language. The differences between those two documents are confined to matters of form, such as line and paragraph numbering and headings, as set out in the accompanying notes below.”
I am satisfied that the content of CN 2019106877912 is substantially the same as WO 2021/017596. I conclude that parent application AU 2020277205 (WO 2021/017596) benefits from the priority date of CN 2019106877912 of 29 July 2019.
Does the present application 2021201367 benefit from the priority date of the Chinese Convention document CN 2020223167433?
An English translation of CN 2020223167433 titled “Positioner to Prevent Glass Doors from Sagging” is provided in Annexure WSH-12. As the title of CN 2020223167433 suggests, the emphasis of this document is a mechanism for preventing the glass door from sagging. CN 2020223167433 also clearly shows the surface-to-surface abutment that moves the damping mechanism in figures 16 and 17. I consider this to be a disclosure of the first version of the invention. However, CN 2020223167433 does not disclose a line-to-line contact between the abutting surfaces.
I consider that claims including within its scope the first version are entitled to priority from CN 2020223167433, whereas claims including the second version are not entitled to priority from the CN 2020223167433.
Does the present application 2021201367 benefit from the priority date of the parent application 2020277205?
The parent application 2020277205 (the national phase entry of PCT/CN2020/092044 with publication number WO2021017596A1) contains only the one version of the invention - the first version of the invention with two complementary surfaces.
The parent application 2020277205 contains 8 figures which are the same as the first 8 figures of the presently opposed application.
The Applicant argues that the second version of the invention is disclosed in the specification of the parent application. The Applicant states in their submissions at paragraphs 27-36:
“In fact, as Mr Hunter points out at paragraph 37 of his declaration, the PCT Application conveys to the skilled addressee that the first and second surfaces could also be surfaces having line contact or point contact with each other instead of surface contact.
The PCT Application at paragraph [0023] discloses that one embodiment of the invention involves the first and second surfaces both being “spiral inclined surfaces”. In this context, the PCT Application goes on to indicate at [0025] that, in this embodiment, the spiral inclined surfaces are “simulated” or in other words, designed, to “always be in surface contact when pressed against each other”.
The PCT Application then goes on to say:
Compared with line-to-line or point-to-point contact, the stress is more uniform, the squeezing effect is more ideal … thereby guaranteeing the damping effect and service life of the damper”.
The Applicant submits that the skilled addressee would readily understand that:
(a) “line contact” or “line-to-line contact” involves contact interactions along a line such as, for example, when a cylindrical surface interacts with another surface (including a flat or planar surface or a non-spherical curved surface); and
(b) “point contact” or “point-to-point contact” involves contact interactions at a particular point such as, for example, when a spherical surface interacts with another surface (including a flat or planar surface or a curved surface or spherical surface).
Accordingly, cylindrical surfaces and spherical surfaces are examples of surfaces that were clearly contemplated in the PCT Application as alternatives to the first and second inclined surfaces. Further, these geometries are ones which the Applicant submits a skilled person would not ordinarily understand to be within the concept of surfaces that are “inclined” relative to the vertical axis of the hinge.
In this way, the passage reproduced at paragraph 29 above conveys to the skilled addressee that the invention extends to embodiments whereby the first and/or second surfaces may comprise surfaces that are not “inclined” surfaces (though noting that these embodiments may not be preferred). Consistently with this, Mr Hunter’s evidence at paragraph 37 of his declaration is that he considers that it would be:
... very clear to a skilled person from [this] passage that first and second surfaces providing line contact or point contact would also work, in the sense that they would also provide the required interaction and engagement for actuating movement of the ‘movable pressure member’ or ‘movable pressure block’, and thus of the damper, albeit with a higher potential for wear.
Further, as Mr Hunter’s remarks at paragraph 36 include the observation that
… the word ‘inclined’ does not really add to, or impose any limitation on, the first and second surfaces referenced in the PCT Application and the [First] Chinese Priority Document. The first and second surfaces form or act like camming surfaces for interaction or engagement in actuating the movement of the ‘movable pressure member’ or ‘movable pressure block’, and thus the damper, as the hinge rotates closed.
In other words, the skilled addressee reading the First Priority Document / the PCT Application would understand that whether or not the first and second surfaces are “inclined” is not essential or material to describing the invention. What matters is that the first and second surfaces form or act like “camming surfaces” that interact or engage with each other to actuate the movement of the movable pressure blocks and compress the damper. In this regard, Mr Hunter notes at paragraph 38 of his declaration that inter-operable actuating or camming surfaces are well-known, including in gate hardware. The terms of the independent claims 1, 17, 22 and 27 of the Opposed Application specifically recite this operational interrelationship between the surfaces; e.g., see claim 1, which states:
… wherein the abutting connection between the first and second surfaces operates to move the movable pressure block in a vertical direction upon relative rotation of the first and second clamp plates towards a closed position for transmitting force to the damper which, in turn, controls closing of the hinge.
