Connected Group Australia Pty Ltd v Kolex Pty Ltd - [2020] APO 12

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Connected Group Australia Pty Ltd v Kolex Pty Ltd [2020] APO 12

Patent Application: 2011265354

Title:An electrical connector with insulation displacement contacts

Patent Applicant:                   Kolex Pty Ltd
Opponent:  Connected Group Australia Pty Ltd
Delegate:  Dr V. Z. Kolev
Decision Date:  24 February 2020
Hearing Date:  25 November 2019, in Canberra

Catchwords: PATENTS – section 59 opposition to grant of a patent – novelty – inventive step – prior art documents consulted under regulation 5.23 – an electrical connector – insulation piercing contacts – a passageway for receiving insulated conductors flat along the longitudinal direction of the passageway – opposition unsuccessful – application amended – late summaries of submissions – costs not awarded
Representation: Patent attorney for the applicant: Mr George Griziotis of Maxwells Patent & Trade Mark Attorneys Pty Ltd

Patent attorney for the opponent: Mr Peter Dummer of Wallington-Dummer Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011265354

Title:An electrical connector with insulation displacement contacts

Patent Applicant: Kolex Pty Ltd
Date of Decision: 24 February 2020
DECISION
The opposition is unsuccessful on all grounds. Subject to appeal, I direct that the patent application proceeds to grant.
I do not make an award of costs.
REASONS FOR DECISION

Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations). In addition, any reference to the Commissioner refers to the Commissioner of Patents.
BACKGROUND
The matter relates to patent application 2011265354 (the Application) in the name of Kolex Pty Ltd (the Applicant). The Application was filed on 21 December 2011 and it does not claim an earlier priority date.
The Application was advertised as accepted on 25 August 2016. A notice of opposition to grant was filed on 29 November 2016 by Connected Group Australia Pty Ltd (the Opponent), together with an application for extension of time under paragraph 223(2)(a) to file a notice of opposition. This application for extension of time was subsequently granted.
The statement of grounds and particulars (the SGP) was filed on 28 February 2017, together with the four documents mentioned in the SGP and referred to as D1 to D4.
The evidence in support was completed on 18 May 2017. The evidence in answer was completed on 22 August 2017. The evidence in reply was completed on 23 October 2017. On 27 October 2017, the Opponent filed a request to amend the SGP, however this request was not allowed.
Following a correspondence with the parties, Delegates of the Commissioner issued two directions as follows:
· On 12 December 2017, a direction to the effect that the information filed as evidence in reply is not properly in reply in its entirety, hence this information is not in evidence.
· On 09 March 2018, a direction to the effect that, in deciding this opposition, the Commissioner will consult documents US 3,816,819 A (DDD1) and US 2,609,415 A (DDD4) under the provisions of regulation 5.23. The Delegate also directed that “[i]n accordance with regulation 5.23(2) the Applicant is invited to make representations, or file evidence, responding to … documents DDD1 & DDD4 with in one (1) month from the date of this letter”.
In response, on 09 April 2018, the Applicant filed a request to amend the specification of the Application (the Specification) under section 104 and made some representations regarding the disclosure of documents DDD1 and DDD4 with reference to claim 1 as proposed to be amended. The allowance of the proposed amendment was opposed by the Opponent and the matter was heard by way of written submissions (the Amendment Hearing). On 26 July 2019, a Delegate of the Commissioner issued a decision (Connected Group Australia Pty Ltd v Kolex Pty Ltd [2019] APO 35, the Amendment Decision) in which he found that the proposed amendment is allowable. Consequently, the amendment was allowed and incorporated into the Specification.
The “Summary of submissions of the Opponent” (the Opponent’s Summary or OS) was filed 7 business days before the hearing (i.e. on 14 November 2019) despite the requirement of subregulation 5.20(4) that this must be done “at least 10 business days before the hearing”. The “Submissions on behalf of the patent applicant, Kolex Pty Ltd, to the opposition by Connected Group Australia Pty Limited” (the Applicant’s Summary or AS) was filed 2 business days before the hearing (i.e. on 21 November 2019) despite the requirement of subregulation 5.20(4) that this must be done “at least 5 business days before the hearing”.
At the beginning of the hearing, the Opponent filed directly with me, in paper format, a document titled “Submissions of the Opponent”. Since there are no statutory provisions for filing written submissions at this point in time, these are, in fact, submissions filed out of time. Therefore, I will refer to them as the Out of Time Submissions or OTS. As neither I nor the Applicant had an opportunity to review the Out of Time Submissions prior to the hearing, I stated that I will review them and if I consider that the OTS have the potential to affect the outcome of the opposition, I will provide the Applicant with an opportunity to file submissions in reply to the OTS.

10. The Opponent also submitted a page of drawings presented side by side for comparison, the drawings being from the Specification, document DDD1, and document DDD4. This page also illustrated what the Opponent considers to be the “passageway bounds” on each drawing. Given the somewhat general and imprecise nature of the “passageway bounds” indications, I do not consider that this page contains any useful information in addition to the information already on file as complemented by the Opponent’s oral submissions.
11. At the hearing, I also clarified that any evidence filed with respect to the Amendment Opposition is not in evidence in the present opposition proceedings. I notified the parties that if I decide to consult any such evidence in deciding the present opposition, I will proceed according to the requirements of regulation 5.23.
12. Relevantly, the present opposition is with respect to the Application as amended by the amendment filed on 09 April 2018 and is based on the documents DDD1 and DDD4 introduced under the provisions of regulation 5.23.
APPLICABLE LAW AND ONUS
13. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed. For patent applications having a request for examination filed on or after the above commencement date, subsection 60(3A) applies:
“If the Commissioner is satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, the Commissioner may refuse the application.” (underlining added)

14. The request for examination with respect to the Application was filed on 20 November 2015, hence subsection 60(3A) applies to the instant opposition. In addition, the filing date of the request for examination being after 15 April 2013 also means that the Application was examined under the amended provisions of the Act and Regulations following the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
15. The Applicant submits in AS that:
“5. The onus of proof in opposition proceedings lies with CGA, as the Opponent, which party must establish to the satisfaction of the Commissioner (or its Delegate) on the balance of probabilities that a ground of opposition exists, such that it is clear that a valid patent cannot be granted on the Patent Application:
F Hoffman-La Roche AG v New England Biolabs Inc (2000) 50 IPR 305 (Hoffman-La Roche) at [29] and [67] per Emmett J
Commissioner of Patents v Sherman (2008) 79 IPR 426 at [18] and [22] (FCAFC)

