Claymont Bond Pty Ltd v Filip Sedic
[2018] APO 88
•6 December 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Claymont Bond Pty Ltd v Filip Sedic [2018] APO 88
Patent Application: 2014204242
Title:Skin cleanser
Patent Applicant: Filip Sedic
Opponent: Claymont Bond Pty Ltd
Delegate: R Subbarayan
Decision Date: 6 December 2018
Hearing Date: 13 September 2018, in Canberra
Catchwords: PATENTS – Opposition to grant of patent under s59 – hand-held powered device for cleansing the skin – whether claims are novel and inventive – opposition is unsuccessful – costs awarded
Representation: Patent attorney for the applicant: Dr Andrea Ruhrmann of FB Rice Pty Ltd
Counsel for the opponent: Marcus Fleming
Solicitor for the opponent: G&M Lawyers
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014204242
Title:Skin cleanser
Patent Applicant: Filip Sedic
Date of Decision: 6 December 2018
DECISION
The opposition does not succeed. The claimed invention is novel and inventive.
Subject to any appeal, the application is to proceed to grant.
Costs according to Schedule 8 are awarded against the opponent, Claymont Bond Pty Ltd.
REASONS FOR DECISION
BACKGROUND
Patent application AU 2014204242 in the name of Filip Sedic (the applicant) was filed on 7 January 2014 as a PCT application (PCT/IB2014/000530) and claims an earlier priority date of 7 January 2013. Following examination the application was advertised as accepted on 25 August 2016. On 16 November 2016 Claymont Bond Pty Ltd (the Opponent) filed a notice of opposition to the grant of the patent. The Statement of Grounds and Particulars (SGP) was filed on 16 February 2017, but this was amended on 15 November 2017 following the filing of evidence. The matter was heard in Canberra on 13 September 2018. While the opponent appeared in person, the applicant appeared by video link.
GROUNDS OF OPPOSITION
The application has been opposed under the grounds of lack of novelty and lack of inventive step.
EVIDENCE
Evidence in support from the opponent comprises the following:
•Declaration of Derrick Roy Beech dated 08 May 2017 (Beech #1)
•Declaration of Irene Patsalides dated 16 May (Patsalides)
Evidence in answer from the applicant comprises the following:
•Declaration of Henry Greaves dated 15 August 2017 (Greaves)
•Declaration of Ethan Imboden dated 14 August 2017 (Imboden)
Evidence in reply from the opponent comprises the following:
•Declaration of Derek Roy Beech dated 10 October 2017 (Beech #2)
The opponent also filed a second declaration of Ms Patsalides, but a delegate of the Commissioner held that it does not have the character of evidence in reply and would not therefore be considered as evidence in reply.
Dr Beech has been a consultant in the field of medical technology since 1996 and has provided consultancy services in respect of skin and body treatment, cosmetic topical agents, aesthetic treatments and vibrating massage devices. He provides evidence on personal vibrating devices, his understanding of the present invention and the prior art relied on by the opponent.
Ms Patsalides is a director of Claymont Bond. She is a qualified pharmacist with her own pharmacy practice. She also has qualifications in cosmetic chemistry and founded her own cosmetic brand, Mirenesse in 1998. Claymont Bond is the cosmetics manufacturing company of the Mirenesse brand and its product range includes cosmetics, other skincare products, beauty tools including bags, brushes and beauty instruments. She provides information on some of the skin cleansing products including vibrating devices that were available before the priority date (exhibits IP-1to IP-24).
Mr Greaves is an industrial designer with over thirty years’ experience in industrial and product design. He has worked as a Director with Cube Industrial Design, Sydney, a company that has undertaken significant product design work in the area of personal vibrating devices. He provides evidence on his understanding of the present invention and the prior art relied on by the opponent.
Mr Imboden is a qualified industrial designer who has worked in the field of industrial and product design since 1995. In 2003, he founded Jimmyjane, a San Francisco based company that specialises in sexual products including personal vibrators. He is listed as a co-inventor of two of the prior art patent documents relied on by the opponent. He provides evidence on some of the differences between skin cleansers and vibrating massagers and the prior art relied on by the opponent.