Mr Hunter’s evidence therefore demonstrates that there is no disparity in the scope of the invention as claimed in the independent claims 1, 17, 22 and 27 of the Opposed Application to the extent that they do not recite the feature of first and second “inclined” surfaces, because: (a) the disclosure of the First Priority Document / PCT Application is not limited to damping hinges with these surfaces; (b) further, it is plausible that the damping hinge can be worked across the full scope of the claims – that is, that damping hinges could be made using well-known camming surfaces that are not inclined surfaces.
Finally, there is no evidence before the Commissioner that it would involve an undue burden to make a damping hinge in accordance with the claims of the Opposed Application where either the first surface and/or the second surface is not an “inclined” surface. The onus of establishing that the Earliest Priority Document does not provide an enabling disclosure falls on the Opponent: s 60(3A) of the Act; see also Toolgen Inc v Fisher (No 2) [2023] FCA 794 at [16]-[17]. In the absence of any evidence on this aspect, the ground is not made out.”
Mr Hunter states at paragraph 37:
“Importantly, however, it is also very clear to a skilled person from the same passage that first and second surfaces providing line contact or point contact would also work, in the sense that they would also provide the required interaction and engagement for actuating movement of the 'movable pressure member' or 'movable pressure block', and thus of the damper, albeit with a higher potential for wear.”
The ‘line or point contact’ referred to by Mr Hunter is reference to how non-complementary surfaces contact. For example, a cylinder contacting a plane surface is illustrated as follows where the red line indicates the line of contact between the cylinder and the plane surface.:
An example of point contact would be a sphere contacting a plane surface as illustrated below, wherein the point of contact between the sphere and the plane is represented by a red dot:
I disagree with the Applicant’s submissions that the disclosure in the parent application could be considered a real disclosure of the second version of the invention in the presently opposed application. Mr Hunter’s evidence is that, when presented with a line contact (i.e. line-to-line contact) variation of the invention, a person skilled in the art would merely recognise that it “would also work” but this is does not amount to an implicit disclosure.
The parent application (at paragraph 25) and Mr Hunter (at paragraph 37) emphasise that a line-to-line contact version of the invention would cause stress and wear on the parts. Furthermore, the parent application and Mr Hunter do not explain specifically how a line-to-line contact variation would function. I am not satisfied that the parent application clearly discloses the second version of the invention.
I consider that claims 1, 17 and 27 encompass within their scope the first and second versions of the invention.
There is insufficient disclosure of the second version of the invention in the parent application. Consequently, I consider that the invention is not clearly enough disclosed as required by Reg 3.13D.
I consider that claims including within their scope the first version may be entitled to priority from the parent application, whereas claims including the second version are not entitled to priority from the parent application. To address the issue completely, I need to give consideration to s 43(3).
S 43(3) – determining the priority date of a claim (when it defines more than one form an invention)
Legal principles
Subsection 43(3) states:
(3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined.
The issue of claim splitting was considered in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, where it was found at [251]:
“In our view, claim 1 of the 842 or cation patent does not define more than one form of the invention. Unlike the claim in issue in Thornhill’s Application, claim 1 of the 842 or cation patent does not by its terms allow for any alternatives or, adopting the language of s 43(3), different forms of the same invention. Claim 1 defines only one form of the invention even though there will be any number of potential variants that are within its scope. We do not think s 43(3) is intended to treat every potential variant of the defined invention as if it was a form of the invention that must be treated as a separate claim which is to be given its own priority date. Rather, it is intended to deal with very different situations such as that which arose in Thornhill’s Application or where, to take a slightly different example, a claim is dependent on one or more independent claims (claim 3 of the 842 or cation patent takes this form) each of which has a different priority date. We therefore reject AstraZeneca’s submission based upon s 43(3) of the Act.”
The issue was also considered in Nichia Corporation v Arrow Electronics Australia Pty Ltd [2015] FCA 699 where at [65] the decision quoted a textbook:
“In Miller R, Burkill G, Birss C and Campbell D, Terrell on the Law of Patents (17th ed, Sweet and Maxwell, 2011), the authors state (at 7-12):
When can a claim have multiple priorities?