6. Further, whereas the primary facts are to be established on the balance of probabilities, the ultimate facts, being the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness, must be proved to the level of practical certainty:
Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52 (Aspirating) at [35] per Besanko J
Austal Ships Pty Ltd v Stena Rederi Aktiebolag (2005) 66 IPR 420 at [9] and [12] per Bennett J” (original emphasis)

16. I must emphasise that the authorities referred to by the Applicant all predate the Raising the Bar Act, hence the amended provisions of the Act must take precedence. Therefore, as per subsection 60(3A) quoted above, the standard of proof applicable to all considerations in this opposition is “the balance of probabilities” and not “the level of practical certainty”.
17. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”. Because of this, given the outcome of the opposition reflected in my decision above, I will focus my discussions primarily on the Opponent’s case.
GROUNDS OF OPPOSITION AND EVIDENCE
18. The SGP lists as grounds of opposition:
·lack of novelty – subparagraph 18(1)(b)(i) and
·lack of inventive step – subparagraph 18(1)(b)(ii),

with respect to documents D1 to D4.
19. The evidence filed in the opposition consists of the following documents:
Evidence in support consisting of:
· A declaration by Mr Peter Chamberlayne Dummer dated 28 April 2017 with exhibits PCD-1 to PCD-4.

Evidence in answer consisting of:
· A declaration by Mr Paul Lin dated 22 August 2017 with exhibits PL-1 and PL-2.

No evidence in reply is admitted in the opposition following the direction issued on 12 December 2017 as mentioned above.
As a result of the direction issued on 09 March 2018 also mentioned above, the following documents were introduced into the opposition under the provisions of regulation 5.23:
· US 3,816,819 A (DDD1); and
· US 2,609,415 A (DDD4).

20. It is worth noting that Mr Dummer is a Patent Attorney representing the Opponent and his declaration contains only one page introducing documents D1 to D4 into the opposition as exhibits PCD-1 to PCD-4. In addition, Mr Lin’s declaration is essentially responding to the SGP where all grounds and particulars are provided with respect to documents D1 to D4.
21. Importantly however, the Opponent does not press any of the above grounds of opposition with respect to documents D1 to D4. Instead, the Opponent’s submissions are focused entirely on the assertion that the grounds of novelty and inventive step are applicable with respect to documents DDD1 and DDD4. Therefore, I need not consider the disclosure in documents D1 to D4, and I will concentrate my attention exclusively to documents DDD1 and DDD4.
THE SPECIFICATION
22. The Specification begins by describing the field of the invention:
“The present invention relates to an apparatus and a method for making electrical connection with an electrically insulated wire or cable and, in particular, to an electrical connector with one or more insulation displacement contacts that can be used in electrical power outlet sockets, electrical power switches, electrical junction boxes, power transformers, ballasts for fluorescent lights and other electrical devices.” (page 2, lines 5-10)

23. This is followed by the section “Background art” which explains that:
“An electrical power outlet socket may typically be installed in a lower region of a wall, and have socket receptacles for three plug pins corresponding to an active, a neutral and an earthing connection. Electrically insulated connecting wires are installed within the building wall to connect the respective contacts of the socket receptacles to the mains electrical power source at, for example, the electrical switching or fuse box of the building, and to other electrical power outlet sockets in the same region of the building. In order to provide a secure electrical connection between the connecting wires in the wall and the electrical contacts of the power outlet socket, screw contacts have normally been utilised. A screw contact requires that insulation from an end of the connecting wire be removed, and the exposed conductor portion of the wire, consisting of a bundle of thin wire strands, be twisted and inserted in a contact opening and then engaged into secure electrical contact by screwing a contact screw into the contact opening to physically and electrically engage the exposed conductor portion. Although this is not a particularly difficult operation, it will nonetheless be very labour intensive and inconvenient if many electrical power outlets are to be installed. It also requires the use of pliers, a stripper and a screwdriver to carry out the cut, strip, twist, insert and screw operations. Also, stripped insulation, which is normally made of PVC, will litter the vicinity of these operations unless they are removed. It would be desirable, therefore, to reduce the number and complexity of operations required to make electrical connections to each electrical power outlet socket.” (page 2, line 15 to page 3, line 8, underlining added)

24. The section continues with a brief discussion of an existing prior art system:
“Australian Patent No. 784,652 discloses an electrical connector which addresses some of these problems by being able to effect relative movement between the conductors and its insulation displacement contacts, the relative movement being so restrained as to make the electrical connections therebetween in a substantially sequential manner. That electrical connector also requires that, for electrical connection to a doubly insulated cable, the outer insulative sheath of the cable be first stripped or removed from a portion of the cable and the thus revealed inner insulated wires be received in wire channels of one part of the connector. That electrical connector also has its insulation displacement contacts configured laterally with respect to the directions of the insulated wires received in the channels, so that the insulated wires are cut cross-wise at an angle that, whilst cutting through the insulation, may also cut through and sever the nearby wire strands, thus reducing the level of electrical connection.” (page 3, lines 9-22, underlining added)

25. The section “Summary of the invention” starts with the statement that:
“It is an object of the present invention to provide an electrical connector that achieves a faster, easier, safer, cleaner and/or more effective form of electrical connection with insulated conductors in the form of a cable (which has a double layer of insulation) or an electrically insulated connecting wire (which has a single layer of insulation), than in the aforementioned prior art.” (page 3, lines 24-28)