THE RELEVANT LAW
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the opposed application was filed after 14 April 2013. As a consequence the Commissioner may, under section 60(3A), refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
SPECIFICATION
The present invention relates to a personal device for cleansing the skin. The specification states that skin cleansing creams or lotions are typically applied manually using a sponge or brush, but “Cleaning by hand often fails to adequately apply lotions to the skin, and can be ineffective at removing grease, oils, and other contaminants”[1]. It notes that “An effective skin cleanser device should clean the face more effectively than hand cleaning, but avoid abrasions or other harsh impacts on the skin”[2].
[1] Specification at [0002]
[2] Specification at [0002]
The specification then provides a broad summary of the invention in paragraph [0003]:
A skin cleanser includes one or more oscillating motors or other electromagnetic device that can provide the skin cleanser with various frequency pulsations, and an exterior that can be composed of a soft elastic material, such as silicone, and one or more textured surfaces, including rounded touch-points of 0.5 to 2.5 mm of diameter, or solid surfaces with ridges for cleaning or otherwise interacting with the skin. The oscillating motor moves or oscillates the textured surfaces for application to a user's skin. As the user moves the skin cleanser on the skin, the oscillating pulsations combined with the textured surfaces' touchpoints remove oil and other contaminants on the skin's surface. The oscillating pulsations provide a tapping motion to the user's skin to cleanse and loosen contaminants. The oscillations occur at around 50-300 Hertz (Hz).
The specification then describes a number of embodiments of the present invention with reference to figures 1-18 of which figures 1 and 3 are reproduced below:
These figures show a hand-held skin cleansing device comprising a body with a flat base for standing the device upright. The entire body is covered by a silicone exterior covering. One side of the upper portion of the silicone covering includes a textured surface (100, 300) comprising rounded touch points that constitutes a skin cleansing brush. An oscillating motor 110 that is provided within the device creates pulsations/vibrations of the touch points. The vibrations are typically in the frequency range of 50-300 Hz. The motor is powered by a battery that is also housed within the device. A controller such as a printed circuit board controls the operation of the motor. The controller also includes a mode control 310 and frequency controls 320. When the motor is turned on and the brush surface is applied to the skin surface, the pulsations produced by the oscillating motor act to cleanse the skin thoroughly since “the textured surface directs the power of the high-frequency motor substantially orthogonal to the skin's surface, which unlocks the skin's natural potential”[3]. The specification also notes that as the device relies on a tapping motion of the touch points rather than a rotary motion, it provides a deeper clean without any abrasive scrubbing.
[3] Specification at [0027]
The specification describes various arrangements of the textured surface. For example it may include thinner touch points for gentle cleansing of non-oily areas of the skin and thicker touch points for oily areas of the skin. The textured surface can also comprise ridges in addition to the touch points.
In alternative embodiments, the device includes textured surfaces on both sides of the upper portion and a second oscillating motor that can operate alone or in combination with the first oscillating motor.
The specification ends with 30 claims of which independent claims 1 and 20 are as follows:
1.A skin cleanser comprising:
a skin cleanser body configured to stand on a surface and configured to be held in a hand of a user, the skin cleanser body having an upper portion and a lower portion, the skin cleanser body comprising:
a silicone exterior covering substantially all of the exterior of the skin cleanser body;
a first side of the silicone exterior including:
a first textured surface area of thicker touch-points positioned at the upper portion of the skin cleanser body, the first textured surface area integrally forming part of the silicone exterior; and
a first oscillating motor located within the skin cleanser body, the first oscillating motor configured to produce pulsations of the first textured surface area; and
at least one control located on the lower portion of the skin cleanser body and operable through the silicone exterior, the at least one control configured to operate the first oscillating motor.
20. A skin cleanser comprising:
a skin cleanser body comprising:
a silicone exterior covering substantially all of the exterior of the skin cleanser body;
a first side of the silicone exterior including:
a first textured surface area of first touch-points positioned on the skin cleanser body, the first textured surface area integrally forming part of the silicone exterior,
a second side of the silicone exterior including:
a second textured surface area of touch-points or ridges positioned on the skin cleanser body, the second textured surface area integrally forming part of the silicone exterior;
a first oscillating motor located within the skin cleanser body, the oscillating motor configured to produce pulsations of the first and second textured surface areas; and
at least one control located on the skin cleanser body and operable through the silicone exterior, the at least one control configured to operate the first oscillating motor.
CLAIM CONSTRUCTION
The approach to the construction of claims was summarised by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
While the opponent did not raise any construction issues, I think it is useful to construe some of the terms used in the independent claims.
