Contour Optic Inc v Cheuk Ho Optical International Inc - [2005] APO 3

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 738405 in the name of CONTOUR OPTIC INC

Title: Auxiliary Lenses for Eyeglasses

Action: Application under section 69 for an extension of term of the petty patent, and notice under section 28 by CHEUK HO OPTICAL INTERNATIONAL INC

Decision: Issued 1 February 2005.
Abstract

Found that there was insufficient evidence to establish that the claimed invention did not involve an inventive step. As this was the only ground of invalidity pursued under section 28(1), the extension of term was granted.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent No. 738405 in the name of Contour Optic Inc, application under section 69 for an extension of term of the petty patent, and notice under section 28 by Cheuk Ho International Ltd

BACKGROUND

Petty patent 738405 (hereafter the petty patent) in the name of Contour Optic Inc (hereafter the patentee) was granted on application 21200/01 on 20 September 2001. Application 21200/01 was filed on 14 February 2001 as a divisional application from standard patent application 729803 (hereafter the parent application) which claims priority from United States application 08/766327 filed on 13 December 1996. The parent application was advertised accepted on 8 February 2001 and is currently subject to opposition under section 59.
On 29 May 2002 the patentee applied for an extension of the term of the petty patent. On 5 September 2002 Cheuk Ho International Ltd (hereafter the notifier) applied for an extension of time under section 223 in which to file a notice under section 28. The notifier is also the opponent in respect of the parent application. After an exchange of correspondence between the parties the extension of time under section 223 was finally granted thus validating the section 28 notice and evidence in support which the notifier had filed on 19 September 2002. The patentee filed its evidence in response on 14 October 2003 after having been granted a number of extensions of time without objection.
At the request of the parties the application for extension of term was heard jointly with the opposition to the parent application in Melbourne on 22 July 2004. The patentee was represented by Mr Garry Fitzgerald of counsel instructed by Mr John Carroll of the patent attorney firm Davies Collison Cave. The notifier was represented by Mr Greg Noonan, assisted by Ms Rachel Montgomery, of the patent attorney firm Freehills Carter Smith Beadle. Ms Jenny Paung of the notifier was also in attendance as an observer.
The petty patent system was abolished when the Patents Amendment(Innovation Patents) Act 2000 commenced on 24 May 2001. However, the amended Act provided that the “old law” (as the pre-existing law is referred to) continued to apply to petty patents granted after the commencement day on applications for a patent made before that day. This provision clearly applies to the petty patent.
THE SPECIFICATION
The specification is relatively brief and indicates that the invention relates to auxiliary lenses for eyeglasses. By way of background the specification refers to a prior art arrangement disclosed in US patent no 5568207 which is said to comprise:
“a primary spectacle frame having two magnet members provided on the upper side portions, and an auxiliary spectacle frame including a pair of arms for engaging over the upper side portions for preventing the auxiliary spectacle frame from moving downward relative to the primary spectacle frame and having two magnet members for engaging with the magnet members of the primary spectacle frame.”
According to the specification, two hands are required for attaching the auxiliary spectacle frame to the primary spectacle frame, and the invention seeks to provide auxiliary lenses which may be easily engaged on the primary frame by one hand only.
The claims of the petty patent are in the following terms:
“1. An eyeglass device comprising a primary frame including a bridge and an auxiliary frame including a bridge, the auxiliary frame being releasably securable to the primary frame such that an upper surface of the bridge of the primary frame provides underlying support for the auxiliary frame via the bridge of the auxiliary frame, and magnetic coupling means providing a magnetic coupling between the upper surface of the bridge of the primary frame and the auxiliary frame so as to allow the auxiliary frame to be secured to the primary frame with only one hand by a user.
2. An eyeglass device according to claim 1, wherein the magnetic coupling means comprises at least one magnet mounted in the bridge of the primary frame and operatively exposed to the upper surface of the bridge of the primary frame, and the auxiliary frame includes a rearwardly extending bridge projection extending over the upper surface of the bridge of the primary frame to be supported thereby and to be retained by magnetic engagement with said magnet.
3. An eyeglass device according to claim 1, wherein the magnetic coupling means comprises at least one magnet mounted in a rearwardly extending bridge projection of the auxiliary frame and operatively exposed to a lower surface thereof, the rearwardly extending bridge projection extending over the upper surface of the bridge of the primary frame to be supported thereby and to be retained by magnetic engagement therewith.”
The specification describes a number of illustrated embodiments of the invention. In short, the exemplified eyeglass device comprises a primary frame including a bridge in which a magnet or magnetisable connector member is recessed. The eyeglass device further comprises an auxiliary frame including a bridge having a rearwardly extending projection for engaging with the bridge of the primary frame such that the primary frame provides underlying support for the auxiliary frame. A magnet or magnetisable connector member is secured in the bridge projection.
To secure the auxiliary frame to the primary frame, the user need only magnetically engage the connector member of the auxiliary frame with the connector member of the primary frame. The bridge of the auxiliary frame may include one or more hand grips to facilitate this operation.