26. Then, the section provides what appears to be a consistory statement and briefly mentions some preferred arrangements. The details of the invention are described with reference to the drawings consisting of figures 1 to 34. Figures 1 to 8 are considered the most illustrative and are reproduced below:
27. The reference numerals correspond to the following elements of the electrical connector: 10, 50 – an electrical connector; 12 – a housing of the connector; 18, 60 – a floor of the housing; 62, 64, 66, 68 – walls; 70 – gaps; 14 – a roller or movable press; 33 – a pivot point of the movable press; 34 – a curved pressing surface of the movable press; 36 (on figure 1), 38, 40 (on figure 1), 71 – elongated slots of the curved pressing surface; 35 – an aperture of the movable press; 36 (on figures 2 and 3) – the tip of a screwdriver or other tool received in the aperture; 28, 30, 32, 72 – cutting edges of copper blades which serve as insulation displacement contacts or terminals; 16, 69 – a passageway; 26 – a flat cable; 20, 22, 24 – insulated conductors of the flat cable; 58 – a round cable; 52, 54, 56 – separated insulated connecting wires of the round cable; 40 (on figures 5 and 6) – a bundle of electrically insulated wire strands.
28. The operation of the electrical connector is explained as follows:
“The cutting edges are aligned longitudinally with the passageway 16. The press 14 is, in this embodiment, pivotally movable about a pivot point 33 between a first position (as shown in Figure 2) where it allows access of the cable 26 into the passageway 16 (in the direction shown by arrow A) and a second position (as shown in Figure 3) where it presses against the cable 26 and forces it against the cutting edges 28, 30, 32. The application of this force is through a curved pressing surface 34 of the press 14 which has three elongated slots 36, 38, 40 aligned longitudinally with the three cutting edges 28, 30, 32 so that each slot receives therethrough its respective cutting edge as the cable is being forced by the pressing surface 34 against the cutting edges. By application of this force, the three cutting edges 28, 30, 32 cut into the cable 26 and make separate electrical connections to the three conductors 20, 22, 24 of the cable 26 substantially simultaneously and longitudinally with reference to the direction of the conductors in the passageway 16. The slots 36, 38, 40 ensure that the cutting edges completely penetrate the insulated conductors by cutting through the insulation and piercing between the copper wire strands, thereby achieving optimum contact and conductivity for effective electrical connections.
The press 14 has an aperture 35 which can receive the tip of a screwdriver 36 or other tool for applying the necessary force to enable movement between the first and second positions. The tool 36 can be used to push the press 14 into the first position to open the passageway 16, and can be used to pull the press 14 into the second position to close the passageway 16.” (page 10, lines 5-27, underlining added)

“As shown in Figures 5 and 6, each cutting edge 28 cuts longitudinally through the middle or near middle of each bundle of electrically insulated wire strands 40, forcing or piercing its way between strands and thus substantially maintaining the number of strands for optimal electrical connection, rather than severing them and depleting the number of strands, as would be the case if the cutting edges were arranged laterally with respect to the direction of the conductors.” (page 11, lines 7-13, underlining added)

“The electrical connector 50 shown in Figures 7 and 8 is similar in structure, operation and function to the connector 10, except that it is configured to make separate electrical connections to insulated conductors comprising separated insulated connecting wires 52, 54, 56 produced by stripping away the outer sheath of a round cable 58.” (page 11, lines 18-22, underlining added)

29. The Specification ends with 12 claims. Claim 1 is the only independent claim and is reproduced below (some formatting added to assist readability):
“1. An electrical connector having a plurality of insulation displacement contacts adapted to make electrical connection with respective insulated conductors in the form of a cable or of separate electrically insulated connecting wires, the connector comprising:
(a) a movable press,
(b) a passageway having a longitudinal direction and being between the movable press and a floor for receiving each insulated conductor flat along the longitudinal direction of the passageway,
(c) cutting edges of respective insulation displacement contacts for cutting into a respective insulated conductor to make electrical connection to each conductor when received in the passageway,

the cutting edges being formed on respective blades which are spaced apart in a lateral direction of the passageway and which extend upwardly through the floor,
each cutting edge being longitudinally aligned with the passageway, and

(d) the movable press having a curved pressing surface and being pivotally movable about a pivot point extending perpendicularly with reference to each conductor in the passageway,
the pivotal movement of the movable press being between
a first position where it allows access of each insulated conductor into the passageway and
a second position where it presses against each insulated conductor and forces the insulated conductor against the respective cutting edge
whereby each cutting edge cuts into its respective insulated conductor and makes separate electrical connection thereto longitudinally with reference to the direction of each conductor in the passageway.”

CLAIM INTERPRETATION
30. Lack of clarity is not raised as a ground of opposition. However, from the parties’ submissions, it appears that the precise interpretation of feature (b) of claim 1 is of critical importance for the outcome of the opposition.
31. The wording used to define this feature includes several expressions that require some attention. In addition, feature (b) of claim 1 was the only part of the Specification amended by the Applicant and certain aspects of the construction of this feature were also discussed in the Amendment Decision. Where available, I will consider the Delegate’s analyses and conclusions made in that decision.
32. There is no evidence filed in this opposition that would suggest that any of the words used to define feature (b) of claim 1 represent terms in the art of electrical connectors that have a specific meaning different to their plain meaning. In the following discussion, all references to Macquarie Dictionary are made with respect to its online edition reviewed on 30 January 2020.
“a passageway having a longitudinal direction”
33. The first question I need to answer is what sort of limitations are imposed on the passageway by the requirement to have “a longitudinal direction” and how the longitudinal direction of the passageway is to be determined.
34. Macquarie Dictionary defines “passageway” as “noun a way for passage, as in a building or among buildings, etc.; a passage”. In other words, in the context of the claim, a passageway is an empty space through which objects can pass.
35. In the same context, the most relevant definitions for the word “direction” provided in Macquarie Dictionary appear to be:
“noun …
2. the line along which anything lies, faces, moves, etc., with reference to the point or region towards which it is directed.
3. the point or region itself.” (underlining added)

36. The above definitions for “passageway” and “direction” imply that the defined passageway would have a specific direction, naturally determined by its geometry, and this would be the movement direction of the objects passing through the passageway. I need to decide whether this movement direction is the longitudinal direction of the passageway as defined in claim 1.
37. Again, in the context of the claim, the most relevant definitions for the word “longitudinal” provided in Macquarie Dictionary appear to be:
“adjective 1. of or relating to longitude or length: longitudinal distance.
…
3. extending in the direction of the length of a thing; running lengthways.”