Each of the independent claims is directed to a skin cleanser. The Oxford English Dictionary defines ‘cleanser’ as “One who or that which cleanses” and ‘cleanse’ in turn is defined as “To make clean, purify, free from dirt or filth”. This definition is also consistent with Mr Greaves understanding that a skin cleanser is “designed to push out oils and loosen contaminants in the skin surface”. Therefore the term ‘skin cleanser’ can be construed as a device that cleans the skin by freeing it from dirt, oil and other contaminants.
Each of the independent claims also defines a “textured surface”. The Macqaurie Dictionary Online defines ‘textured’ as “characterised by a rough or raised texture” and therefore the term ‘textured surface’ would mean a surface that has a rough or raised texture.
Each of the independent claims also defines the textured surface as comprising “touch points”. While there is no explicit definition within the specification of what is meant by touch points, it is clear from reading the specification that this term refers to tips or raised points of the textured surface which come into contact with the skin of the user with a tapping motion to transmit the pulsations produced by the oscillating motor to the skin.
The specification also distinguishes between thinner and thicker touch points, with the thinner touch points providing for gentle cleansing for non-oily or sensitive skin and the thicker touch points providing for targeted cleansing of oilier areas. The thicker touch points are described as having greater resistance than the thinner touch points
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 at [20], 137 CLR 228 at 235:
“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”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must “contain clear and unmistakeable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486). Also as stated in General Tyre (supra) “A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has ‘planted the flag’ as opposed to having provided merely ‘a signpost, however clear, upon the road’ or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
D1: US 2011/0071445 (Imboden at al.)
This is the only prior art relied on by the opponent under this ground and is one of the patent documents in which Mr Imboden is named as co-inventor.
This document describes a personal massage device that includes a lower portion that is adapted to be held and manipulated by the hand of a user and an upper portion that is adapted to be applied to a portion of the human body. Figure 2 of this device is reproduced below:
Physically it has most of the features of claim 1 including a body 10 that is configured to stand on a surface, an upper portion 14 adapted to be applied to a portion of the user’s body, a lower portion 12 adapted to be held in the hand of the user, a silicone exterior covering all of the exterior of the body, a first oscillating motor located within the body that is configured to produce pulsations of the upper portion of the body and controls 18 on the lower portion to operate the oscillating motor. All of this is not in dispute.
The applicant however submitted that D1 is a personal massager and not a skin cleanser device and that it does not have a first textured surface area of thicker touch points.
The title of D1 is “Massage device with flexible substructure” and on reading the document it is apparent that the entire disclosure of this document is in the context of a hand-held massager that can be “applied to various parts of the human body to achieve various forms of massage, including relaxation massage, muscular/tissue massage, and erotic massage”[4]. There is no suggestion that this device can be used as a skin cleansing device.
[4] D1 at [0022]
In relation to the surface of the upper portion that is meant to be applied to various parts of the body, D1 states that “Regardless of the type of massage intended, it is desirable that second end
14 be shaped to provide a smooth surface that can comfortably move while in contact with the human body”[5] but also teaches that when the device is intended to provide sexual stimulation by inserting into the vagina, other possible arrangements for the surface of the second end “can be used to provide similar stimulation, such as the use of ribs, bumps, various textures, multiple or repeating sections of tapering or widening, etc”[6].
[5] D1 at [0022]
[6] D1 at [0061]
The opponent accepted that there is no clear direction in D1 that the device can be used as a skin cleanser, but submitted that all the physical features of claim 1 are disclosed in D1 and the device of D1 is suitable for use as a skin cleanser.
Dr Beech also notes that the device of D1 is not described as a skin cleanser but states:
“Notwithstanding the claim to a "skin cleanser", as noted at paragraph 32 above, in my opinion the fundamental construction and operation of the device described in US445 is the same as that described in AU242”[7]. He is also of the view that “there are no significant differences in function between vibrating devices designed to be used for personal massage and those designed to be used for skin care applications. All such devices fall into a broad category of vibrators for application to a user's skin or body”[8].
[7] Beech #1 at [40]
[8] Beech #1 at [23]
Mr Greaves disagrees with this assessment of Dr Beech and has stated:
“For a device to function as a skin cleanser, it must have some mechanism or material characteristic that acts to cleanse skin. That is, the interface between the device and the skin must function to cleanse the skin. Personal vibration devices are designed to transmit vibration into the body with the optimisation of personal pleasure or relief in mind, but in my opinion they would not make very good skin cleansers because they are not designed to push out oils and loosen contaminants in the skin surface”[9].
[9] Greaves at [10]
In relation to the disclosure of the use of ribs, bumps and other textures in paragraph [0061] of D1, Mr Greaves is of the view that this disclosure is “envisaged for the purpose of providing sexual stimulation to personal internal areas of the body and not for the very different purpose of cleansing the external skin of the user” and that “A device shape and surface configuration that would be best for providing internal stimulation would differ from a device shape and surface configuration that would be best for skin cleansing”[10].
[10] Greaves at [14]
Mr Imboden, who is a co-inventor of the invention of D1 is also of a similar view as Mr Greaves and has stated that the overall shape of D1 is “designed to provide pleasure, primarily through application to the clitoris or labia, or for insertion into the vagina. It is smooth, not textured as would be desired for a cleansing application. It is very large and bulbous, so would be difficult to apply to the folds and details of a face. It would not, for instance be well suited to reaching the intricate areas around and beneath the nose that are commonly targeted for cleansing”[11].
[11] Imboden at [15]
He has also stated that while other possible arrangements are mentioned in paragraph [0061], “These variations were included to express all possibilities in the patent application and the use of these arrangements was not implemented in the product that went to market. Had they been included, any surface arrangement would likely have had structural rigidity to achieve transmission of vibration into the body as per the intended use of the device, rather than be elastic or flexible or bristle-like”[12].
[12] Imboden at [15]
There is no question that the device of D1 is primarily intended for different kinds of massage including relaxation massage, muscular massage and erotic massage. It is also clear from paragraph [0022] that the second end (upper portion) desirably has a smooth surface so that it can “comfortably move while in contact with the human body” and direct the force evenly to the body “without creating discomfort through areas of excessive pressure”. Paragraph [0061] relied on by the opponent clearly focusses on providing sexual stimulation by inserting the device into the vagina. It is in this context of providing sexual stimulation that this paragraph then talks about other arrangements such as ribs, bumps and other textures. In my view, there is no clear teaching in D1 that such other arrangements should be provided when the device is intended for massages other than erotic or sexual massage. Moreover there is no clear disclosure that such other arrangements would comprise ‘touch points’ as required by the claimed invention.
While I accept that a user may well apply such massagers with ribs or bumps for relaxation or muscular massage on other external parts of the body, the evidence of Mr Greaves and Mr Imboden is that a textured surface provided for the purpose of sexual stimulation would not be well suited for cleansing the skin due to the differing requirements of the textured surface for these two purposes. For example Mr Greaves states in paragraphs [15, 16] that the touch points defined in claim 1 would need to have sufficient elasticity and flexibility to cleanse the skin by loosening contaminants from the external surface of the skin without overly abrading the skin. Mr Imboden states that in a massager the surface applied to the body is intended for “transmitting vibrations into the body and its various subcutaneous structures, rather than to abrade or cleanse the surface of the skin itself”[13] and that any surface texture provided in D1 for the purpose of sexual stimulation would likely have “structural rigidity to achieve transmission of vibration into the body as per the intended use of the device, rather than be elastic or flexible or bristle-like”[14].
[13] Imboden at [14]
[14] Imboden at [15]
Dr Beech has countered this evidence of Mr Greaves and Mr Imboden by arguing that the textured surface defined in claim 1 is “not limited by reference to any particular size or shape. The claims are quite broad, and generally contemplate the use of any design or “touch point” or “ridge””[15]. He also notes that even the present application contemplates that the device “While referred to here as a skin cleanser, the device can also perform other functions besides cleansing, including massaging, exfoliating, buffing, stimulating, toning, exercising, heating, applying lotions or other substances, and so forth”[16].
[15] Beech #2 at [7(b)]
[16] Specification at [0003]
Whilst it is true that claim 1 does not specify any particular size or shape for the thicker touch points, as the claim is specifically defined as a “skin cleanser”, this naturally limits the touch points to the types of touch points that would be suitable to cleanse the skin. Mr Greaves’ and Mr Imboden’s evidence that the requirements of a textured surface for skin cleansing would be quite different to that for massage has not been disputed by Dr Beech. The passing reference to the device of the present invention being useful for applications such as massage does not in any way imply that the requirements of the textured surface for these two applications would be the same.
In my view, there is no ‘clear and unmistakeable directions’ in D1 that the massager described therein can be used as a skin cleanser and also any disclosure of a textured surface on the upper portion of the device is for the purpose of sexual stimulation and not for skin cleansing. Furthermore there is no teaching that such a textured surface could comprise touch points.
Claim 1 is therefore novel over D1. Claim 20 is also directed to a skin cleanser and has similar features to claim 1 and consequently it is also novel over D1.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
(2) 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).
(3) The information for the purposes of subsection (2) is:(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“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.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51] - [53] also approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the reformulated Cripp’s question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59 the High Court stated at [41]:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Common General Knowledge (CGK)
The principles relating to CGK was set out by Middleton J in Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11 at [214]-[218]:
“As was made clear in Minnesota Mining and Manufacturing Co & 3M Australia Pty Ltd v Beiersdorf (Aust) Limited (1980) 144 CLR 253 at 292,the common general knowledge:
involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.
Common general knowledge is knowledge actually known or used by skilled addressees generally, or accepted by “the bulk of those who are engaged in the particular art”: see British Acoustic Films Ltd v Nettlefold Productions (1936) 53 RPC 221 at 250. As the High Court emphasised in Aktiebolaget Hässle (2002) 212 CLR 411 at 426 [31], information cannot be treated as part of the common general knowledge unless there is “evidence of its general acceptance and assimilation” by persons skilled in the art.
In Aktiebolaget Hässle (2002) 212 CLR 411, the High Court expressly rejected the contention that the results of a routine literature search could be included within common general knowledge, absent proof that the results had become part of the common general knowledge (at 435-436 [57]):
There was no finding that what was disclosed by those documents had entered the common general knowledge of those in Australia experienced in the practical work of formulating drugs for therapeutic use. Rather, reliance was placed upon the notion, illegitimate after Minnesota Mining, of a ‘routine literature search’.
As I noted in Eli Lilly [2013] FCA 214, information does not constitute common general knowledge merely because it might be found, for example, in a journal, even if widely read by persons in the art: see Wake Forest University Health Sciences v Smith & Nephew Pty Ltd (No 2) (2011) 92 IPR 496; [2011] FCA 1002 at 514 [96], citing British Acoustic Films (1936) 53 RPC 221 at 250 (which was also affirmed in General Tire (1971) 1A IPR 121 at 135). Reference in this regard is made to the words of Luxmoore J in British Acoustic Films(1936) 53 RPC 221 at 250, cited by Lehane J in Aktiebolaget Hässle v Alphapharm Pty Ltd (1999) 44 IPR 593; [1999] FCA 628 at 605[39]:
In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art.
In Alphapharm (2008) 76 IPR 618; [2008] FCA 559, Lindgren J observed that (at 667 [221]):
[I]t 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.”
In his evidence at paragraphs [18]-[20] Dr Beech asserts that personal vibrating devices for massage were CGK in the art at the priority date and that some of the typical features of such devices were as follows:
·They operate by providing movement to the skin and underlying tissue.
·They could also be used for sexual stimulation.
·They typically include an oscillating motor that produce vibrations in the frequency range of 50-300 Hz.
·The skin contacting surface can be textured with bumps and ribs.
·They were commonly made of a plastic or rubber material, with silicone being a preferred material for the exterior or skin contacting portion as it is a very hygienic material.
Neither Mr Greaves nor Mr Imboden have disputed this and I am therefore satisfied that personal vibrating massagers with the above-mentioned features were CGK at the priority date.
Dr Beech also states at [21] that prior to January 2013, he was also “aware of the use of vibrating devices for skin care or skin-cleansing applications (including through my work as a consultant)” and that “features of such devices include:
(a) a handle or area designed to be held by the user of the device;
(b) an oscillating motor designed to produce vibrations;
(c) brushes, combs or a generally flat surface with protrusions (ie, bumps) designed to make contact with the user's skin;
(d) in some cases. detachable or interchangeable attachments or heads; and
(e) the ability to use the device with water or a skin treatment cream or lotion”.Ms Patsalides has identified in her evidence, a number of skin cleansing devices that she was aware of before the priority date (exhibits IP-1 to IP-24). These include manual face brushes with bristles and nodes, motorised devices with rotating brushes and also motorised devices with vibrating brushes (IP-9, IP-10, IP-15, IP-19, IP-20 and IP-24).
