Concorde Trading Pty Ltd v Croner Trading Pty Ltd
[1992] APO 54
•25 September 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. 571375 in the name of Concorde Trading Pty Ltd
Title: Jumpball
Action: Opposition by Croner Trading Pty Limited under Sec 59
Decision: Issued . Applications for special leave under Reg 59 withdrawn; specification does not comply with Sec 40; claims not novel; time to amend specification allowed.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 571375 by CONCORDE TRADING PTY LTD and opposition by CRONER TRADING PTY LTD under section 59 of the Patents Act 1952
background
Patent application 571375, titled "Jumpball", was lodged on 30 July 1986 by J.L. Blankenzee. The application was advertised accepted on 14 April 1988. Subsequent to acceptance there have been several changes in the name of the applicant; the applicant is now recorded as Concorde Trading Pty Ltd (Concorde).
On 13 July 1988 Croner Trading Pty Ltd (Croner) lodged a notice of opposition to the application under sec 59(1) of the Patents Act 1952. Evidence in support of the opposition was completed on 15 May 1989. Evidence in answer was completed on 15 June 1990, and evidence in reply on 26 September 1991.
On 10 April 1992 Concorde lodged an application for special leave to adduce further evidence under reg 59 of the Patents Act 1952. The application was accompanied by a statutory declaration by Mr John Walsh, patent attorney with Davies Collison Cave. On 16 June 1992 Concorde lodged a second application for special leave to adduce further evidence, accompanied by another statutory declaration by Mr Walsh. Croner objected to both special leave applications.
A single hearing on the substantive opposition and the special leave applications was held in Canberra on 17 June 1992. Concorde was represented by Mr Paul Taylor, patent attorney with Davies Collison Cave, and Croner was represented by Mr Bruce Caine of counsel, assisted by Mr Robert Cross, patent attorney with Phillips Ormonde & Fitzpatrick.
THE SPECIFICATION
The specification states that the invention relates to play or sports apparatus, known as a jump ball, of the type wherein an inflatable ball body is coupled to a rigid annular plate encircling the ball body.
Jump balls of this type are generally known and consist of an inflatable ball-shaped body made of an elastic material, for example an elastic plastic such as polyvinyl chloride, in a rotation casting mould whereby plastic is introduced into a heated mould and distributed over the inner wall of the mould by centrifugal force to form the wall of the ball body. The annular plate may consist of any sufficiently rigid material, but is usually made of plastic by injection moulding.
The ball body may be coupled to the annular plate by welding. However this can weaken the wall of the ball body or result in an inferior connection between the relatively soft plastic of the ball body and the hard plastic of the annular plate. Thus the ball body is more commonly coupled to the annular plate by frictional engagement produced by positioning the deflated ball body within the annular plate and then inflating the ball body until it is constricted by the plate so as to jam against and bulge out on either side of the plate to form a waist or "groove" which tightly engages with the inner rim of the plate.
Jump balls of this type are used in a manner similar to that of a pogo-stick. A user stands on the annular plate and grasps the ball body between his or her feet. The user is then able to perform successive bouncing operations with the jump ball by the procedure used with a pogo-stick but with the user's hands free. However because the ball body slowly deflates over time, the high loads imposed on the weld or friction connection between the ball body and the annular plate during continued use of the jump ball may cause the plate to suddenly slip down over the ball body causing injury to the user.
Having discussed the prior art and its associated problems, the specification then explains the purpose of the invention in the following terms:
" An object of the invention is now to provide a jump ball,
wherein the connection between the ball body and the
annular plate is such that, without a welded connection,
still such a tight connection is created that slipping
is excluded. The invention further aims to achieve
this independently of the shape of the ball body, thus
also for a ball body that does not show a groove
obtained by inflation."
The specifications solution to achieving this object is primarily to provide interlocking male and female profile parts on the ball body and the annular plate, and states that these interlocking profile parts "now provide an absolute, adequate confinement of the ball body in the ring under all conditions, thus also on decrease of pressure."
The specification ends with seventeen claims, of which claims 1, 6 and 14 are independent claims and read as follows:
"1. A jump ball consisting of an inflatable ball body of an
elastic material and a rigid annular plate having a
hole therethrough wherein, in the inflated condition, the
ball body is positioned in said hole and jammed against the
annular plate of which jump ball at least the ball body is
manufactured in a mould characterised in that in the
inflated condition of the ball body, this ball body is
coupled with the annular plate by means of peripherally and
continuously extending male and female profile parts of the
ball body and plate respectively, of which profile parts the
profile part that is present in the ball body is integral
with the ball body and consists of the same material, said
profile parts effecting interlocking between said plate
and ball body thereby preventing axial movement of said
plate relative to said ball body.