38. Form the above, it appears that the plain meaning for the longitudinal direction of the passageway would be the direction extending along the length of the passageway. Commonly, the three perpendicular to each other dimensions of an object could be referred to as the length, the width, and the height of the object. When this object is a passageway, I find it reasonable to consider that the width and the height of the passageway are the dimensions determined by the distance between the opposite boundaries or walls of the passageway. Hence the width and the height of the passageway limit how wide and tall the objects passing through the passageway could be. Importantly, the directions of the width and the height of the passageway are perpendicular to the movement direction mentioned above. However, the longitudinal direction (i.e. the direction along the length) of the passageway should also be perpendicular to the directions of the width and the height. Therefore, I conclude that the direction of the movement of the objects passing through the passageway is the defined longitudinal direction of the passageway.
39. I note that, commonly, the length of an object is its longest dimension, however for passageways this may not necessarily always be the case, especially if the passageway is relatively “short”. I consider it more appropriate to define the length of the passageway of claim 1 as the distance travelled by the objects while passing through the passageway. This may or may not be the longest dimension of the passageway.
40. The above interpretation of “a passageway having a longitudinal direction” fits well some other features defined in claim 1 at (c) and (d), namely that the electrical connector also comprises:
“cutting edges of respective insulation displacement contacts for cutting into a respective insulated conductor to make electrical connection to each conductor when received in the passageway,
the cutting edges being formed on respective blades which are spaced apart in a lateral direction of the passageway and which extend upwardly through the floor,
each cutting edge being longitudinally aligned with the passageway
…
a first position where it allows access of each insulated conductor into the passageway and
a second position … whereby each cutting edge cuts into its respective insulated conductor and makes separate electrical connection thereto longitudinally with reference to the direction of each conductor in the passageway.” (underlining added)

41. The configuration of “each cutting edge being longitudinally aligned with the passageway” would mean that each cutting edge is aligned along the longitudinal direction of the passageway. In addition, making “electrical connection [to the respective insulated conductor] longitudinally with reference to the direction of each conductor in the passageway” would mean that the cutting edges and the conductors are aligned in the same direction. Therefore, the conductors are also aligned along the longitudinal direction of the passageway. Further, the configuration of “the cutting edges being formed on respective blades which are spaced apart in a lateral direction of the passageway” would mean that the lateral direction of the passageway is the direction along which the insulated conductors are spread, and the lateral direction should be perpendicular to the longitudinal direction.
42. It is also defined in claim 1 that the insulated conductors are “received in the passageway” and that, in the first position, the movable press “allows access of each insulated conductor into the passageway”. This would mean that when, in the first position, the insulated conductors gain access and move into the passageway, the leading portions of these insulated conductors would pass through the passageway.
43. In summary, I conclude that, in the context of claim 1, the passageway is an empty space “between the movable press and a floor” and the longitudinal direction of the passageway is the direction of movement of the insulated conductors when entering into the passageway. In addition, each insulated conductor “received in the passageway” is aligned with the longitudinal direction of the passageway.
44. Based on the above discussion, it also appears that, in general, all passageways will have a longitudinal direction, hence merely “having a longitudinal direction” does not appear to impose any specific limitations on the passageway. In particular, nothing in the definition of the word “direction” prevents “the line along which anything lies, faces, moves, etc.” from being curved, having sharp turns, etc.
“a passageway … being between the movable press and a floor for receiving each insulated conductor”
45. The next question I need to answer is whether the claim defines “a passageway … for receiving each insulated conductor” or “a floor for receiving each insulated conductor”. This question was discussed in paragraphs [32]-[35] of the Amendment Decision:
“32. I will deal firstly with the question of whether it is the passageway or the floor that is for receiving each insulated conductor along the longitudinal direction of the passageway. Whatever may be said of that question possibly leading to an ambiguity in contravention of subsection 40(3), or that if it were the floor then there would be a contravention of subsections 102(1) and 102(2)(a), is irrelevant in the present case. The clause that led Mr MacDonald to offer these interpretations exists in the claim prior to amendment. Thus, an assertion of a contravention of section 102 based on that question must fail as it does not arise as a result of the amendment.
33. For completeness, I will nonetheless consider the question in full in this case. It is correct that, positionally in the relevant clause, the word ‘floor’ is more closely associated for receiving each insulated conductor than the word ‘passageway’. On the other hand, I think the context is clear from the claim itself. The phrase, as filed, that distances the passageway from the receiving feature is merely a precursor phrase defining the location of the passageway between the movable press and the floor. That is, the floor is defined to provide context for the location of the passageway, not to relate to receipt of a conductor. Moreover, the clause concludes with each insulated conductor being received along a longitudinal direction of the passageway (my emphasis). I find it is clear from the claim itself that it is the passageway that is for receiving each insulated conductor.
34. If I were wrong with this finding, I would additionally note the comments of Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc., [1988] FCA 399, (1988) 13 IPR 385 at 400 [14]. Relevantly to the present matter, if an expression in a claim is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim. The paragraph bridging pages 9 and 10 of the specification as filed, together with at least Figures 2 and 3 of the drawings, indicate that it is the passageway that is for receiving each insulated conductor. Presumably the opponent would concur with this position since the opponent pressed for a contravention of subsections 102(1) and 102(2)(a), on the basis of the specification as filed and on the basis of the claims before amendment, only where an interpretation of the floor being for receiving each insulated conductor might prevail in the amended claim.
35. I conclude, for both the unamended and the amended claim 1, that it is the passageway that is for receiving each insulated conductor.” (original emphasis)

46. I agree with the Delegate’s analysis and conclusion.
“a passageway … for receiving each insulated conductor flat along the longitudinal direction of the passageway”
47. Several parts of the above expression warrant a discussion.
“receiving each insulated conductor flat along the longitudinal direction”
48. One important issue with this expression is the proper meaning of the word “flat” in the context of the claim. In the Amendment Decision, having considered the evidence provided to him by both parties, the Delegate concluded:
“40. I am not persuaded by either of these definitions in the present context. They appear to be more restrictive than the present context would suggest. Moreover, these definitions appear to be focused on each conductor individually. The concept of the flatness feature relating to a disposition of each insulated conductor collectively does not appear to be considered.
41. The Macquarie Dictionary ( also includes the definition of having a generally level shape or appearance, and by example a flat plate. The Oxford English Dictionary ( includes the definition of horizontally level, without inclination, and lying in its original plane of deposition. Both of these definitions suggest a planar context for the word ‘flat’. This would also appear to fit the presently claimed context in terms of the passageway being for receiving each insulated conductor in a planar arrangement along the longitudinal direction of the passageway. This arrangement is clearly shown in Figures 4 and 7 for example. Figure 4 illustrates three insulated conductors of a cable aligned in a single plane for being received in the passageway. Figure 7 illustrates three separated insulated connecting wires, also aligned in a single plane, whereby those wires arise from having stripped away the outer sheath of a round cable. I will adopt the interpretation of each insulated conductor being received in a planar arrangement along the longitudinal direction of the passageway.” (underlining added)