7-12 If a claim is drafted in such a way that it encompasses clear alternatives—for example, a claim which defines a chemical compound by reference to a structure which may take identified alternative forms—then attributing multiple priorities is unlikely to cause difficulty. In effect, the claim can be regarded as being made up of several discrete claims or—in the words of section 125(2) —as specifying more than one invention, each with a different priority date. However, it is difficult to see how a broad claim which does not set out alternatives as such could be regarded as specifying more than one invention, and it is hard to see how such a claim could allow for multiple priorities to be claimed. This is in line with the approach taken by the European Patent Office.
(Citations omitted.)”
Consideration
Because s 43(2A) is not satisfied, I can see two options of how to proceed. I could either:
a) find that the whole of independent claims 1, 17 and 27 are not entitled to the earlier priority date, or
b) split the independent claims and give the two parts of the claim different priority dates pursuant to s 43(3).
The problematic claims of the present application (claims 1, 17 and 27) have not been drafted in a way that the claims can be easily split (as envisaged in the quoted passage of Terrell on the Law of Patents). The claims have instead been broadly drafted in a manner such that they include within their scope the two distinct versions (or forms) of the invention. I do not consider this situation to be the same as that considered in AstraZeneca as the claims are not being considered to be split into ‘every potential variant’, and instead to only two distinct versions (or forms) of the invention. On balance, I consider that it is appropriate to split the claims utilising s 43(3).

I consider that the resulting split claims should satisfy two criteria:
1.the split claims should be distinct and not overlapping in scope.
2.the combined scope of the split claims should collectively be equivalent to the original claim.
In this case, the distinguishing feature of the first version of the invention is that the two camming surfaces form surface-to-surface contact. The distinguishing feature of the second version of the invention is that of a roller on surface camming mechanism. Splitting the claims on the basis of the two versions of the invention would satisfy the first criteria (not overlapping in scope), but not the second criteria (the collective scope of the split claims being equivalent to the original claim).
Consequently, I will select a broader distinguishing feature for the second version. A roller camming mechanism will make a line-to-line contact or a point-to-point contact. Thus, a line-to-line contact or a point-to-point contact camming mechanism includes within its scope a roller camming mechanism.
I consider it is appropriate to split the claims on the basis of surface-to-surface, line-to-line, and point-to-point contact camming mechanisms since these options seem to cover all possible contact types between two abutting surfaces in camming mechanisms.
Thus, the distinguishing feature of the first version of the invention is that the two camming surfaces form surface-to-surface contact. The distinguishing feature of the second version of the invention is line-to-line contact or a point-to-point contact.
The claims have been split as follows, with the differentiating feature added to the claims shown emphasised in underline.
Claim 1
I will split claim 1 into two new claims: claims 1A and 1B.
Claim 1A
A damping hinge for controlled closing of a door or gate, especially a glass door or gate, the damping hinge comprising:
a first clamp plate and a second clamp plate connected with one another for relative rotation about a vertical hinge axis, wherein one of the first clamp plate and the second clamp plate is to be mounted to a panel of the door or gate and the other of the first clamp plate and the second clamp plate is to be mounted to a supporting structure;
a damping mechanism arranged on the first clamp plate or the second clamp plate, the damping mechanism including a damper arranged substantially parallel to the hinge axis, with one end of the damper being connected to a fixed pressure block and an opposite end of the damper being connected to a movable pressure block that is movable vertically to transmit force to the damper;
wherein the movable pressure block of the damping mechanism on said first or second clamp plate has a first surface configured for abutting connection with a second surface provided on an extension from the other clamp plate, and wherein the abutting connection between the first and second surfaces is surface-to-surface and operates to move the movable pressure block in a vertical direction upon relative rotation of the first and second clamp plates towards a closed position for transmitting force to the damper which, in turn, controls closing of the hinge.
Claim 1A includes within its scope the first invention (surface-to-surface) and thus benefits from the earliest priority date (29 July 2019).
Claim 1B
A damping hinge for controlled closing of a door or gate, especially a glass door or gate, the damping hinge comprising:
a first clamp plate and a second clamp plate connected with one another for relative rotation about a vertical hinge axis, wherein one of the first clamp plate and the second clamp plate is to be mounted to a panel of the door or gate and the other of the first clamp plate and the second clamp plate is to be mounted to a supporting structure;
a damping mechanism arranged on the first clamp plate or the second clamp plate, the damping mechanism including a damper arranged substantially parallel to the hinge axis, with one end of the damper being connected to a fixed pressure block and an opposite end of the damper being connected to a movable pressure block that is movable vertically to transmit force to the damper;
wherein the movable pressure block of the damping mechanism on said first or second clamp plate has a first surface configured for abutting connection with a second surface provided on an extension from the other clamp plate, and wherein the abutting connection between the first and second surfaces is line-to-line or point-to-point and operates to move the movable pressure block in a vertical direction upon relative rotation of the first and second clamp plates towards a closed position for transmitting force to the damper which, in turn, controls closing of the hinge.