6. A jump ball consisting of an inflatable ball body of an
elastic material and a rigid annular plate having a
hole therethrough wherein, in the inflated condition, the
ball body is positioned in said hole and jammed against the
annular plate of which jump ball at least the ball body is
manufactured in a mould, characterised in that in the
inflated condition of the ball body, this ball body is
coupled with the annular plate by means of male and female
profile parts of the plate and ball body respectively, the
female profile being present in the ball body and consisting
of a groove of which the bottom is inwards of the opening of
the groove into which groove the male profile of the plate
fits, said profile parts effecting interlocking between
said plate and ball body thereby preventing axial movement
of said plate relative to said ball body.
14. A jump ball consisting of an inflatable ball body of an
elastic material and a rigid annular plate having a
hole therethrough wherein, in the inflated condition, the
ball body is positioned in said hole and jammed against the
annular plate of which ball at least the ball body is
manufactured in a mould, characterised in that in the
inflated condition of the ball body this ball body is
coupled with the annular plate by means of male and female
profile parts of the plate and ball body respectively, the
female profile being present in the ball body and consisting
of a groove of which the bottom is inwards of the opening of
the groove into which groove the male profile of the plate
fits, said profile parts effecting interlocking between
said plate and ball body thereby preventing axial movement
of said plate relative to said ball body, said groove
being substantially rectangular in cross section and having
legs forming sidewalls which are in turn formed by a
thickening in the wall of the ball body at the extremities
of the said legs; each of said sidewalls forming a
bearing shoulder onto which a surface of the annular plate
bears thereby effecting said restraint against axial travel
of said plate relative to said ball body."
THE EVIDENCE
The evidence in support of the opposition consists of statutory
declarations by James Ronald Anderson, John Ronald Tragear,
Peter Kingsley Bayly, Gary Kenneth Hutchens and Mr Cross (the
patent attorney for Croner). The evidence in answer consists
of statutory declarations by David Thompson, Brian Malone, Brian Joseph Fagan, and John Richard Walsh. The evidence in reply consists of further statutory declarations by Peter Kingsley Bayly and James Ronald Anderson, and a statutory declaration by Simon Watkins. I will discuss the relevant parts of the evidence where appropriate in my decision.
However at this point I need to make some comments regarding Mr Bayly's declaration in support of the opposition in which he asserts on the basis of test results obtained by him that relative axial slippage of the annular plate about the ball body does not occur during use of the prior art jump balls. The bulk of the evidence in answer is dedicated to refuting Mr Bayly's assertion, and the evidence in reply to corroborating it. Furthermore, part of the evidence in answer details certain structural similarities which are alleged to exist between a jump ball marketed by Croner and the jump ball shown in at least Fig. 1 of the present application. I have nothing before me which leads me to conclude that either of these issues bears in any way on the grounds of opposition relied on by Croner and, accordingly, I will not take any further account of the evidence insofar as it relates to these issues. For similar reasons, I do not propose to have regard to the judgement of Justice Fox in proceedings no. G438 of 1987 of the Federal Court of Australia, New South Wales District Registry, between the parties to this opposition.
SUBMISSIONS AND DECISION
The notice of opposition lists the grounds available under sub-secs 59(1)(a) and (c) to (i). At the hearing Croner indicated that it wished to pursue only the grounds of obviousness, want of novelty and non-compliance with sec 40.
Under the circumstances, I think it is convenient to consider whether the spcification complies with sec 40 before considering whether the claimed invention has been anticipated.
Section 40
Mr Caine raised a number of points concerning non-compliance with sec 40.
Firstly, he submitted that the invention disclosed on a fair reading of the specification as a whole (as per Decor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385) resides in the provision of a means of coupling or interlocking the ball body with the annular plate by a continuous circumferential preformed tongue and groove arrangement whereby axial movement of the plate relative to the ball body is prevented under conditions of normal use. I agree with this submission to the extent that in my opinion the essence of the invention, considered in the context of the entire specification, lies with the provision of a preformed groove (my emphasis) and does not as Mr Taylor has argued extend to the provision of a groove which is formed only upon inflation as in the case of the prior art balls.