49. I agree with the Delegate’s analysis and conclusion. Indeed, I consider that the insulated conductors received in the passageway form “a planar arrangement along the longitudinal direction of the passageway”, i.e. they all lie in a single plane.
“for receiving”
50. Another important issue is the exact meaning of the phrase “for receiving” as defined in claim 1.
51. Firstly, the Opponent emphasised that the word “for” has traditionally been interpreted as a suitability or a capability limitation, i.e. “for receiving each insulated conductor flat along the longitudinal direction of the passageway” would mean “suitable for (or capable of) receiving each insulated conductor flat along the longitudinal direction of the passageway”. The Applicant submitted that such an interpretation is more commonly applicable to the preamble of a claim, whereas in the present case “for receiving”, in essence, means not just suitable for receiving, but actually receiving. Without conclusively deciding the issue, I am prepared to adopt the Opponent’s interpretation. As it will become evident later in this decision, this will not affect the outcome of the opposition.
52. Secondly, as best understood, the Opponent’s interpretation of “receiving” is along the lines that, in the context of claim 1, this word is more or less equivalent in meaning to “inserting”. In other words, the insulated conductors can be received in the first position, however they cannot be received in the second position where, due to the movement of the movable press, the passageway is much narrower and obstructed by the cutting edges. Importantly, this interpretation leads to the requirement of “receiving each insulated conductor flat” being relevant only to the first position i.e., in the second position, the insulated conductors need not be flat.
53. In contrast, the Applicant advocates for somewhat broader interpretation, resulting in the requirement of “receiving each insulated conductor flat” being applicable to both the first and the second positions.
54. Given the importance of the issue, I will provide the full definition of the word in question from Macquarie Dictionary:
“receive
…
verb (received, receiving)
–verb (t) 1. to take into one’s hand or one’s possession (something offered or delivered).
2. to have (something) bestowed, conferred, etc.: to receive an honorary degree.
3. to have delivered or brought to oneself: to receive a letter.
4. to get or learn: to receive notice; to receive news.
5. to accept delivery of: to receive goods.
6. to accept transmission of, as a letter, email, etc.
7. to become the support of; sustain.
8. to hold or contain.
9. to take into the mind; apprehend mentally.
10. to take from another by hearing or listening: a priest received his confession.
11. to meet with; experience: to receive attention.
12. to suffer or undergo: to receive an affront.
13. to have inflicted upon one: to receive a broken arm.
14. to be at home to (visitors).
15. to greet or welcome (guests, etc.) upon arriving.
16. to admit (a person) to a place.

17. to admit to a state or condition, a privilege, membership, etc.: to receive someone into the Church.
18. to accept as authoritative, valid, true, or approved: a principle universally received.
–verb (i) 19. to receive something.
20. to receive visitors or guests.
21. Radio to convert incoming electromagnetic waves into the original signal, as soundwaves or light on a television screen.
22. to receive the Eucharist.”

55. In the context of claim 1, I consider that the most relevant definitions are:
“3. to have delivered or brought to oneself: to receive a letter”;
“8. to hold or contain”; and
“16. to admit (a person) to a place”.

56. Even if I were to interpret definition 16 as extending also to objects (i.e. not limited only to persons), based on definition 8 in particular, I do not consider that the meaning of “receiving” could reasonably be limited only to describing situations where an object is admitted to or moved into the location or place where it is to be received. In other words, based on definition 8, I consider that the “passageway … for receiving each insulated conductor flat along the longitudinal direction of the passageway” means that each insulated conductor must be flat both in the first position and in the second position as defined in claim 1.
NOVELTY UNDER SUBPARAGRAPH 18(1)(b)(i)
57. The well-established test for novelty can be found 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.”

58. This test requires that all essential features of the claimed invention are disclosed in the prior art document. The level of disclosure in the prior art document was considered in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 486 as “… must contain clear and unmistakeable directions to do what the patentee claims to have invented”.
59. As I already mentioned, the Opponent relies on the two prior art documents, DDD1 and DDD4, introduced into the opposition under the provisions of regulation 5.23.
Novelty in light of document DDD1
60. Document DDD1 discloses
“[a] wire connector [that] includes an insulating housing and a wire entry port in the housing to admit a pair of parallel stranded wires enclosed in an insulating sheath, the sheath having a cross-section of the general configuration of a figure 8 including opposed grooves. A wire passageway in the housing communicates with the wire entry port, and a pair of insulation penetrating contacts are stationed along the passageway and are pointed toward the passageway. Guide means are disposed in the passageway on at least one of the sides to cooperate with at least one of the grooves of the wire insulation to center the wire laterally in the passageway. Means are also provided for moving the wire relative to the wire penetrating contacts after the wire is centered.” (abstract, underlining added)

61. The disclosure in document DDD1 is best understood in relation to the drawings. The first embodiment is described with reference to figures 1 to 7 which are reproduced below.

62. Notably, figures 3 and 4 correspond to an “open position” that can be considered a disclosure of the first position defined in claim 1, whereas figure 5 corresponds to a “closed position” that can be considered a disclosure of the second position. Figure 6 is a vertical cross-section of the connector of figure 5 taken along the line indicated with the two arrows. Figure 7 is a partial vertical cross-section of a portion of the connector of figure 4. The reference numerals in the figures point to the following key elements of the disclosed electrical connector (the corresponding terms used in the Specification are also included): 10, 12, 14 – an insulating housing of a wire electrical connector (the illustrated example is a cap or a plug); 24, 26, 48 – a cam (24) with a handle (26) and a driving end (48), i.e. a movable press; 21, 23 – insulation piercing contacts, i.e. cutting edges which serve as insulation displacement contacts or terminals; 42 – a wire passageway; 28 – an insulated wire, i.e. a flat (see figure 1) cable; 30 – parallel conductors of the insulated wire, i.e. insulated conductors of the flat cable; 40 – the leading end of the flat cable; 44 – a boss provided to limit the movement of the flat cable within the passageway.