Claim 1B includes within its scope the second invention (line-to-line and point-to-point contact). It does not benefit from the earliest priority date, and instead its priority date is the filing date of the presently opposed application (2 March 2021).
Claim 17
I will split claim 17 into two claims: 17A and 17B.
Claim 17A
A damping hinge for controlled closing of a door or gate, comprising:
a first clamp plate configured to be mounted to a fixed supporting panel;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a hinge axis; and
a damping mechanism arranged on at least one of the first clamp plate and the second clamp plate including a damper arranged substantially parallel to the hinge axis and configured to retard or control relative rotation of the second clamp plate towards the first clamp plate during closing of the hinge;
wherein one end of the damper is connected to a fixed pressure member and an opposite end of the damper is connected to a movable pressure member which is movable in a vertical direction, wherein the movable pressure member on said first or second clamp plate has a surface which engages with a surface in a surface-to-surface manner from the other clamp plate for effecting movement of the movable member in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit a force to the damper during closing of the door or gate.
Claim 17A includes within its scope the first invention (surface-to-surface) and thus benefits from the earliest priority date (29 July 2019).
Claim 17B
A damping hinge for controlled closing of a door or gate, comprising:
a first clamp plate configured to be mounted to a fixed supporting panel;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a hinge axis; and
a damping mechanism arranged on at least one of the first clamp plate and the second clamp plate including a damper arranged substantially parallel to the hinge axis and configured to retard or control relative rotation of the second clamp plate towards the first clamp plate during closing of the hinge;
wherein one end of the damper is connected to a fixed pressure member and an opposite end of the damper is connected to a movable pressure member which is movable in a vertical direction, wherein the movable pressure member on said first or second clamp plate has a surface which engages with a surface in a line-to-line or point-to-point manner from the other clamp plate for effecting movement of the movable member in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit a force to the damper during closing of the door or gate.
Claim 17B includes within its scope the second invention (line-to-line and point-to-point). It does not benefit from the earliest priority date, and instead its priority date is the filing date of the presently opposed application (2 March 2021).
Claim 22
Claim 22 is specific to the second version of the invention (with the roller) so does not need to be split. Claim 22 does not benefit from the priority of parent application.
Claim 27
I will split claim 27 into two claims: 27A and 27B.
Claim 27A
A damping hinge for controlled closing of a door or gate, comprising:
a first clamp plate configured to be mounted to a supporting structure;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a vertical hinge axis;
a damping mechanism arranged on the first clamp plate or the second clamp plate and including a damper arranged substantially parallel to the hinge axis, one end of the damper connected to a fixed pressure block and an opposite end of the damper connected to a movable pressure block that is able to move in a vertical direction; and
an actuating member that extends towards the clamp plate on which the damping mechanism is arranged from the other clamp plate for operatively engaging with the movable pressure block;
wherein a surface of the actuating member engages with a surface of the movable pressure block in a surface-to-surface manner to effect movement of the movable pressure block in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit force to the damper during closing of the door or gate.
Claim 27A includes within its scope the first invention (surface-to-surface) and thus benefits from the earliest priority date (29 July 2019).
Claim 27B
A damping hinge for controlled closing of a door or gate, comprising:
a first clamp plate configured to be mounted to a supporting structure;
a second clamp plate configured to be mounted to a panel of the door or gate, wherein the second clamp plate is connected with the first clamp plate for relative rotation thereto about a vertical hinge axis;
a damping mechanism arranged on the first clamp plate or the second clamp plate and including a damper arranged substantially parallel to the hinge axis, one end of the damper connected to a fixed pressure block and an opposite end of the damper connected to a movable pressure block that is able to move in a vertical direction; and
an actuating member that extends towards the clamp plate on which the damping mechanism is arranged from the other clamp plate for operatively engaging with the movable pressure block;
wherein a surface of the actuating member engages with a surface of the movable pressure block in a line-to-line or point-to-point manner to effect movement of the movable pressure block in the vertical direction upon relative rotation of the second clamp plate towards the first clamp plate to transmit force to the damper during closing of the door or gate.