Mr Caine further submitted that on its proper construction the specification requires the tongue and the groove to unite in a complementary way so that the tongue fits properly into the groove. Mr Taylor responded by drawing my attention to the broad disclosure of the invention in terms of male and female profile parts. He submitted that in view of the common meaning of the expressions "male" and "female" it would be clearly understood that interlocking of the ball body and the annular plate is effected by means of one profile part which fits into a corresponding profile part without the need for the parts to fit wholly and completely within one another as alleged by Mr Caine. I tend to agree with Mr Taylor on this point. The passages throughout the specification to which Mr Caine has referred contain no suggestion that the male part must fit completely within the female part. From my understanding of the overall disclosure, the male and female parts need do no more than cooperate to the extent necessary to interlock (which has a particular meaning in the mechanical sense) the annular plate and the ball body. It should be noted here that the body of the specification further qualifies the extent of such cooperation between the male and the female parts as preventing axial movement of the plate relative to the ball body. I also note that most of the passages referred to by Mr Caine merely relate to particular embodiments of the invention, and thus are not essential to it.
Mr Caine then turned to the claims. He submitted that each of the independent claims 1, 6 and 14 are drawn too widely and as a consequence are not fairly based (Olin Corporation v Super Cartridge Pty Ltd 14 ALR 149, Opsvik v Bad Back Centre Pty Ltd 8 IPR 641, Hoffman-La Roche & Co AG v Commissioner of Patents 123 CLR 529, AMP Inc v Utilux Pty Ltd 45 ALJR 123 and Montecatini Edison SpA v Eastman Kodak 45 ALJR 593 considered).
In taking his submission further, Mr Caine applied the tripartite test considered in Re Mond Nickel Co Ltd's Application (1956) RPC 189 and in essence concluded that the claims in suit went beyond the invention disclosed by the body of the specification since they omit the preformed tongue and groove arrangement described and in fact embrace the prior art arrangement in which a groove is brought about by inflation of the ball body. I do not agree entirely with the conclusions drawn by Mr Caine.
Firstly, I would be prepared to accept Mr Caine's view that the independent claims include a groove arrangement as exists in the prior art if the groove (i.e. the female profile part) was defined in each of these claims as being present in the ball body. However, according to claim 1, the ball body is coupled with the annular plate by means of male and female parts of the ball body and plate respectively (my emphasis), which prima facie means that the female part is of the annular plate and not the ball body. Mr Caine in fact advanced this same interpretation when discussing the disclosure of the body of the specification. Nevertheless I agree that as presently worded claim 6 is not limited to the provision of a preformed female profile part and as such embraces a female part formed only upon inflation of the ball body. However I am not convinced that this is the case with claim 14 in view of the specific structure of the groove defined by this claim.
Secondly, although the broad disclosure on page 3 of the specification indicates that the female profile part consists of a groove, the specification does not teach that the male profile part is in the form of a tongue or like projection when the male profile part is of the annular plate as in claims 6 and 14. As seen from the broad disclosure the male profile part in this instance is simply constituted by the inner edge of the annular plate.
Mr Caine again referred to the broad disclosure of the specification in which it is said that the male and female profile parts continuously extend in the peripheral direction (which I interpret to mean that the profile parts extend around the full circumference of the ball body and the plate), and that the profile part that is present in the ball body is integral with the ball body and consists of the same material. He took the position that claim 6 omitted these features and was therefore not fairly based. I agree with Mr Caine's position regarding claim 6 and note in particular that the specification contains no suggestion that the profile parts may extend only part way around the ball body or the plate as allowed by the claim in suit. Similar comments apply to claim 14 except that the definition in this claim of a groove having legs forming sidewalls which are in turn formed by a thickening in the wall of the ball body in my view means that the profile part which is present in the ball body is integral with the ball body and consists of the same material as required by the body of the specification.
Mr Caine's final comments on fair basis were directed towards claims 2 to 5 and 7 to 10. In view of my earlier findings regarding the interlocking effect produced by the male and female profile parts, I do not consider it necessary for these claims to specifically refer to complementary male or female configurations which produce a tight fit between the parts.
Mr Caine's next criticism of the specification was that it does not fully describe the invention.