63. The relevant part of the operation of the connector of this embodiment is explained as follows:
“In FIG. 4 the wire 28 is shown with its end 40 fully inserted within the wire passageway 42 within the housing 10. Wire end 40 butts against boss 44 provided to limit movement of the wire within passageway 42 and to provide a stop for the end 40 of wire 28.
When positioned as shown in FIG. 4 the wire 28 is poised above two insulation piercing contacts 21 and 23 formed integrally with the power blades 20 and 22 respectively at the inner ends thereof. As shown, the ridge 38 fits in the groove of the insulation of wire 28.” (column 4, lines 13-22, underlining added)

“When the cam is pivoted from its open to its closed position as shown in FIGS. 4 and 5 the driving end 48 of the cam presses the insulated wire 28 into contact with the wire piercing contacts 21 and 23 and causes the contacts to penetrate through the insulating sheath 32 of the wire 28.” (column 4, lines 30-35)

64. It is clear that the electrical connector disclosed in this embodiment of document DDD1 appears very similar to the one defined in claim 1. The crucial question to answer is whether feature (b) of claim 1, namely “a passageway having a longitudinal direction and being between the movable press and a floor for receiving each insulated conductor flat along the longitudinal direction of the passageway”, is disclosed.
65. Regarding the disclosure of this feature in document DDD1, the Opponent submits in the “Claim Integers Comparison Table” provided as part of the OS:
“Item 42 is identified in the text as a ‘passageway’ and item 35 is identified in the text as an ‘entrance passageway’. This lies below the ‘press (items 24, 26) and above a lower portion (not separately numbered) of the connector 10.
Figure 3 shows sufficient clearance for the insulated conductor to be received flat along the longitudinal direction of the passageway.”

66. The Opponent further argues on pages 2-3 of the OS:
“The Opponent submits that the Applicant incorrectly made reference to the arrangement in Figure 5 of DDD1… It is submitted that the relevant feature in DDD1 is to be found in Figure 3 of DDD1…
Figure 3 of DDD1 … show[s] the movable press in an open position (termed ‘first position’ in feature 1(d) of pending claim 1). It is submitted that it is this condition of the movable press that applies in relation to feature 1(b) [i.e. feature (b) of claim 1].
The arrangement in Figure 5 of DDD1 … shows the movable press in its closed position (termed ‘second position’ in feature 1(d) of pending claim 1). This closed position does not permit ‘receiving each insulated conductor flat along the longitudinal direction of the passageway’. Rather it is the open position of Figure 3 of DDD1 … which permit ‘receiving each insulated conductor flat along the longitudinal direction of the passageway’.
It is submitted that Figure 3 of DDD1 … clearly disclose[s] ‘a passageway having a longitudinal direction and being between the movable press and a floor for receiving each insulated conductor flat along the longitudinal direction of the passageway’.
It is submitted that the ‘passageway’ lies between the ‘movable press’ (cam 24) and a ‘floor’ of the housing 12, 14 as shown in Figure 3 of DDD1. In the open position of Figure 3 of DDD1 there is clearly sufficient clearance in the passageway to receive the ‘insulated conductor’ (insulated wire 28) flat along the longitudinal direction of the passageway.
…
It is submitted that this is the meaning and intention of feature 1(b) of pending claim 1 as amended under S104.” (underling added)

67. I have already concluded that claim 1 requires that the insulated conductors are flat in both the first and the second positions. While it is clear that the insulated conductors 30 are illustrated as flat on figures 1 and 3, the same cannot be said with respect to figures 4 and 5.
68. At the hearing, the Opponent expressed the alternative view that the expression “for receiving each insulated conductor flat along the longitudinal direction of the passageway” does not mean that the insulated conductors must be perfectly flat. In other words, being “substantially flat” would still be within the scope of the claim. While I generally consider the Opponent’s position reasonable, I note that the word “substantially” is not present in the claim. In addition, given the lack of any evidence on this point, I am not satisfied that the person skilled in the art would consider that the insulated conductors as depicted on figures 4 and 5 are flat to a degree satisfying the limitation defined in claim 1.
69. The Opponent also submitted that the passageway “being between the movable press and a floor” means that, in the second position, the length of the passageway is limited only to the space immediately enclosed between the movable press and the floor. Even if I were to adopt this interpretation, I note that the part of the surface of the movable press that is in contact with the insulated conductors on figure 5 has certain curvature and the insulated conductors have been forced to adopt this curvature, hence they are not flat contrary to what is defined in claim 1.
70. Based on the interpretation that the word “for” imposes only a suitability limitation, the Opponent further submitted that the connector of document DDD1 is suitable “for receiving each insulated conductor flat along the longitudinal direction of the passageway”, if the insulated conductors are not inserted all the way to the boss 44. Since this scenario is not disclosed in document DDD1, and no evidence to support such assertion is available, I cannot be satisfied that the disclosed connector is indeed suitable for that purpose.
71. In summary, I do not consider that the first embodiment of document DDD1 discloses a “passageway … for receiving each insulated conductor flat along the longitudinal direction of the passageway”, hence I do not consider that this first embodiment discloses all essential features of the invention defined in claim 1.
72. A second embodiment, referred to in document DDD1 as “[a]n alternative form of the device”, is described with reference to figures 8 to 12 which are reproduced below. The Opponent does not appear to consider the device of this embodiment as a disclosure of the invention defined in claim 1, however I believe that nonetheless this embodiment deserves a brief discussion.

73. The reference numerals in the figures point to the following key elements of the disclosed electrical connector (the corresponding terms used in the Specification are also included): 50 – a wire electrical connector (the illustrated example is a cap or a plug); 52, 60 – an outer insulating jacket (52) and an insulating wire guide (60), i.e. a housing of the connector; 56, 58, 62, 64, 66, 68 – a pair of power blades (56, 58) with contact ends (62, 64) and opposite pivot ends (66, 68); 70, 72 – insulation penetrating contacts of the power blades, i.e. cutting edges which serve as insulation displacement contacts or terminals; 83 – a wire channel along the axis of the insulating wire guide, i.e. a passageway; 94 – an insulated wire, i.e. a flat (see figures 9 and 12) cable; 96, 98 – parallel stranded conductors of the insulated wire, i.e. insulated conductors of the flat cable.
74. The relevant part of the operation of the connector in this embodiment is such that:
“… an insulated wire such as 94, having two stranded parallel conductors 96 and 98 and an insulating sheath 99 having the general cross-sectional configuration of a figure 8, and having opposed grooves 95, is threaded through port 51 of jacket 52.
With the jacket 52 on the wire, the blades 56 and 58 are opened from the position shown in phantom in FIG. 9 to the position shown in solid lines. The insulated wire, such as 94 is then inserted through port 82 into channel 83 and is guided as it enters the channel and also as it moves into the channel by the interaction of the ribs 85 and 87 with the grooves 95 on each side of the insulation 99.
After the wire has been thus fully inserted in the channel 83 the blades 62 and 64 are pushed or pinched back again from the position shown in solid lines in FIG. 9 to the position shown in dashed lines. The result of such movement is to introduce the contacts 70 and 72 through the contact entry ports 90 and 92 into channel 83 through insulation 99 and into contact with conductors 96 and 98 respectively of wire 94. Reliable electrical contact between conductors 96 and 98 and the respective power blades 56 and 58 is established in this way.
After such contact has been established the insulating jacket 52 is moved along wire 94 into its jacketing position about the body 60 and the upper portions of blades 56 and 58 to give the wired device the appearance shown in FIG. 8.” (column 5, lines 34-62, underlining added)