Claim 27B includes within its scope the second invention (line-to-line and point-to-point). It does not benefit from the earliest priority date, and instead its priority date is the filing date of the presently opposed application (2 March 2021).
Summary of splitting the claims
I have found that under s 43(3) independent claims 1, 17 and 27 can each be notionally split into separate claims (that is, claims 1A and 1B, claims 17A and 17B, claims 27A and 27B).
The first notional split of claims 1, 17 and 27 (that is, claims 1A, 17A and 27A) include within their scope the first invention (surface-to-surface). These claims benefit from the earliest priority date (29 July 2019). This group of claims will be referred to as Group 1.
The second notional split of claims 1, 17 and 27 (that is, claims 1B, 17B and 27B) include within their scope the second invention (line-to-line and point-to-point). These claims do not benefit from the earliest priority date, and instead its priority date is the filing date of the presently opposed application (2 March 2021). This group of claims will be referred to as Group 2.
Claim 22 is considered as a separate claim. Although claim 22 falls with the scope of Group 2, it is a narrower in scope than the claims in Group 2. Claim 22 is limited to the roller version of the invention. For this reason, claim 22 will be considered separately to Group 2.
Novelty
Novelty Legal principles
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
Consideration
D1, D2 and D7
D1 – WO2021017596A1 published 4 February 2021
D2 – AU2020277205A1 published 18 February 2021
D7 – CN110259302A published 20 September 2019
I have found above in the consideration of priority that each of D1, D2 and D7 disclose only surface-to-surface damping mechanisms, and not line-to-line damping mechanisms.
D1, D2, and D7 are the priority documents for the claims directed to the surface-to-surface damping mechanism. Thus, D1, D2, and D7 are not eligible as prior art for Group 1 of the claims (that is, claims 1A, 17A, and 27A).
Group 2 of the claims (that is, claims 1B, 17B, 27B and claim 22) do not benefit from an earlier priority date and so each of D1, D2 and D7 become eligible as prior art. However, Group 2 of the claims are not anticipated by (and thus are novel in light of) D1, D2 and D7 for the reasons already discussed.
All claims are novel in light of D1, D2 and D7.
D3 - WO2021226657A1
Whole of contents
Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.
Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.
The definition of “prior art base” given in Schedule 1 of the Act is reproduced below:
"prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
D3 is a PCT applications. A PCT application which has designated Australia is treated as an Australian patent application under the Act. The priority date of D3 is 11 May 2020 which is before the priority date (2 March 2021) of Group 2 of the claims. I have reviewed the priority document (AU 2020901504). Only the first embodiment of D3 – shown in figures 1 to 5 – is disclosed in the priority document. The first embodiment of D3 shown in figures 1 to 5 is discussed further below. Only the embodiment shown in figures 1 to 5 in D3 is entitled to the priority date claimed (11 May 2020). Consequently, the first embodiment of D3 satisfies condition (A).
D3 was published on 18 November 2021. The publication was made after the priority date (2 March 2021) of Group 2 of the claims. Consequently, D3 satisfies condition (B).
Documents D3 is unamended and thus it logically follows that the information contained in the specification was the same information at the filing date. Consequently, documents D3 satisfies condition (C).
In summary, D3 has satisfied the conditions necessary for documents to be considered prior art documents under part (b)(ii) of the definition of prior art base. Under section 7(1)(c) this is a relevant prior art documents in the consideration of novelty (i.e. ‘whole of contents’ prior art document). Notably, D3 is not prior art for the consideration of inventive step.
Consideration of D3 (WO 2021/226657 A1)
The embodiment of D3 that is also disclosed in the priority document is exemplified in figure 4:
The accompanying description states at page 5 lines 16 to 30:
“When the door to which the hinge is attached is in its normally closed condition then the hinge is said to be "closed" and this is the condition in which the hinge 10 is depicted in the figures. When the hinge is in the closed condition, the spring 20 loaded hydraulic damper 51 is in its retracted (i.e. compressed) position and is maintained in that position by cam 27 which bears against an upper region of the sloped surface 54 of sleeve 53.
When the door to which the hinge is attached is opened, then the hinge moves 25 to its open condition against the force of biasing spring 42. The rotary cam 27 rotates away from the housing 53 and the damper 51 is free to expand under its own internal spring pressure to adopt its extended position. When in the extended position, the damper 51 is ready to provide a damping action when the door (and hinge) close. Whilst the door (and hinge) are open then they must be held in this position against the 30 spring force of the biasing spring 42.”
The rounded end of cam 27 touches the sloped surface 54. At any point in time it is only the part of the cam 27 that is tangent to the sloped surface 54 which would be touching. This would only be a line of contact. Thus, this embodiment of D3 is considered a line-to-line contact.
The Opponents submissions addressing where the features of claim 1, 17 and 27 are disclosed in D3 are as follows:
“a first clamp plate and a second clamp plate” p.3, l.30 first clamping member 22 and second clamping member 22;
“a damping mechanism, arranged parallel to hinge axis, one end connected to a fixed pressure block, the opposite connected to a moveable pressure block that moves vertically” p.5, l.5 and figs 4 & 5 spring loaded hydraulic damper 51. Damper 51 is parallel to hinge axis, lower end abuts fixed portion of hinge housing, upper end is located in moveable sleeve 53 which moves vertically and transmits force to damper.
“wherein the moveable pressure block …has a surface for abutting a second surface on extension of clamp plate….” P.6, l.1 to 22 sloped surface 54 of sleeve 53 contacts surface of cam 27, which extends from other side of hinge, and dampens closing of the hinge.
I agree with this analysis, and note that the additional feature of split claims 1B, 17B and 27B of the line-to-line contact is disclosed in D3 as discussed above.
Group 2 (claims 1B, 17B and 27B) are anticipated by this embodiment of D3.
Claim 22 (which is limited to a roller mechanism) is not anticipated by this embodiment of D3. This embodiment of D3 (eligible as a ‘whole of contents’ disclosure) does not disclose a roller mechanism.
D4 - Atlantic 530 Soft Close hinge.
The SGP states in relation to D4:
“D4 is a hinge known as the Atlantic 530 Soft Close hinge. This hinge is constructed in accordance with the description and drawings found in D3. This hinge was in the public domain prior to 2 March 2021. The particulars set out in relation to D3 above also apply for D4.”

The Applicant submissions states at paragraphs 75 to 78:
“According to the Statement of Grounds and Particulars, D4 was “constructed in accordance with the description and drawings found in D3” and “was in the public domain prior to 2 March 2021”. Mr Murauer’s evidence at [6] is that he made preparations for a January 2021 product launch of D4. His notes included at Annexure MM-2 suggested that the first occasion that he showed a sample to a customer was on or about 20 January 2021 (GHA Solutions and Glass Pro).
The Statement of Grounds and Particular states that the particulars set out in relation to D3 also apply for D4.
The only evidence regarding the actual configuration of the hinge in D4 is a statement in Mr Murauer’s evidence at [15] that it was made “in accordance with the drawings and description of provisional application AU2020901504 and according to the embodiment of figures 1 to 5 of WO2021/226657”. We point out that no evidence actually showing the configuration of the hinge in D4 has been filed by the Opponent to corroborate this assertion. As such, we submit that the Opponent has not properly substantiated the configuration of the hinge of D4.
For present purposes, in any case, D4 can only be relevant prior art for any claims of the Opposed Application having a priority date on or after January 2021. For the reasons outlined in Section F. above, none of the complaints made in OS in support of the priority date attack should be accepted. This has the consequence that D4 does not form part of the prior art base for any claims of the Opposed Application.”
I note that it is not explicitly stated in the evidence whether the flyers, emails and meetings regarding the Atlantic 530 Soft Close hinge were only shared with potential buyers under an obligation of confidentiality. However, because the Atlantic 530 Soft Close was being discussed as an item that was for sale, I consider that it is implied that there was no obligation of confidentiality.
I accept that flyers and emails about the D4 - Atlantic 530 Soft Close hinge were sent in January and February 2021 as outlined in Mr Murauer’s declaration. However, the D4 flyer does not show the internal features of the device and thus the damping mechanism is not disclosed by D4.
I also accept that face to face meetings were had with representatives of various companies in January and February 2021 where the Atlantic 530 Soft Close hinge was made available for inspection and demonstration. Although it is plausible that inner workings of the Atlantic 530 Soft Close hinge was visible during these meetings such that an person with skill in the art could understand how it worked, it is not clear if this was indeed the case. I am not satisfied that I can draw the inference that the inner workings of the device were disclosed.
Although D4 was publicly disclosed and the prior use of the Atlantic 530 Soft Close hinge occurred in February 2021, I can only be satisfied that the exterior of the hinge was visible in these disclosures. The inner workings of D4 and the Atlantic 530 Soft Close hinge are not satisfactorily demonstrated by the opponent to have been disclosed.
Dependent claims
Because the claims have been notionally split, analysis of the dependent claims is impractical and thus will not be attempted in this decision. However, I provide the following brief observation, which may help the Applicant in amending the claims to overcome the identified deficiency: claims specific to a roller – claims 9 and 22 – are considered novel in light of the embodiment of D3 which benefits from the earlier priority date.
Inventive step
Inventive step legal principles
It is a requirement of subsection 18(1) of the Act that an invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:
For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
Subsection (3) prescribes the information that may be considered as:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act. Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Consideration
The SGP states:
“The Opponent relies on the common general knowledge of the person skilled in the art as it existed in the patent area as at the respective priority date of each claim in the Opposed Application.
None of the claims of the opposed application are inventive in light of D1, D2, or D4 or D7 when combined with the common general knowledge either alone or in combination.
The Opponent reserves the right to rely on further particulars in support of this ground of opposition.”
The Opponent’s submissions on inventive step state at paragraph 52:
“None of the claims alleged to lack novelty under ground 1 above involve an inventive step.”
There is essentially no expert evidence relating to the ground of inventive step.
D3 - WO 2021/226657 A1 published on 18 November 2021
D3 was published on 18 November 2021 which is after both the priority date of Group 1 (29 July 2019) and Group 2 (2 March 2021), so is not eligible as prior art for either of the groups of inventions.
D1, D2, and D7
D1 – WO2021017596A1 published 4 February 2021
D2 – AU2020277205A1 published 18 February 2021
D7 – CN110259302A published 20 September 2019
Each of D1, D2 and D7 disclose only surface-to-surface damping mechanisms, and not line-to-line damping mechanisms.
Group 1 of the claims have been found to benefit from the earlier priority date. D1, D2 and D7 were each published after the priority date (29 July 2019), and thus are not eligible as prior art for the purposes of inventive step for Group 1.
Group 2 of the claims have been found to not benefit from the earlier priority date, and instead are given the priority date of the date of filing (2 March 2021). D1, D2 and D7 were each published before 2 March 2021, and thus are eligible as prior art for the purposes of inventive step for Group 2.
Group 2 – inventive step consideration
Paradoxically, the Applicant’s arguments (in relation to determining priority) of the line-to-line contact embodiment being implicitly disclosed (or obviously suggested) in the parent application of the presently opposed application are the strongest arguments in favour of the Group 2 claims lacking an inventive step argument in relation to D1, D2, or D7. This is because the documents of D1, D2 and D7 are essentially the same as the first version of the present invention. Thus, if the line-to-line contact embodiment is implicitly disclosed (or obviously suggested) in the parent application, the same logic would suggest that the line-to-line contact is implicitly disclosed (or obviously suggested) in D1, D2 and D7.
Mr Hunter states at paragraph 37:
“Importantly, however, it is also very clear to a skilled person from the same passage that first and second surfaces providing line contact or point contact would also work, in the sense that they would also provide the required interaction and engagement for actuating movement of the 'movable pressure member' or 'movable pressure block', and thus of the damper, albeit with a higher potential for wear.”
Mr Hunter has asserted (in relation to determining priority) that, in addition to the surface-to-surface contact embodiment, it would be very clear to a skilled person that the line contact embodiment (or point contact) would also work. If this same line of reasoning was extended to the disclosures of D1, D2 and D7, it would only establish that such a modification would work; It does not inform as to whether a person skilled in the art would be motivated to make such a change. In the same sentence, Mr Hunter states that the line contact embodiment would provide a higher potential for wear, which seems to diminish (or extinguish) the motivation a person skilled in the art to make such a change.
Overall, I am not satisfied that a person skilled in the art would be motivated to modify D1, D2 or D7 such that the surface-to-surface contact mechanism was replaced by a line-to-line contact mechanism.
Clear enough and complete enough disclosure – s 40(2)(a)
Legal principles
Section 40(2)(a) states:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;
In order to comply with sec 40(2)(a), the complete 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. (see the Explanatory Memorandum for the Raising the Bar Act).
Consideration
An initial observation is that considerations of ‘clear enough and complete enough disclosure’ and support are ‘internal’ considerations of the specification, and not considerations of the specification with respect to external documents such as priority documents. Earlier in this decision I have already considered the specification with respect to priority documents. I now move to consideration of the internal consistency of the specification.
Another initial observation is that although I have split the claims under s 43(3), this was only “for the purposes of determining priority” and consequently resolving novelty and inventive step issues. The ‘clear enough and complete enough disclosure’ and support questions must be answered across the whole scope of the claims.