The main thrust of this criticism centres on the broad disclosure on page 2 where it is stated that the interlocking effect is achieved by having peripherally continuously extending male and female profile parts of the ball body and the annular plate respectively. Given the plain meaning of the term "respectively", this means that the male part is of the ball body and the female part is of the plate (see also my comments above in relation to claim 1). On page 3 it is said that two solutions may arise from this broad disclosure. In one solution, the female profile part consists of a groove in the inner edge of the annular plate and the male profile part consists of a radially extending flange in the ball body. This arrangement is illustrated in Figs. 3, 6 and 7. However in the second solution the female part consists of a groove in the ball body which receives a male profile on the plate. This arrangement is shown in Figs. 1, 2 and 4 and on my reading of the body of the specification seems to constitute the most preferred form of the invention. In any event this second solution is at odds with the broad disclosure on page 2 and introduces doubt as to whether the female profile part must be present on the annular plate as indicated on page 2, or can be present on either the plate or the ball body as suggested by page 3. I therefore conclude that the specification does not fully describe the invention because it is not clear exactly what features are essential to the invention.
The final concern raised by Mr Caine was to the clarity of the claims. I consider that the various points to which he (and also the supporting evidence) referred to in this respect have been effectively addressed by my considerations above. Furthermore, and as acknowledged by Mr Taylor, claim 11 is not clear in its appendency to claims 6 to 9 since these claims do not refer to the wall thickening of the legs of the groove.
However there is an additional matter I wish to raise. As previously indicated, the term "respectively" implies in the context of claim 1 that the male profile part is of the ball body. However it is not clear that the passage "of which profile parts the profile part that is present in the ball body ..." at lines 10 and 11 of the claim in suit necessarily accords with such an arrangement. Similar considerations apply to claims 6 and 14 where it is not clear whether the passage "the female profile being present in the ball body ..." at lines 9 and 10 naturally follows from the use of "respectively", or indicates that this term does not take its plain meaning in the context of claims 6 and 14.
On the basis of the foregoing, I find that the specification does not comply with sec 40.
Novelty
This ground of opposition was based on prior documentary evidence, and evidence of prior use. I will now consider this evidence in detail.
US 3716229
This specification is referred to in the description of the prior art as given in the application in suit, and is equivalent to AU 442682. The specification discloses recreational apparatus which in one embodiment comprises a single rigid annular platform encircling a resilient ball. These features clearly may be equated with the annular plate and the ball body of the present application. The apparatus is assembled by positioning the deflated ball within the annular platform and then inflating the ball until it fits tightly within the platform and is in fact constricted thereby so as to bulge out on either side of the platform. The frictional contact of the ball with the platform is said to be sufficient in normal usage to retain the platform securely in position around the ball. Mr Caine took this to mean that engagement of the platform with the groove formed upon inflation effected interlocking of the platform and the ball to prevent relative axial movement during conditions of normal use. I agree with this view.
At the hearing Mr Caine made the point that the test for novelty is whether an alleged anticipation is the same in substance as the claim in suit so that the alleged anticipation would, if the patent were valid, constitute an infringement (Nicaro Holdings Pty Ltd v Martin Engineering Co 91 ALR 513 and R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd 85 ALR 679). This test is commonly referred to as the reverse infringement test which was formulated by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 235.
In Mr Caine's submission the recreational apparatus disclosed by US 3716229 falls within the scope of the present claims and therefore deprives the claimed invention of novelty. However, as I have already indicated, claim 1 when read in the light of the plain meaning of the term "respectively" requires the female profile part (groove) to be of the annular plate and thus clearly excludes an arrangement in which the ball body is inflated to produce the groove. As a result the apparatus of the US citation would not constitute an infringement of claim 1 and the reverse infringement test is not satisfied. However I express here my opinion that these findings would be different in the event that the term "respectively" was read in a sense other than its plain meaning.
I consider claim 6 to be anticipated by US 3716229 since the female profile part (groove) is stated to be present in the ball body and, as submitted by Mr Caine (and intimated by Mr Taylor), the various references to "in the inflated condition" may be construed to mean that the groove is present only when the ball body is in this condition as in the prior art, i.e., the groove is not preformed. Similarly for claims 7 and 8. However I do not consider claim 14 to lack novelty since the US citation does not disclose the particular groove structure defined.
I would also mention here that although the resilient ball of the US citation may be of solid construction, the citation contains no suggestion that with this construction the ball may be provided with a preformed groove.