While Dr Beech and Ms Patsalides have stated that they were aware of vibrating skin cleansers before the priority date and I accept that, neither of them clearly state that such devices were CGK at that time. As noted by the authorities just because something is known or disclosed in a series of articles does not make it CGK without further evidence to establish that this information had become part of the background knowledge of persons skilled in that art. Such information is however lacking in the present case. Although a number of skin cleansing devices identified by Ms Patsalides use a vibrating action, there is no further evidence to satisfy me that such vibrating devices had become widely known and accepted without question by persons skilled in the art in Australia before the priority date. In fact as noted by the applicant, some of the exhibits such as IP-21 and IP-22 do not have any publication date at all and some of the exhibits such as IP-23 and IP-24 are dated after the priority date even though Ms Patsalides states these were available before the priority date. Similarly while Dr Beech states that it was common practice to use vibration for cleaning purposes, the example he gives is a vibrating bath for cleaning jewellery or surgical instruments. He does not assert that vibratory skin cleansers were CGK.
Based on the opponent’s evidence I cannot be satisfied that motorised hand-held skin cleaning devices that operate by a vibrating/pulsating action of the skin contact surface of the device had become part of the CGK at the priority date.
With regard to the provision of a textured surface, it is Mr Greaves’ view that a textured surface provided for the purpose of skin cleansing would have different requirements to one provided for the purpose of massage or sexual stimulation. He has stated that in a skin cleanser the interface between the device and the skin functions to cleanse the skin by pushing out oils and loosening contaminants in the skin surface, whereas in a personal massager the interface is designed to transmit vibration into the body for the purpose of personal pleasure and sexual stimulation.
“A device shape and surface configuration that would be best for providing internal stimulation would differ from a device shape and surface configuration that would be best for skin cleansing. For example, an area of small silicone touch points for surface skin cleansing is unlikely to be desirable in a personal vibrator for internal use”[17].
[17] Greaves at [14]
He has further stated that his understanding of the nature of touch points that are provided on skin cleansers is that “they provide some resistance to the skin as they are pulsated by the oscillating motor, but being integrally formed with the silicone exterior surface, have elasticity and flexibility, so as not to overly abrade the skin surface. The thicker touch points allow for more targeted cleansing of oilier areas and hard to-reach points around the nose, ears and hairline”[18].
[18] Greaves at [15]
Mr Imboden is also of a similar view when he states at [7] that optimizing a design for massagers and vibrators is different from optimizing one for treating the surface of the skin. He also notes that skin cleansers have “some mechanism or material solution for freeing dirt, oil, etc from the skin”[19] whereas it was sought to have the “simplest, smoothest surfaces possible in our vibrator designs as we found larger contact areas to be more effective/efficient for transmitting vibrations further into the body”[20].
[19] Imboden at [13]
[20] Imboden at [8]
Dr Beech does not refute these general principles in relation to the differing requirements for the skin contacting surfaces in skin cleansers and massagers in his evidence in reply. Hence based on the evidence it is clear that a textured surface provided for the purpose of massaging or sexual stimulation in a personal vibrator is unlikely to perform well as a skin cleanser.
Lack of Inventive Step in light of CGK
The opponent submitted that the claimed invention lacks an inventive step in light of the CGK alone as in essence, the application attempts to claim a well-known silicone covered personal vibrator for use in skin cleansing. They argued that as it was common practice to use vibration for cleaning purposes by assisting with the removal of loose particles from surfaces or objects, the person skilled in the art would have as a matter of routine be led to try using the vibrating massager on the skin with the expectation that it would cleanse the skin.
While I accept that vibrating personal massagers with a textured surface made of silicone were CGK in the art, I have found that hand-held skin cleansers that cleanse using vibration of the textured surface was not CGK at the priority date. While Dr Beech cites the example of a vibrating bath to clean jewellery or surgical instruments in support of his assertion that the use of vibration for cleaning was CGK, the cleaning of a person’s skin is clearly non-analogous to cleaning jewellery in a vibrating bath. Moreover these vibrating bath devices operate using ultrasonic waves and not with a vibrating textured surface. I am not therefore satisfied that the person skilled in the art would as a matter of routine be led to try a well-known personal massager on the skin with the expectation that it would cleanse the skin by removing dirt and other particles from the skin. Moreover while I have found that personal vibrators with bumps and ridges were CGK, the evidence does not show that the provision of touch points was also CGK. In fact based on the uncontested opinion of Mr Greave in paragraph [14] of his evidence, it is highly unlikely that these personal vibrators would have touch points suited for skin cleansing.
The claimed invention is not obvious in light of the CGK at the priority date.
D1 when combined with CGK
The opponent submitted that D1 discloses a device that is functionally equivalent to the claimed device. They argued that although the device of D1 is described as a personal massager/vibrator, it is readily adaptable for use in skin cleansing applications and to the extent any alterations or additions, such as arrangement of textures in the silicone exterior, need to be made, such alterations or additions would amount to immaterial workshop changes which would not involve any inventive step.
As discussed under “Novelty”, the disclosure of D1 is in relation to vibrating massagers particularly suited for sexual stimulation and there is no suggestion that it can be used for cleansing the skin. The CGK in relation to powered personal skin cleansers did not extend to vibratory devices. It is also clear from the evidence that the requirements for the textured skin contacting surface of a skin cleanser would be different to the requirements for the textured skin contacting surface of a personal massager. I can therefore see no logical basis to conclude that the person skilled in the art would be directly led to try the vibrating personal massager of D1 as a skin cleanser by providing a textured surface or modifying the textured surface contemplated in paragraph [0061] of D1 to include touch points so that the textured surface is capable of providing a skin cleansing action.
D2: US 2007/0179412 (Imboden) or D3: US 2011/0098613 (Thomas) when combined with CGK
D2 is titled “Inductively Chargeable Massager” and similar to D1, it also relates to a personal vibrator/massager. This device is provided with a silicone outer skin, a pair of vibrating motors and a rechargeable battery that can be inductively charged. There is no disclosure of a textured surface comprising touch points or that the device can be used to cleanse the skin.
D3 is titled “Massage Device and Control Methods” and also relates to a personal vibrator/massager. This device is provided with a silicone exterior surface covering, a vibrating motor and a rechargeable battery. There is no disclosure of a textured surface comprising touch points or that the device can be used to cleanse the skin.
The opponent submitted that although the devices of D2 and D3 are described as personal massagers/vibrators, they are readily adaptable for use in skin cleansing applications and to the extent any alterations or additions, such as arrangement of textures in the silicone exterior, need to be made, such alterations or additions would amount to immaterial workshop changes which would not involve any inventive step.
I do not find these submissions persuasive for the reasons that I have already articulated with reference to D1. The claimed invention is not obvious in light of D2 or D3 when combined with the CGK.
D4: CA 136694 (McNeil-PPC, Inc.) when combined with the CGK
D4 is a registered design for a device titled “Powered Personal Cleaner”. Being a registered design and not a patent, the description is very brief and relates to the shape and ornamentation of the personal cleanser. The description reads as follows:
The design is the features of shape and ornament of the portion of a powered personal cleanser as shown in solid lines in the drawings. The portions shown in stippled lines do not form part of the design. The bold wavy line in Figures 3 to 6 do not constitute a feature of the design. The bold wavy line represents a boundary between design and non-design portions. Drawings of the design are included. FIGURE 1 is a perspective view of a powered personal cleanser showing the design; FIGURE 2 is a front view thereof; FIGURE 3 is a bottom view thereof; FIGURE 4 is a left side elevational view thereof, the right side elevational view being substantially a mirror image thereof; FIGURE 5 is a top view thereof; and FIGURE 6 is a rear view thereof.
Figures 1 and 5 of D4 are reproduced below:
The opponent submitted that the device depicted has a flat base, a textured surface including touch points for application to the skin and is operable by a power button located on the side of the device (figure 5) and to the extent the features of an oscillating motor or a silicone exterior covering are not expressly disclosed, such features would have been obvious to the PSA given the express intended use of the device as a powered cleanser.
I have earlier found that a powered cleanser that uses a vibrating or pulsating brush was not CGK at the priority date. Also while I accept that the use of silicone for the skin contacting brush was CGK, there is no evidence to establish powered skin cleansers with a silicone exterior covering substantially the entire exterior of the device was CGK at the priority date. Therefore even when the disclosure of D4 is combined with the CGK at the priority date, it would not lead to the claimed invention.
The claimed invention is not obvious in light of D4 when combined with the CGK.
CONCLUSION
The opposition is unsuccessful. The claimed invention is novel and inventive. Subject to any appeal, I direct that the application is to proceed to grant.
COSTS
Both parties have sought costs in this matter. As the opposition is wholly unsuccessful, I award costs against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents
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