The Opponent states in their submissions at paragraphs 54 and 55:
“At para [0074] of the Opposed application it is stated that “[0074] In summary, the damping hinge proposed according to this invention has the first inclined surface of each movable pressure block in abutting connection with the second inclined surface on the other clamp plate, so that the movable pressure block and damper can move vertically.”
However, none of the independent claims define first and second inclined surfaces. The skilled person is not taught how the invention can work without the first and second inclined surfaces taught as being “according to the invention” and therefore cannot work the invention without undue experimental burden. The invention as claimed is therefore not sufficiently described.”
The Opponent has argued that the two surfaces defined in claims 1, 17 and 27 must be inclined surfaces. Although the first embodiment of the invention utilises two inclined surfaces (the surface-to-surface contact between the two complementary inclined surfaces), the second embodiment (the roller embodiment) utilises one inclined surface and one cylindrical surface. Thus, the invention can indeed work without both surfaces being inclined. Furthermore, I note that there is no evidence to demonstrate (or support the assertion) that there would be an undue burden on the person skilled in the art to produce the invention across the full width of the claims.
I consider that the complete specification provides 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, and thus complies with s 40(2)(a).
Support – s 40(3)
Legal principles
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J explored the requirement of support at [546]-[547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom:
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed”.
In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following test in order to determine whether a claim is supported by the description.
•Construe the claims to determine the scope of the invention as claimed,
•Construe the description to determine the technical contribution to the art, and
•Decide whether the claims are supported by the technical contribution to the art.
In Calix Limited v Grenof Pty Ltd [2023] FCA 378 at 128 Nicholas J commented on support issues which arises from an inconsistency between the claims and the description rather than the claims being too broad:
“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed. See, for example, the invention described in the relevant priority document and the invention claimed in AstraZeneca at [254]-[255] which were characterised by the Full Court of the Federal Court as “fundamentally different” inventions. It is difficult to see how a claim to an invention that is fundamentally different from that which is disclosed in the specification could be “supported by matter disclosed” in accordance with s 40(3) of the Act.”
Consideration
The Opponent states in their submissions at paragraphs 56-58:
Section 40(3) requires that the claims “are supported by matter disclosed in the specification”.
As explained for Ground 3 above, para [0074] of the Opposed application states that the damping hinge according to the invention includes first and second inclined surfaces.
However, none of the independent claims define first and second inclined surfaces. The skilled person is not taught how the invention can work without the first and second inclined surfaces taught as being “according to the invention”. The claims are therefore not supported by matter disclosed in the specification.
The Opponent’s argument for lack of support is essentially the same as their argument for lack of ‘clear enough and complete enough disclosure’; that is, the Opponent argues that the two surfaces in abutting connection must be inclined surfaces. I have found that the specification provides two embodiments: one embodiment where the two surfaces in abutting connection are inclined, and another embodiment where the only one of the two surfaces in abutting connection is inclined. Because of the similarity of arguments, the considerations of support and ‘clear enough and complete enough disclosure’ are “two sides of the same coin” (Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 at 543).
I consider that there is support for each of the claimed inventions in the presently opposed application.
Conclusion
The claims do not all benefit from the earliest priority date. I have found that under s 43(3) independent claims 1, 17 and 27 can each be notionally split into separate claims (that is, claims 1A and 1B, claims 17A and 17B, claims 27A and 27B).
The first group of claims (Group 1 which are claims 1A, 17A and 27A) benefit from the earliest priority date (29 July 2019).
The second group of claims (Group 2 which are claims 1B, 17B and 27B) do not benefit from the earliest priority date, and instead its priority date is the filing date (2 March 2021). Claim 22 also does not benefit from the earliest priority date, and its priority date is also 2 March 2021.
Group 1 (claims 1A, 17A and 27A) is novel in light of the prior art.
Group 2 (claims 1B, 17B and 27B) lack novelty (‘whole of contents’) in light of D3 (WO 2021/226657 A1).
Claim 22 is novel in light of D3 (WO 2021/226657 A1).
The applicant is given two months from the date of this decision to propose amendments to overcome the lack of novelty findings.
Costs
Costs typically follow the event. The Opponent has been successful in their opposition. Although the Opponent has engaged in less-than-ideal activity through the opposition (e.g. the filing of request to amend the SGP shortly before the hearing and the filing of additional written submissions on the day of the hearing), I do not consider this activity to be sufficient cause to vary the award of costs. Costs are awarded according to Schedule 8 against the Applicant.
Xavier Gisz
Delegate of the Commissioner of Patents