DE 1928887
This specification discloses bouncing apparatus having a ball-like body and an annular plate-like handle which encircles and constricts an upper neck portion of the body when the body is inflated. The user sits on the body and grasps the handle while gripping the neck portion between his or her thighs.
Despite the differences in use between the apparatus disclosed by the DE citation and the ball which is described by the present specification, I find myself in agreement with Mr Caine's submission that there is no reference in the present claims to any particular mode of use, or any structural features defined which limit the claimed invention to a particular mode of use. Furthermore I can see no reason to accord any special meaning to the expression "jump ball" as used in the claims, or to qualify its scope by glosses drawn from the description, such that the claimed invention could be said to be functionally distinguished from the apparatus disclosed by the DE citation. I also consider that so far as the relationship between the plate and the ball is concerned, i.e. the profile part arrangement by which the plate engages or interlocks with the ball, for all relevant purposes the DE citation discloses the claimed invention. As a result my comments as to the relevance of US 3716229 to the claimed invention apply equally to the DE citation and, consequently, I find that claim 6 is not novel .
AU Design Registration 56628
As would be expected the extent of the information contained in the design extract presented as evidence is confined simply to a number of schematic views of the subject of the registered design. Although the design is in respect of recreational apparatus which on its appearance is similar to the apparatus shown in the drawings of US 3716229, the schematic views of the apparatus depicted in the design extract do not allow me to draw any conclusions as to its characteristics, particularly the structural relationship between the ball and the plate. I therefore am unable to find that this document deprives the claimed invention of novelty.
Prior Use
Mr Anderson deposes that an imported jump ball (called the "Fang" ball) became known to him well before the priority date of the claims. He apparently acquired this knowledge of the imported ball through his capacity as an officer with the company which both imported and sold the ball in Australia. Mr Anderson further deposes that he considers the overall form of the imported ball to be the same as the recreational apparatus disclosed by US 3716229. Mr Anderson's statements regarding the imported ball are confirmed by Mr Tragear who was the officer responsible for its importation.
Although no evidence of actual instances of prior use of the ball has been put before me, I am prepared to accept the evidence of Mr Anderson and Mr Tragear (which was not challenged by Mr Taylor or the evidence in answer) and thus I conclude that the claimed invention is anticipated by the imported ball to the same extent and for the same reasons given in respect of the US citation.
As a final note I would add that my findings on the novelty of the claimed invention have not been assisted by the evidence in answer which has relied on a comparison between the citations and the features disclosed by the present specification in relation to preferred embodiments of the invention, but not found as limiting features in the claims.
Obviousness
In considering this ground of opposition I have to take into account what has been established as being common general knowledge in the field of the invention in Australia at the priority date of the claims (Minnesota Mining and Manufacturing Co v Beirersdorf (Australia) Ltd (1980) 144 CLR 253).
The citations and imported ball relied on by Croner have not been established as constituting common general knowledge, and there is no evidence on file as to what may be regarded as the relevant common general knowledge in the art at the priority date of the claims. Accordingly, I am unable to consider this ground further.
SPECIAL LEAVE APPLICATIONS
Both Mr Caine and Mr Taylor made submissions at the hearing on the two applications for special leave to adduce further evidence. Taking these submissions into account, I indicated that in my view allowance of the first application was not justified primarily because Concorde had not shown whether or not the further evidence sought to be adduced could have been obtained at an earlier stage with reasonable diligence, or shown that this further evidence would probably have an important influence on these proceedings (Micronair (Aerial) Ltd v Waikerie Co-op Producers Ltd 7 IPR 107). In this respect I note that the evidence in suit merely goes to the question of whether there has been a problem of prior art slippage which, as I have indicated at the outset, bears no relevance to the determination of this opposition.
After seeking clarification on the precise nature of the evidence sought to be adduced by way of the second application, Mr Taylor advised me that Concorde did not wish to pursue either special leave application. I therefore do not need to take account of the further evidence, except to say I do not believe there to be a bar-to-sealing based on this evidence (Tate v Haskins 53 CLR 594).
CONCLUSION
I have found that the opposition succeeds on the grounds of non-compliance with sec 40, and want of novelty. I therefore award costs against Concorde. However I conclude that there is patentable subject matter disclosed in the specification, and I allow Concorde 60 days from the date of this decision to propose amendments accordingly.
O.L.Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave,
Sydney
Patent attorneys for the opponent : Phillips Ormonde &
Fitzpatrick,
Melbourne
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