Alternatively, only one of the connector members is a magnet, with the other connector member being made of magnetically attractive material. In yet another embodiment, the magnetic connector member of the auxiliary frame extends downwardly for engagement with a hole in the bridge of the primary frame.
GROUNDS OF INVALIDITY
The grounds specified in section 28(1) on which a person can notify the Commissioner that a petty patent is allegedly invalid are:
(a)    that the patentee was not entitled to be granted the petty patent;
(b)   that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b); or
(c)    that the specification does not comply with subsection 40(2) or (3).
If the Commissioner is satisfied that any of these grounds is made out, the Commissioner may refuse to grant an extension of the term of the petty patent. If not so satisfied, the Commissioner must extend the term (see section 69 and regulation 6.6).
In the present case the section 28 notice identifies grounds (b) and (c). However, the only ground of invalidity argued by Mr Noonan at the hearing on behalf of the notifier was that the claimed invention does not involve an inventive step.
THE EVIDENCE
Evidence in support
The evidence in support comprises:
·    A statutory declaration made by Julie Gaye Pollock on 18 September 2002 together with exhibits JGP-1 to JGP-3;
·    A statutory declaration made by Trevor Grant Button on 19 September 2002 together with exhibits TGB-1 to TGB-3; and
·    A statutory declaration made by Rachel Louise Montgomery on 19 September 2002 together with exhibits RLM-1 to RLM-6.
Ms Montgomery appeared with Mr Noonan for the notifier in these proceedings. Ms Pollock and Mr Button are independent declarants.
Ms Pollock has held various optical dispensing positions since the early 1970s and commenced her current employment as the optical dispenser and manager with an optometrist and contact lens practitioner in 1993. Her daily activities include assisting clients with spectacle frame selection, and adjusting and repairing spectacle frames. She also reviews the brochures and/or sample spectacles from assorted distributors each month, and orders new and replacement stock for the practice.
Mr Button is currently the dispensing optician with a private practice, a position he has held since 1999. His career in eyewear optics began in 1981 as an apprentice with OPSM in optical fitting and surfacing. After completing his apprenticeship Mr Button commenced a diploma in optical dispensing. He was employed by OPSM until 1987, and since then has worked as a dispensing optician with a number of companies including Paris Miki Optical (Vision Express). It seems from his evidence that the tasks referred to by Ms Pollock are typical of those performed by members of the optical dispensing profession.
Ms Pollock explains that products known as “clip-ons” generally include a primary frame for ordinary use in which prescription lenses are typically mounted, and an auxiliary frame that clips on to the primary frame and is used as required by the wearer for placing auxiliary lenses (typically sunglass lenses) in register with the prescription lenses. Ms Pollock states there are two main types of clip-ons, mechanical and magnetic.
Mechanical clip-ons became commercially available in the 1970s. They did not have a full frame but were nonetheless bulky and unsightly particularly as most styles included a curved bar attached to both lenses that did not align with the bridge of the primary frame. A style of mechanical clip-on well known “since at least the mid to late 1980s” included four hooks, one each at the top and bottom of each lens of the clip-on, which attached to the primary frame. However, it was often necessary for the wearer to remove the spectacles from their face before attaching or detaching the clip-on. The most common type of mechanical clip-on in the early to mid 1990s was provided with a bridge linking the lenses of the clip-on and a pair of spring loaded legs that extended over and were supported by the bridge of the primary frame. Mr Button refers to another known type of mechanical clip-on having “spring-tensioned bridges and hooks or clips at the temporal edges.”
In Ms Pollock’s experience, the magnetic clip-ons are more popular since they are generally easier to attach to the primary frame. Both Ms Pollock and Mr Button say they are familiar with the commercially available “Convertibles” range and the “Plus/Minus” range of magnetic
clip-ons. The Plus/Minus range is apparently a commercial product of the patentee.
Exhibit JGP-3 is a copy of US patent 5568207 (hereafter the Chao patent) acknowledged as prior art by the petty patent. The Chao patent discloses an eyeglass device comprising a primary spectacle frame 10 having two rearwardly extending projections 13 at its side portions which each support a magnetic member 14. The eyeglass device further comprises an auxiliary spectacle frame 20 which includes two side portions each having a short arm 21 for extending over and engaging the upper portion of the side portions of the primary frame such that the auxiliary frame is supported by the primary frame. The auxiliary frame also includes two magnetic members 22 secured to its arms for engaging with the magnetic members of the primary frame. The Chao patent then indicates that
“it is preferable that the projections 13 and the magnetic members 14 are located slightly lower than the upper portion of the primary spectacle frame 10; and the end portions of the arms 21 and/or the magnetic members 22 are slightly extended downward toward the projections 13 such that the arms 21 and the magnetic members 22 may hook on the primary spectacle frame 10 and such that the auxiliary spectacle frame 20 may further be stably supported and secured to the primary spectacle frame 10.”
According to Ms Pollock, the eyeglass device disclosed by the Chao patent is essentially identical to the Convertibles range of magnetic clip-ons which in turn share many similarities with the invention claimed by the petty patent, including “the use of pairs of matching disc magnets, and the positioning of the magnets on upper surfaces of the primary frame and on the underneath surface of an overhanging portion of the clip-on.” However, she draws attention to a “significant difference” which resides in “the location of the magnets on the temples in the Convertibles range and in the bridge area in the [petty patent].” Ms Pollock expresses the opinion that “this is a matter of choice according to the desired aesthetics or appearance.”
In also pursuing this line of attack, Mr Button, who agrees that the eyeglass device disclosed by the Chao patent is substantially identical to the Convertibles clip-on products, points out that
“[i]n conventional mechanical clip-ons … the clips are often at each side of the bridge, ie. on the insides of the lenses. The petty patent … has simply reverted to this traditional location for the “clip” points instead of the outside positions favoured in US patent 5,568,207. It is a choice that I consider of no substance functionally, a choice that is simply a matter of cosmetics and providing an alternative look or appearance.”
He then asserts:
“The stability of the assembly of the two frames in the product of the petty patent is increased by having an overhanging portion on the bridge of the auxiliary frame, which sits on the bridge of the primary frame and prevents the clip-on from moving downwards. It is apparent to me, though, that if you were designing a pair of clip-on spectacles, and you wanted to provide some stability via an upward support, you need to be working on a horizontal surface. The limited available surface area of spectacles would lead me to consider that the obvious places – indeed the only two practical places – for providing upward support would be the bridge or lug area at each temple. When you consider that the Convertibles range takes advantage of the lug area, while the product described in the petty patent uses the bridge area, the difference between the two effectively comes down to each of the products choosing different ones of the two readily apparent alternatives. Where the overhang, and therefore the magnets, are located really comes down to cosmetics: which location better suits the appearance or visual effect desired.”
I note here that in contrast to the opposition to the parent application, the notifier’s evidence in support does not rely on Japanese utility model registration 3031881 (hereafter the Japanese utility model) or Taiwan utility model 107096 (hereafter the Taiwan utility model).
Evidence in response
The evidence in response comprises:
· A statutory declaration made by Brendan O’Keefe on 25 September 2003 together with exhibits BK-1 and BK-2; and
· A statutory declaration made by Roger Graham Henley on 10 October 2003 together with exhibits RGH-1 and RGH-2.
Mr O’Keefe and Mr Henley are not associated with the patentee.
Mr O’Keefe is the director and manager of a private business involved in the design and manufacture of eyewear for sale throughout Australia. He qualified as an optical mechanic in 1971 and later was employed as an optical dispenser. He started a business as an optical dispenser in 1985, and his current business in 1992.
Mr Henley is a director and general manger of a private business which specialises in the design and manufacture of custom eyewear. His career in eyewear began in 1978 when he was employed as an optical mechanic. In 1985 he commenced work as an optical dispenser before starting his private business in December 1987.
Mr O’Keefe characterises the role of an optical dispenser as being
“essentially a sales position involving greeting customers and assisting them in the selection of an appropriate frame. An optical mechanic will then shape and fit the lenses to the frame and the optical dispenser will make any final adjustments to the eyewear so that it comfortably fits the customer. Typically the final adjustments involve bending the ends of the arms so that the spectacles fit comfortably over the ears.
Optical dispensers may also make minor repairs to eyewear, such as tighten screws and re-inserting lenses into the frame.”
He contrasts this job description with the role of a designer and manufacturer of eyewear which he says entails issues such as overall appearance, durability and functionality of the eyewear with the ultimate goal of producing eyewear that customers will want to buy. In Mr O’Keefe’s view, the most important factor to be considered when designing and manufacturing eyewear is appearance. Mr Henley confirms that aesthetics is a prime consideration which together with other factors such as comfort and functionality “largely influence whether the frame will sell.”
On the basis of the above comparison Mr O’Keefe contends that the petty patent (and also the parent application)
“are intended for and directed to designers and manufacturers of eyewear and not optical dispensers or optical mechanics. The documents relate to the design and manufacture of spectacle frames and corresponding clip-on auxiliary frames. The documents do not relate to activities or services within the job description of an optical dispenser, such as selling frames of fitting frames to a customer. The document do [sic] not relate to activities or services within the job description of an optical mechanic, such shaping lenses [sic] and fitting lenses to frames. In my opinion an optical dispenser or optical mechanic would not consider these documents to be relevant to their job.”
For his part Mr Henley says that the petty patent is, in his opinion, directed to a new design of optical frame, and is “not relevant to someone who is just an optical dispenser.”
I will make further reference to the evidence where appropriate later in my decision.
INVENTIVE STEP
Relevant law
Section 7 relevantly provides:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”
The definition in Schedule 1 of “prior art base” has a shorter geographical reach in respect to petty patents than it has in respect to standard patents. Relevantly, information in documents outside the “patent area” is not considered in deciding whether an invention claimed in a petty patent does or does not involve an inventive step. For present purposes, the patent area is Australia.
Onus of proof

As stated by the High Court in Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 at [31], the opening words of section 7(2) indicate that the onus to establish the absence of an inventive step rests upon the party challenging validity. It is settled in law that the standard of that proof is the civil standard on the balance of probabilities (Dunlop Holdings Ltd’s Application [1979] RPC 523 at 543).
The person skilled in the relevant art
For the reasons given in my decision on the opposition to the parent application I consider that although not strictly meeting the description of the hypothetical non-inventive skilled person in the field of the invention, the declarants for the notifier are nonetheless sufficiently qualified to give evidence in these proceedings.
Common general knowledge
Again for the reasons given in my decision concerning the parent application I am unable to find on the evidence that the claimed invention does not involve an inventive step in the light of common general knowledge alone as it existed in Australia before the priority date.
Prior art information
As noted earlier, the evidence in support relies on the Chao patent, but not the Japanese utility model or the Taiwan utility model. However, according to records held by the Patent Office, the Chao patent was not published in Australia until 23 December 1996 which is after the priority date. As a consequence, the content of the Chao patent does not constitute prior art information for the purposes of section 7(3) with the result that the notifier has no further basis on which to sustain its challenge to the inventiveness of the claimed invention.
For completeness I add that the Japanese utility model was also published in Australia after the priority date, and there is no evidence that the Taiwan utility model was ever published in this country. However, it will be apparent from my decision concerning the parent application that even if the content of any of the above documents (including the Chao patent) could be regarded as information that satisfies the test prescribed by section 7(3), there is insufficient evidence to establish that the skilled person could piece together the common general knowledge and any one of these documents to produce the whole of the claimed invention without the exercise of inventive ingenuity.
CONCLUSION
The notifier has failed to satisfy me that the petty patent is invalid on any ground specified in section 28(1). Consequently, I grant an extension of the term of the petty patent.
COSTS
Having considered all the circumstances in this case I see no reason to depart from the normal practice that costs follow the event. I therefore award costs in accordance with schedule 8 against the notifier, noting, however, that the only applicable items of the schedule of costs are those relating to the hearing itself (Thomas & Stohr v Chappell & Yates [1993] APO 6).
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the patentee: Davies Collison Cave, Melbourne
Patent attorneys for the notifier: Freehills Carter Smith Beadle, Melbourne