75. It is clear that the channel 83 can be considered “a passageway having a longitudinal direction … for receiving each insulated conductor flat along the longitudinal direction of the passageway”. However in this embodiment, document DDD1 does not appear to disclose that the blades on which the cutting edges are formed “extend upwardly through the floor” or a “movable press having a curved pressing surface and being pivotally movable …, the pivotal movement of the movable press being between a first position … and a second position where it presses against each insulated conductor and forces the insulated conductor against the respective cutting edge whereby each cutting edge cuts into its respective insulated conductor and makes separate electrical connection thereto” as defined in claim 1.
76. As seen from figure 11, the blades with cutting edges 70 and 72 extend through opposite walls of the passageway 83. It does not appear that the combination of these two walls could reasonably be considered a floor. In addition, the part of the disclosed connector having a functionality closest to that of the movable press appears to be the couple of power blades 56 and 58 as they do exhibit a pivotal movement. However, I do not consider that the power blades possess the other properties of the movable press of claim 1 as underlined in the preceding paragraph. Hence, I do not consider that this second embodiment discloses all essential features of claim 1.
77. In conclusion, I am not satisfied that document DDD1 discloses all essential features of claim 1, hence I am not satisfied that claim 1 is not novel in light of document DDD1.
Novelty in light of document DDD4
78. Document DDD4 also “relates to electric connectors and more particularly to replacement plugs, receptacles, outlets and like connectors adapted to be attached to or detached from an end of an electric cord” (column 1, lines 1-5). The disclosure in document DDD4 appears similar to the first embodiment of document DDD1 and is best understood in relation to the drawings, all of which are reproduced below.

79. Notably, figure 2 corresponds to a “cord receiving position” that can be considered a disclosure of the first position defined in claim 1, whereas figure 3 corresponds to a “cord engaging position” or “cord clamping position” that can be considered a disclosure of the second position defined in claim 1. Figure 4 is a cross-section of the connector of figure 2 taken along the line indicated with the two numerals “4”. Figure 5 is a cross-section of the connector of figure 3 taken along the line indicated with the two numerals “5”. The reference numerals in the figures point to the following key elements of the disclosed electrical connector (the corresponding terms used in the Specification are also included): 1, 2 – members forming a body of the connector (the illustrated example is a plug), i.e. a housing of the connector; 15, 17, 18, 20 – a lever (15) with a cam arm (17) and an operating arm (18) and a flexible/fibre strip (20), i.e. a movable press; 16 – a pin on which the lever is pivotally mounted, i.e. a pivot point of the movable press; 9, 10 – piercing means in the form of prongs, i.e. cutting edges which serve as insulation displacement contacts or terminals; 4 – a recess, a part of it is a passageway; 12 – an electric cord, i.e. a flat (see e.g. figure 1) cable; 32, 34 – conductors of the cord, i.e. insulated conductors of the flat cable; 24 – a back wall limiting the movement of the cable within the passageway.
80. The relevant part of the operation of the connector is described as follows:
“The cord is then pushed into the recess until the end contacts or approaches the back wall 24 of the recess and overlies shoulder 14 [see e.g. figure 2]. With the cord in this position, the lever is closed against the cord or the fiber strip, when such is present, to force a portion of the cord downwardly onto the prongs and to clamp adjacent portions of the cord between the cam surface and shoulders 13 and 14 so that any pull on the cord will be absorbed by the clamped portions, particularly that adjacent shoulder 13 and will not be transmitted to the prongs 9 and 10 [see e.g. figure 3].” (column 2, line 49 to column 3, line 5, underlining added)

81. Regarding the disclosure in document DDD4 of the important feature (b) of claim 1, namely “a passageway having a longitudinal direction and being between the movable press and a floor for receiving each insulated conductor flat along the longitudinal direction of the passageway”, the Opponent submits in the “Claim Integers Comparison Table” provided as part of the OS:
“Identifiable as a passageway is that part of recess 4 defined between the ‘press’ 15 and a ‘floor’, being the lower portion (not separately numbered) of the recess 4 defined by the two complementary housing members 1 and 2, including shoulders 13 and 14, and extending from the cord receiving aperture 11. See col. 1, lines 47-53.
Figure 2 shows sufficient clearance for the insulated conductor to be received flat along the longitudinal direction of the passageway.”

82. The Opponent further argues on pages 2-3 of the OS:
“The Opponent submits that the Applicant incorrectly made reference to … the arrangement of Figure 3 in DDD4… The relevant feature in DDD4 is to be found in Figure 2 of DDD4.
… Figure 2 of DDD4 show[s] the movable press in an open position (termed ‘first position’ in feature 1(d) of pending claim 1). It is submitted that it is this condition of the movable press that applies in relation to feature 1(b) [i.e. feature (b) of claim 1].
The … arrangement of Figure 3 in DDD4 shows the movable press in its closed position (termed ‘second position’ in feature 1(d) of pending claim 1). This closed position does not permit ‘receiving each insulated conductor flat along the longitudinal direction of the passageway’. Rather it is the open position of … Figure 2 of DDD4 which permit ‘receiving each insulated conductor flat along the longitudinal direction of the passageway’.
It is submitted that … Figure 2 of DDD4 clearly disclose[s] ‘a passageway having a longitudinal direction and being between the movable press and a floor for receiving each insulated conductor flat along the longitudinal direction of the passageway’.
…
It is submitted that the ‘passageway’ lies between the ‘movable press’ (lever 15) and a ‘floor’ of the complementary members 1 and 2 as shown in Figure 2 of DDD4. In the open position of Figure 2 of DDD4 there is clearly sufficient clearance in the passageway to receive the ‘insulated conductor’ (electric cord 12) flat along the longitudinal direction of the passageway.
It is submitted that this is the meaning and intention of feature 1(b) of pending claim 1 as amended under S104.” (underlining added)

83. I note that the Opponent’s reasoning with respect to document DDD4 is very similar to its reasoning regarding document DDD1. Even if, in the first position depicted on figure 2, the insulated conductors might potentially be considered flat, this clearly does not apply to the second position illustrated on figure 3. For similar reasons as those discussed in more detail with respect to the first embodiment of document DDD1, I am not satisfied that document DDD4 discloses the feature of a “passageway … for receiving each insulated conductor flat along the longitudinal direction of the passageway”. Hence, I am not satisfied that claim 1 is not novel in light of document DDD4.
Novelty – summary
84. As I have already discussed, I am not satisfied that claim 1 is not novel. Claims 2 to 12 are ultimately appended to claim 1 and add further features to those already defined, hence I have no reason to consider that any one of these claims is not novel. Therefore, in conclusion, I am not satisfied that any one of claims 1 to 12 is not novel.
INVENTIVE STEP UNDER SUBPARAGRAPH 18(1)(b)(ii)
85. The test for obviousness was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 (Wellcome Foundation):
“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.” (at [45], underlining added)

86. In considering the question of what constitutes “a matter of routine”, in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398, it was stated at [53]:
“That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd. This Court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
‘Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF₃ substitution in the “2” position in place of the -Cl atom in chlorpromazine or in any other body which, apart from the -CF₃ substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?’ (emphasis added)

That approach should be accepted.” (original emphasis, reference(s) omitted)

87. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, it was stated:
“In Alphapharm, this Court reiterated that ‘obvious’ means ‘very plain’, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a ‘jury question’. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also ‘one of degree and often it is by no means easy’, because ingenuity is relative, depending as it does on relevant states of common general knowledge…
Further, as recognised in Beecham Group Ltd’s (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (at [51]-[52], underlining added, reference(s) omitted)

88. It is important to note that obviousness is a question of fact that is to be established by evidence.
The Opponent’s case on obviousness
89. On page 3 of the OS, the Opponent submits:
“In addition to the above analysis [regarding novelty] and with reference to the justifications given in the attached comparison table it is respectfully submitted that claims 1-12 are prior published or rendered obvious by either or both of DDD1 and DDD4 taken alone or in combination with the common general knowledge as at the priority date of the claims.” (underlining added)

90. During the hearing, the Opponent clarified that its case on obviousness is based on each one of documents DDD1 and DDD4 together with the common general knowledge.
91. Importantly, in this opposition, I am not presented with any evidence filed to establish what formed part of the common general knowledge in the art at the priority date. I am also not presented with any evidence that could suggest that the person skilled in the art would reach, as a matter of routine, the invention defined in claim 1 either by modifying the teachings of documents DDD1 and DDD4, or on the basis of the common general knowledge.
92. The Opponent sought to compensate the lack of evidence, firstly, by referring to the background section of the Specification which contains a brief discussion of “Australian Patent No. 784,652”, however I note that this document is not in evidence. In addition, I am unable to find any suggestion in the Specification, that the features of the device of this document, as briefly described in the Specification, formed part of the common general knowledge.
93. Secondly, the Opponent relied on Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26, where the Full Court stated at [24]:
“The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations…”

94. As best understood, the Opponent appeared to be suggesting that I, as a Delegate of the Commissioner, am entitled to make use of my technical expertise and draw inferences as to what the person skilled in the art would know and do as a matter of routine. However, given the specifics of the claimed invention, I do not consider that my technical expertise could be an appropriate substitute for the missing expert evidence.
95. Even more importantly, in my earlier discussion of the applicable law and onus, I noted that the Opponent has the onus of establishing the facts supporting the grounds of opposition, and this applies even though the standard of proof is “the balance of probabilities”. In light of the above-mentioned lack of evidence, I cannot be satisfied that the Opponent has discharged its onus to establish the facts supporting its contention on inventive step. Therefore, I am unable to find any basis to be satisfied, on the balance of probabilities, that claim 1 is obvious.
Inventive step – summary
96. I have not established that the invention defined in claim 1 lacks an inventive step. Claims 2 to 12 are ultimately appended to claim 1 and add further features to those previously defined, hence I have no reason to consider that any one of these claims is obvious. Therefore, in conclusion, I have not established that any one of claims 1 to 12 does not involve an inventive step.
OTHER SUBMISSIONS AND EVIDEVCE
97. Having reviewed the Out of Time Submissions filed by the Opponent, I do not consider that this document contains anything that has the potential to affect my decision. Therefore, given the outcome of the opposition, I do not consider it necessary to provide the Applicant with an opportunity to reply.
98. I also do not consider that the information contained in any part of the evidence submitted with respect to the Amendment Opposition “is likely, if not certain, to change the outcome of the [present] opposition in a significant way” (see Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [24]). Based on this, I will not consult this evidence under the provisions of regulation 5.23.
CONCLUSION AND COSTS
99. I have not established that any one of the claims is not novel or does not involve an inventive step. It follows that the opposition is unsuccessful on all grounds.
100. It is a normal practice that costs should follow the event and both parties’ submissions are along this line. While this would normally mean that the costs should be awarded against the Opponent, the present circumstances require a more detailed consideration.
101. Although the opposition is unsuccessful, the Specification was amended after the end of the period for filing evidence, and more specifically, following the introduction of documents DDD1 and DDD4 into the opposition. I note that documents DDD1 and DDD4 were introduced into the opposition by the Commissioner under the provisions of regulation 5.23. However, it was the Opponent who brought these documents to the attention of the Commissioner, and it appears that these two documents prompted the amendment. It is a common practice of the Commissioner in this type of circumstance to award costs incurred up to the date of allowance of the amendment against the Applicant, and to award costs incurred after that date against the Opponent. However, another factor to consider for this case is that both parties did not comply with subregulation 5.20(4) and filed their respective summaries of submissions late by 3 business days. Subregulation 5.20(6) permits the conduct of the parties in filing their summary of submissions to be taken into account in awarding costs.
102. In the present circumstances, on balance, I consider that it is fair not to make an award of costs according to Schedule 8.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents