Contour Optik Inc v Cheuk Ho Optical International Ltd - [2005] APO 4

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 729803 in the name of CONTOUR OPTIK INC

Title: Auxiliary Lenses for Eyeglasses

Action: Opposition under Section 59 of the Patents Act by CHEUK HO OPTICAL INTERNATIONAL LTD

Decision: Issued 1 February 2005.
Abstract

The opponent has failed to establish that the claimed invention does not involve an inventive step, or that claim 24 is not fairly based on the matter described in the specification. As these were the only grounds pursued at the hearing, the opposition is dismissed.
With regard to the ground of lack of an inventive step, it was found that:
·    Although the opponent’s declarants do not strictly meet the description of the hypothetical non-inventive skilled person in the field of the invention, they are sufficiently qualified to provide evidence for the purposes of the opposition;
·    The common general knowledge in the field at the priority date was on the evidence limited to products known as mechanical clip-ons;
·    The only patent document relied on by the opponent which was reasonably ascertainable in the sense required by section 7(3) is US 5568207;
·    The evidence failed to demonstrate that the skilled person could piece together the common general knowledge and US 5568207 to produce the whole of the claimed invention without the exercise of inventive ingenuity. The same result ensued even if the other patent documents on which the opponent relied were taken into consideration.
Regarding the ground of lack of fair basis, it was found that claim 24 is based on a consistory clause which in turn is supported by the specification read as a whole. Claim 24 is in the result fairly based (per Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58).
While the amendment of the specification after the service of evidence in support prima facie acknowledged the validity of the opposition at that time, the opponent by its own actions is not entitled to an award of costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 729803 in the name of Contour Optic Inc and opposition under section 59 by Cheuk Ho Optical International Ltd

BACKGROUND

Patent application 729803 (hereafter the present application) was filed on 10 December 1997 by Contour Optic Inc (hereafter the applicant) claiming priority from United States application 08/766327 filed on 13 December 1996. The present application was advertised accepted on 8 February 2001.
Petty patent 738405 (hereafter the petty patent) was granted on application 21200/01 which was filed by the applicant on 14 February 2001 as a divisional application from the present application.
Cheuk Ho Optical International Ltd (hereafter the opponent) filed a notice of opposition to the present application on 7 May 2001 and a statement of grounds and particulars on 7 August 2001. The statement was subsequently amended under regulation 5.9 in response to a direction from the Commissioner that the opponent provide further and better particulars in relation to the documents it had listed under the grounds of novelty and inventive step.
On 29 May 2002 the applicant applied for an extension of the term of the petty patent following which the opponent filed a notice under section 28.
The opponent completed the service of its evidence in support of the opposition to the present application on 5 September 2002 after having been granted several extensions of time unopposed. On 9 October 2002 the applicant filed a request for leave to amend the complete specification under section 104. On 5 December 2002 the Commissioner directed that the service of evidence in answer be deferred pending the outcome of the request for leave to amend, noting that the applicant may need to seek extensions of time up until it was advised that leave to amend had been granted.
Leave to amend was granted and advertised on 6 March 2003. On 3 July 2003 the parties were advised that in accordance with the direction issued by the Commissioner, service of evidence in answer was due by 20 September 2003. After obtaining a short extension of this deadline, the applicant filed its evidence in answer on 14 October 2003.
The allowance of the section 104 amendments to the complete specification was advertised on 31 July 2003.
On 14 November 2003 the opponent notified its intention to file evidence in reply. However, despite being granted an extension of time as requested, the opponent advised on 16 March 2004 that it would not be filing evidence in reply.
At the request of the parties, the opposition to the present application was heard jointly with the application for extension of term in Melbourne on 22 July 2004. Contour was represented by Mr Garry Fitzgerald of counsel instructed by Mr John Carroll of the patent attorney firm Davies Collison Cave. Cheuk Ho 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 applicant was also in attendance as an observer.
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 using one hand only.
The specification as amended ends with twenty-seven claims, of which the independent claims read as follows:
“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, the bridge of the primary frame further including a first connector recessed within an upwardly facing surface of the bridge of the primary frame, wherein the bridge of the auxiliary frame extends above the bridge of the primary frame which thereby provides underlying support for the auxiliary frame and magnetically engages the first connector of the primary 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 comprising a primary frame including a bridge and an auxiliary frame including a bridge, the auxiliary frame being releasably securable to the primary frame, the bridge of the primary frame further including a first connector, wherein the bridge of the auxiliary frame extends above the bridge of the primary frame which thereby provides underlying support for the auxiliary frame and magnetically engages the first connector of the primary frame so as to allow the auxiliary frame to be secured to the primary frame with only one hand by a user, the auxiliary frame being supported from the primary frame solely as a result of its engagement with the bridge of the primary frame.
18. An eyeglass device comprising an auxiliary frame including a bridge, the bridge of the auxiliary frame including a magnetic connector recessed within a downwardly facing surface for releasably magnetically engaging with an upwardly facing surface of the bridge of a primary frame which thereby provides underlying support for the auxiliary frame when the auxiliary frame is magnetically engaged to the primary frame, the arrangement being such that when the auxiliary frame and the primary frame are secured one to the other, a part of the bridge of the auxiliary frame extends over and engages with at least a part of the bridge of the primary frame.
19. An eyeglass device comprising an auxiliary frame including a bridge, the bridge of the auxiliary frame including a magnetic connector for releasably magnetically engaging with an upwardly facing surface of the bridge of a primary frame which thereby provided underlying support for the auxiliary frame when the auxiliary frame is magnetically engaged to the primary frame, the arrangement being such that when the auxiliary frame and the primary frame are secured one to the other, a part of the bridge of the auxiliary frame extends over and engages with at least a part of the bridge of the primary frame, the auxiliary frame being supported from the primary frame solely as a result of its engagement with the bridge of the primary frame.
21. An eyeglass device comprising a primary frame including a bridge and a first magnetic connector recessed within the bridge, the first connector operatively exposed to an upwardly facing surface of the bridge for releasably magnetically engaging an underside of a bridge of an auxiliary frame whereby the primary frame provides underlying support for the auxiliary frame when the auxiliary frame is magnetically engaged to the primary frame.
23. An eyeglass device comprising a primary frame including a bridge and a first magnetic connector operatively exposed to an upwardly facing surface of the bridge for releasably magnetically engaging an underside of a bridge of an auxiliary frame whereby the primary frame provides underlying support for the auxiliary frame when the auxiliary frame is magnetically engaged to the primary frame, the auxiliary frame being supported from the primary frame solely as a result of its engagement with the bridge of the primary frame.
24. 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, the bridge of the primary frame further including a first connector, wherein the first connector is an aperture and the bridge of the auxiliary frame extends above the bridge of the primary frame which thereby provides underlying support for the auxiliary frame and magnetically engages the primary frame so as to allow the auxiliary frame to be secured to the primary frame with only one hand by a user, wherein a second connector is secured to the bridge of the auxiliary frame for engaging within the aperture of the primary frame, the auxiliary frame is supported from the primary frame solely as a result of its engagement with the bridge of the primary frame.”
It can be seen that, in essence, claims 1, 2 and 24 are each directed to an eyeglass device comprising a primary frame in combination with an auxiliary frame, whereas the eyeglass device of each of claims 18 and 19 comprises an auxiliary frame which is simply capable of engagement with a primary frame, and the eyeglass device of each of claims 21 and 23 comprises a primary frame which is simply capable of engagement with an auxiliary frame.
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 mounted. 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 mounted 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 comprises 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 within an aperture formed in the bridge of the primary frame.
GROUNDS OF OPPOSITION
The statement of grounds and particulars as amended sets out all grounds of opposition available under section 59. However, the only grounds argued by Mr Noonan at the hearing on behalf of the opponent were (i) the claimed invention does not involve an inventive step and (ii) the specification does not comply with section 40(3) in that claim 24 is not fairly based on the matter described in the specification.
THE EVIDENCE
Evidence in support
The evidence in support comprises:
·    A statutory declaration made by Julie Gaye Pollock on 9 May 2002 together with exhibits JGP-1 to JGP-5;
·    A statutory declaration made by Trevor Grant Button on 10 May 2002 together with exhibits TGB-1 to TGB-6;
·    A statutory declaration made by Rachel Louise Montgomery on 10 May 2002 together with exhibits RLM-1 to RLM-8; and
·    A further statutory declaration made by Ms Montgomery on 5 September 2002 together with exhibit RLM-9.
Ms Montgomery appeared with Mr Noonan for the opponent 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 type of known 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^TM” range and the “Plus/Minus^TM” range of magnetic
clip-ons. The Plus/Minus range is apparently a commercial product of the applicant. Mr Button says with regard to the Convertibles range that
“[t]his is a change from mechanical clip-ons, which were a discrete item adapted to suit a range of spectacle frames. With the Convertibles range, the main or primary frame and the clip-on itself, ie. the “auxiliary frame”, are sold as a two part product.”
A sample Convertibles clip-on set is exhibited as TGB-3.
Exhibit JGP-3 is a copy of US patent 5568207 (hereafter the Chao patent) acknowledged as prior art by the present application. 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 present application, 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 [present application].” 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 inside of the lenses. The opposed patent specification … 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 continues as follows:
“The stability of the assembly of the two frames in the product of the opposed patent specification 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 opposed patent specification 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.”

Exhibit RLM-9 is a certified copy and verified translation of Taiwan utility model 107096 (hereafter the Taiwan utility model). The eyeglass device disclosed by the Taiwan utility model with reference to figure 3A comprises a primary frame 10 having magnets 102 embedded at spaced locations around each lens 12 of the primary frame. A number of magnets are provided at corresponding locations in an auxiliary frame 20. The bridge of the auxiliary frame includes a rearwardly extending projection 202 which when the frames are magnetically connected extends over and is supported by the bridge of the primary frame.
Mr Button asserts that the magnetic clip-ons according to the Convertibles range, the present application and figure 3A of the Taiwan utility model
“offer the same level of performance, are all attachable with one hand, and attach equally securely. It comes down to personal preference and aesthetics as to which one of the designs would be most preferred. None of the designs offers a significant benefit over the other designs. The basic functional aspects of the three constructions is the same, and differences that are evident are due to aesthetic preferences and magnetic arrangements that best fit these aesthetic alternatives.”
Exhibit RLM-8 is a certified copy and verified translation of Japanese utility model registration 3031881 (hereafter the Japanese utility model). The eyeglass device disclosed by the Japanese utility model comprises a primary frame 1 having a magnet 23 located on the rear surface of the bridge. An auxiliary frame 2 has a U-shaped hook formed at the bridge, and a stabilising hook 12 above each lens, which in use extend over the bridge and rims respectively of the primary frame such that the primary frame provides underlying support for the auxiliary frame. The auxiliary frame also includes a magnet 15 fixed to an inner surface of the U-shaped hook which engages with the magnet located on the bridge of the primary frame.
Ms Pollock states that the eyeglass device disclosed by the Japanese utility model is very similar to the Plus/Minus range of clip-ons and to “the products of the opposed patent specification”, with the exception of the mechanical hooks which in any case she says “serve no real purpose” and do not impede the attachment of the auxiliary frame to the primary frame with only one hand.
Evidence in answer
The evidence in answer 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 applicant.
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 present application (and also the petty patent)
“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 present application 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.
ONUS OF PROOF
As submitted by Mr Fitzgerald, the onus of proof in these proceedings lies on the opponent who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AGv New England Biolabs Inc 50 IPR 305 at [67]). It is also 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).
INVENTIVE STEP
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 term “prior art base” is defined in Schedule 1 as meaning:
“(a) in relation to deciding whether an invention does or does not involve an inventive step:
(i)    information in a document, being a document publicly available anywhere in
        the patent area; and
(ii)   information made publicly available through doing an act anywhere in the
        patent area; and
(iii) where the invention is the subject of a standard patent or an application for
        a standard patent – information in a document publicly available outside the
         patent area …”
Thus for present purposes inventiveness can be assessed against the common general knowledge alone, or the common general knowledge together with information made publicly available in a document in or outside Australia. Section 7(3) restricts the information to that which could have been reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the art.
The person skilled in the relevant art
Section 7(2) contemplates “a person skilled in the relevant art”. This necessitates identification of both the “relevant art” and the “skilled person”. Generally speaking, and as pointed out by Finkelstein J in Root Quality Pty Ltd v Root Control Technologies Pty Ltd 49 IPR 225 at 241:
“The skilled addressee, or the judge adopting the mantle of the skilled addressee, is relevant for a variety of purposes in patent law. He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious. The skilled addressee has been given various descriptions. Sometimes he is the ‘notional skilled addressee’, sometimes the ‘uninventive skilled worker in the particular field’, sometimes the ‘person skilled in the art’, and sometimes the ‘non-inventive hypothetical skilled addressee’.” [citations omitted]
In Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242, Lord Diplock observed that skilled workers in the field are “those likely to have a practical interest in the subject matter of [the] invention”. The authorities also recognise that while the skilled person against whose efforts the claimed invention is to be tested may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (see eg. Elconnex Pty Ltd v Gerard Industries Pty Ltd 25 IPR 173 at 178, and Minnesota Mining & Manufacturing Co v Beiersdorf (Aust)Ltd (1980) 144 CLR 253 at 293).
In the present case the relevant art is that concerned with auxiliary lenses for eyeglasses which the evidence has established are known to all declarants in these proceedings as clip-ons. However, there is considerable disagreement between the parties as regards the characteristics of the skilled person in this field. The opponent has sought to identify the skilled person as an optical dispenser who the applicant asserts is essentially a shop assistant lacking relevant expertise in the design and manufacture of eyewear.
The question as to who is properly to be regarded as the person skilled in the relevant art is determined in the light of the problem the claimed invention is intended to solve, and not in the light of the claimed solution (see eg. AllsopInc v Bintang Ltd 15 IPR 686 at 701-2). The invention claimed in the present application is directed to providing an eyeglass device whereby, unlike the device disclosed by the Chao patent (so it is said), only one hand is needed to attach the auxiliary spectacle frame to the primary spectacle frame. This suggests to me that the relevantly skilled worker is a person experienced in eyewear design and manufacture, which of course includes Messrs O’Keefe and Henley for the applicant. The opponent’s declarants are not experts of this kind, but I do not agree with Mr Fitzgerald that their evidence should as a consequence be disregarded.
Mr O’Keefe, who was himself once employed as an optical dispenser, has stated that the primary role of a person holding this position is to assist a customer in the selection of an appropriate spectacle frame. He further states that the duties of an optical dispenser can also include “the selection and purchase of eyewear from manufacturers, wholesalers or distributors.” This is consistent with the evidence of Mr Button whose current position involves
“meeting with representatives of frame distributors, reviewing their brochures and stock, and selecting the frames my company will display and stock from among the distributors’ products. On average I estimate I meet with representatives from each of the selected dozen or so distribution companies [my company] deals with four times a year. I also attend the Optical Dispensers and Manufacturers Association (ODMA) fair. This is a long-running event held every two years, usually in Sydney. The ODMA fair is a trade fair where new styles and models of spectacle frames are on display.”
Ms Pollock is also responsible for ordering new and replacement stock and to this end sees “a number (typically six to eight) of spectacle distributors each month.” Both Ms Pollock and Mr Button deal with a full range of eyewear, including frames for prescription lenses, and clip-ons.
Thus although not strictly meeting the description of the person skilled in the art, it seems most unlikely that in performing their normal duties the opponent’s declarants would not have acquired relevant background knowledge in the field of eyewear design. Clearly, they would be well informed of market trends, and it seems to me that in order to assist clients with spectacle frame selection, they would be required to take account of factors such as functionality and in particular aesthetics which Mr Henley has stated is a prime consideration when designing eyewear. I am therefore prepared to accept that Ms Pollock and Mr Button are sufficiently qualified to provide evidence in these proceedings (cf. Francis Richard Forrest v Corex Plastics (Australia) Pty Ltd [1999] APO 9). However, as it turns out, I have not found their evidence to be especially helpful to the opponent.
Common general knowledge
Whether or not an invention involves an inventive step is to be ascertained by reference to the state of common general knowledge in the relevant art at the priority date, which for present purposes is 13 December 1996.
The essential nature of common general knowledge has been defined by Aickin J in Minnesota at 292 as follows:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.”
The common general knowledge is not restricted to information that might be retained in the mind of the skilled person, but extends to material that is routinely consulted by such a person in the field. As stated in Aktiebolaget Hassle v Alphapharm Pty Ltd 51 IPR 375 at 391:
“That is not to say that the whole of the content of “common general knowledge” need be within the conscious awareness of the hypothetical non-inventive skilled worker. For example, there may be publications of technical and detailed information that are habitually consulted by the hypothetical skilled worker. Notwithstanding that the hypothetical skilled worker would not have the whole of the contents of such reference material in his or her mind, such information should be regarded as part of common general knowledge.”
The common general knowledge that is relevant is that in Australia. The state of the common general knowledge is a question of fact that must be determined on the basis of evidence from suitably qualified experts of what was known by skilled workers in the field. In the present case little of the evidence has been directed specifically to this issue. The applicant’s declarants unfortunately have not said anything on the matter, while the evidence for the opponent goes no further than establishing that mechanical clip-ons had entered the common general knowledge of those engaged in the art in Australia. However, the same cannot be said of magnetic clip-ons since, according to Ms Pollock and Mr Button, they did not become aware of this type of clip-on until 1997 which is after the priority date.
Moreover, there is no evidence to show that the content of the Chao patent, the Taiwan utility model or the Japanese utility model had passed into common general knowledge. As stated earlier, the present application has acknowledged the Chao patent as prior art. In Bristol-MyersSquibb Co v F H Faulding & Co Ltd 46 IPR 553 at 564 Black CJ and Lehane J stated:
“If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the court – or the commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of ‘the common general knowledge as it existed in the patent area’. In other words, what is disclosed in such terms may be taken as an admission to that effect.”
The delegate in Novo Nordisk A/S v Eli Lilly and Company [2000] APO 67 treated this statement with some caution:
“The assessment is based on the common general knowledge as it is presented on the face of the specification. If information is stated to be common general knowledge or can reasonably be inferred to be common general knowledge, then the Commissioner can accept that conclusion without any further evidence. It is not correct to say that every piece of prior art referred to in the specification is part of the common general knowledge.”
As regards the present application, there is nothing in the specification from which it could reasonably be inferred that an eyeglass device as disclosed by the Chao patent constituted common general knowledge.
Thus, based on the limited evidence before me, the common general knowledge in the art does not extend beyond mechanical clip-ons which differ significantly from the invention claimed in the present application. Indeed these devices do not even contemplate the use of magnets as a means of attaching the auxiliary frame to the primary frame. Ms Pollock has stated that one of the most common types of mechanical clip-on included a pair of spring loaded legs that extended over and were supported by the bridge of the primary frame. However, neither she nor Mr Button has even attempted to establish that it was known to those engaged in the art that using the primary frame bridge in this manner allowed for easier attachment of the clip-on as compared to those types of clip-ons that were supported by the rims or temporal regions of the primary frame.
Mr Noonan submitted that the common general knowledge also embraced the use of magnets as releasable attachment devices, such as magnetic latches for cupboard doors. However, this submission is not supported by hard evidence, and in any event I see no reason why the skilled person would look to a remote art for a possible solution to the problem (see eg. Proctor v
Flo-Con 4 IPR 187 at 198).
I am therefore unable to find that the claimed invention does not involve an inventive step in the light of common general knowledge alone.
This leaves me to consider whether the position is changed when the common general knowledge is considered in conjunction with information that satisfies the test prescribed by section 7(3).
Prior art information
Mr Fitzgerald submitted that the content of the Chao patent, the Taiwan utility model or the Japanese utility model could not be regarded as information that satisfies this test. Specifically, he argued that there is no evidence to show that these documents could reasonably be expected to have been ascertained by the person skilled in the art.
There is little judicial authority on the point. In Dyno Nobel Asia Pacific Ltd v Orica AustraliaPty Ltd 47 IPR 257 at [190] Dowsett J interpreted the word “ascertained” as meaning “discovered” or “found”. His Honour referred to the distinction between the respective prior art bases for considering questions of novelty and inventiveness, as outlined in Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited (1972) RPC 346 at 355:
“… there may be documents which, although available, would never be looked at by anyone making such a search as our hypothetical addressee is supposed to have made. Attention was drawn to the fact that both heads (e) (novelty) and (f) (obviousness) in section 32 contains the words ‘having regard to what was known or used … in the United Kingdom”. I doubt whether they were intended to mean the same in each case. If they were there would now be little, if any, difference between novelty and obviousness. Obviousness would cover practically every case of lack of novelty. In head (e) these words are used in an artificial sense and are held to include matter which in fact no-one in the United Kingdom ever knew or was likely to know, such as the contents of some foreign specifications which no-one had ever looked at and which the most diligent searcher would probably miss. I think that in head (h) the words should have the more natural meaning of what was or ought to have been known to a diligent searcher.”

His Honour observed at [189] that it seems likely that section 7(3) reflects this distinction. In applying the “diligent searcher” test his Honour found that the contents of certain patent documents could be considered as prior art information for the purpose of section 7(3), but based this finding on direct evidence that the skilled person could reasonably be expected to keep abreast of relevant patent material. However, as noted by Mr Fitzgerald, I do not have the benefit of evidence of this kind. I therefore turn for assistance to Nippon Kayaku Kabushiki Kaisha andSankyo Company Limited v Rohm and Haas Company [1997] APO 40 in which the delegate stated:
“While it is probably true that a document that is part of the common general knowledge of the art would be likely to be ascertained, understood and regarded as relevant, the reverse is not necessarily true. The fact that a document is not well known does not mean that it would not be likely to be ascertained by a person working in the art. A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art. The requirements of understood and regarded as relevant are not likely to be an issue where a document relates to the same art as the problem.”
I consider this to be a sound approach. As already mentioned, the opponent here relies on information made publicly available in three patent documents. One of these, the Chao patent, has been referred to as background art in formulating the problem addressed by the claimed invention, and it is therefore difficult to see why a skilled person could not reasonably be expected to have ascertained its existence. On the other hand, the Japanese utility model was first published only ten days before the priority date in the Japanese language and, consequently, I am not convinced that this document could reasonably be expected to have been ascertained by the skilled worker, let alone understood (cf. Lentjes Bischoff GmbH v ABB MiljoAS [2001] APO 61).
I also doubt that the Taiwan utility model was reasonably ascertainable in the sense required by section 7(3). Although published well before the priority date, it seems so far as I can ascertain that this document was only available in Taiwan which in my view is not sufficiently accessible to reasonably expect it to be encountered by a skilled person.
However, and as will become apparent, even if it be assumed that the Japanese utility model and the Taiwan utility model were reasonably ascertainable at the relevant time, the result is the same.
I think it appropriate to mention here that I have discounted the Convertibles July 2001 catalogue (see eg. exhibit RLM-2) from any further consideration since it clearly was not published before the priority date.
The test for inventive step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
More recently, the High Court in AktiebolagetHassle v Alphapharm Pty Ltd 56 IPR 129 at 142-143 referred with approval to this approach and further held:
“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 … directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce [the desired result]?’
That approach should be accepted.”
While inventiveness requires more than novelty, even a “scintilla of inventiveness” is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd 25 IPR 273 at 293-294). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
The case pressed by Mr Noonan is that the invention claimed in the present application merely represents a logical product of design choices available to the skilled person. He submitted that the claimed invention essentially differs from the Chao patent in that the magnetic connectors and the region at which the primary spectacle frame provides underlying support for the auxiliary spectacle frame have been relocated from the temporal edges of the eyeglass device to the bridge. According to Mr Noonan, this change in location was naturally suggested by mechanical clip-ons which, as I have dealt with above, the evidence indicates had entered the realm of common general knowledge.
Mr Button has stated that mechanical clip-ons were predominately mounted around the nasal area, ie. at each side of the bridge as depicted for example in fig 2 of the Japanese utility model, and contends that the claimed invention could be arrived at by adopting these “traditional” locations of the connection points in the Chao patent which he considers is a choice “that is simply a matter of cosmetics” providing “an alternative look or appearance”. However, this contention overlooks the fact that the claims of the present application speak of magnetic connectors at the respective bridges of the primary and auxiliary frames, and totally ignores the question of whether the common general knowledge would directly lead the skilled person as a matter of course to try this approach in the expectation that it might well produce the result sought to be achieved. In fact Mr Button has not even shown that although the attachment of mechanical clip-ons to spectacle frames is not effected magnetically, the skilled person would nevertheless look to these devices as a possible solution. In addition, Mr Button’s characterisation of the placement of the connection points on the bridge area of the frames as merely a matter of aesthetics fails to establish that such placement simply amounts to the application of a well-known design feature to secure an obvious mechanical advantage, and indeed Ms Pollock’s reference to this feature as a “significant difference” as compared to the Chao patent suggests that it is not merely a choice that would have been apparent to the skilled person.
Even if it was proved that the skilled worker would recognise that the feature missing from the Chao patent of placing the magnetic connectors on the bridge area of the frames could be supplied by employing the connection points utilised in mechanical clip-ons, this step alone falls short of providing underlying support for the auxiliary frame in the same region. Mr Button has claimed that “the bridge or lug area at each temple” are the only two practical locations at which this form of support could be provided. Both he and Ms Pollock have stated that some mechanical clip-ons were supported by the bridge of the primary frame, but there is no conclusive evidence that the skilled person would have been led by direction to choose such an arrangement in preference to other possible arrangements including that disclosed by the Chao patent.
Moreover, the case put by the opponent has focussed upon individual features of the claimed invention rather than the interaction between them in combination. The authorities teach that where questions of inventiveness arise in respect of a combination patent, it is the inventiveness of the combination as a whole that must be examined; inventiveness is not to be determined by a “piecemeal examination integer by integer” (Elconnex at 184). As recently stated by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 at [78], the “inventiveness of particular integers is irrelevant to the inventiveness of a combination of them”. I have already found that the features of the claimed invention discussed above have not been shown to individually be obvious when tested against the common general knowledge and the Chao patent, and it therefore follows that the opponent has also failed to establish that the skilled person could piece together the common general knowledge and the Chao patent to produce the whole of the claimed invention without the exercise of inventive ingenuity.
Mr Noonan next drew attention to the Japanese utility model. He submitted that the claimed invention is distinguished from this document by the relocation of the magnetic connectors from a vertical to a horizontal surface of the respective bridges of the primary and auxiliary frames, and the omission of mechanical attachment hooks.
As already explained, the auxiliary frame of the eyeglass device disclosed by the Japanese utility model has a U-shaped hook formed at the bridge, and a stabilising hook above each lens, which in use extend over the bridge and rims respectively of the primary frame. The auxiliary frame also includes a magnet fixed to an inner (vertical) surface of the U-shaped hook which engages a magnet located on the rear (vertical) surface of the bridge of the primary frame. In contrast, the magnetic connectors of the claimed invention are preferably located on horizontal surfaces of the primary frame and auxiliary frame bridges.
The submission made by Mr Noonan in respect of the Japanese utility model is another example of the misuse of piecemeal examination and, as before, is not supported by evidence which shows that the skilled person could without difficulty bring together the common general knowledge and the Japanese utility model to arrive at the claimed invention as a whole. In fact it is difficult to see how the common general knowledge before the priority date, being restricted to mechanical clip-ons, would be of any assistance to the skilled person in selecting features of the combination claimed not found in the Japanese utility model.
Nevertheless, I will for completeness deal briefly with Mr Noonan’s submission. The opponent’s declarants have said nothing at all concerning the relocation of the magnetic connectors, with the result that I have no evidence on which to find that the skilled person would have been led directly by the Japanese utility model as a matter of course to arrange the magnetic connectors in accordance with the claimed invention. So far as the omission of mechanical hooks is concerned, Ms Pollock asserts that the eyeglass device disclosed by the Japanese utility model “would be entirely satisfactory and functional without the mechanical hooks” which she additionally contends “serve no real purpose”. At paragraph 0010 of the Japanese utility model it is said that the magnets
“are placed as reinforcements on the [primary] frame’s bridge and in the hook located at the [auxiliary frame’s] bridge” [my emphasis]
and at paragraph 0020:
“The superior attachment mechanism, consisting of the U-shaped hook and the hooks at the upper edges of the rims, which securely grip the [primary] frame’s bridge and the upper edges of its rims …”
I therefore reject Ms Pollock’s assertion that the mechanical hooks serve no real purpose given the emphasis clearly placed by the Japanese utility model on the principal role fulfilled by them in attaching the auxiliary frame to the primary frame. By the same reasoning it is plainly evident that the Japanese utility model teaches away from the claimed invention which is not functionally dependent on mechanical attachment devices.
The final submission made by Mr Noonan in connection with this ground of opposition is that the claimed invention differs from the Taiwan utility model in that it utilises magnetic connectors at the bridge area only. It will be recalled that the Taiwan utility model has magnetic connectors additionally mounted in the rims around the lenses of the primary and auxiliary frames. Mr Button has stated that the design of the eyeglass device disclosed by the Taiwan utility model could be improved by “removing the magnets from around the rim and leaving the two magnets at the bridge”. However, this statement fails to establish any reason why such “improvement” would be undertaken, and in particular that a skilled person seeking a solution to the problem would in the light of the common general knowledge be prompted by the Taiwan utility model to remove all magnetic connectors except those located at the bridge.
On the basis of the foregoing considerations I find that the ground of lack of an inventive step has not been made out.
FAIR BASIS
Mr Noonan submitted that the specification does not comply with section 40(3) since claim 24 is not fairly based on the matter described in the specification. Although this matter was raised for the first time at the hearing, as noted by the delegate in New Clear Water Pty Ltd v AtlantisCorporation Pty Ltd [2003] APO 9, it has long been the practice of the Commissioner in relation to section 40 matters not particularised or addressed in evidence to hear the parties and consider those matters so long as there is no denial of natural justice. This does not arise here since the applicant was afforded sufficient opportunity to counter the opponent’s submissions regarding the fair basing of claim 24.
In Lockwood the High Court said that the words “fairly based” in section 40(3) refer to a relationship between what is claimed in the claims and what is described in the body of the specification. The court emphasised that in assessing whether the invention claimed is fairly based, it is necessary to take into account the construction of the specification as a whole. Thus at [99]:
“… the correct position is that a claim based on what has been cast in the form of a consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.”
Claim 24 speaks of an aperture formed in the bridge of the primary frame that constitutes a first connector, and a second connector secured to the bridge of the auxiliary frame for engaging within the aperture of the primary frame. Mr Noonan said that this engagement was separate to the magnetic engagement between the primary and auxiliary frames spoken of earlier by claim 24 which was contrary to the embodiment described with reference to fig 7.
The terms of claim 24 are substantially reproduced in a consistory clause at page 1B of the specification, but in considering whether this coincidence of language is reflected by the specification as a whole, I note that the description of the embodiment of fig 7 simply states that
“The magnetic member 24 may be extended downward from the [auxiliary frame] middle bridge member 21 for engaging with a hole 131 of the [primary frame] middle bridge member.”
As can be seen, the description does not expressly state whether the engagement of member 24 with hole 131 is magnetic in nature.
The High Court in Lockwood noted that the comparison which section 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement, and it is therefore wrong to employ “an over meticulous verbal analysis”. Accordingly, as was said in Populin v HBNominees Pty Ltd 41 ALR 471 at 476-477, the complete specification must not be read in the abstract but should be construed by adopting a common sense approach to what the words used convey. The facts in Catnic are illustrative of this situation, and the remarks of Lord Diplock at 242-243 as to a “purposive” rather than a “purely literal” construction may be understood in that light.
When construed in this way the specification as a whole leaves the definite impression that, so far as is relevant to the question of fair basing, the only form of engagement between the primary and auxiliary frames it contemplates is magnetic. This it is said is achieved by providing a magnetic or magnetisable connector member at the bridge area of each frame. In figs 2 to 4 these are respectively shown as connector members 14 and 24. Alternatively, only one of the connector members need be a magnet in which case the other connector member could be composed of magnetically attractive material such as magnetic iron. Thus, as clearly explained at page 3 of the specification, where the auxiliary frame is provided with a magnetic connector, the bridge of the primary frame is made from magnetically attractive material “such that … the auxiliary spectacle frame 20 may also be easily attached to the primary spectacle frame 10”. It is therefore apparent that in this instance the bridge itself assumes the role of the primary frame “connector member”.
In my view the embodiment of fig 7 envisages such an arrangement since this is the only logical reason why the engagement of the primary and auxiliary frames in accordance with that embodiment is, as is the case with the embodiments of figs 2 to 4, reliant on the inclusion of magnetic member 24 on the auxiliary frame.
This leaves me to determine whether the consistory clause corresponding to claim 24 is wider than the specification read as a whole. The consistory clause is as follows:
“Still further according to the invention, there is provided 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, the bridge of the primary frame further including a first connector, wherein the first connector is an aperture and the bridge of the auxiliary frame extends above the bridge of the primary frame which thereby provides underlying support for the auxiliary frame and magnetically engages the primary frame so as to allow the auxiliary frame to be secured to the primary frame with only one hand by a user, wherein a second connector is secured to the bridge of the auxiliary frame for engaging within the aperture of the primary frame.”
The wording employed by the consistory clause raises some difficulties with construction particularly as, in contrast to the body of the specification, there is no explicit description of a magnetic connector secured to the bridge of the auxiliary frame. However, it is clear enough from the consistory clause that the solution proposed by the invention it describes is dependent upon magnetic engagement between the primary and auxiliary frames at their bridges. This is precisely where the first and second connectors are located, and I therefore consider that as a matter of common sense assessment the magnetic engagement between the frames is, consistent with the embodiment described with reference to fig 7, effected by engaging the second connector within the aperture constituting the first connector.
I consequently find that the consistory clause is supported by the specification as a whole, with the result that claim 24 is fairly based.
CONCLUSION
I have found that the opponent has not satisfied the onus it bears of establishing to the necessary degree of certainty that the claimed invention does not involve an inventive step. I have also found in following the approach of the High Court in Lockwood that claim 24 is fairly based on the matter described in the specification. As these were the only grounds relied on, I dismiss the opposition.

Accordingly, I direct that the application proceed to sealing after twenty-eight (28) days from the date of this decision. If the Commissioner is served with a notice of appeal against this decision before that time, I direct that sealing not occur until the appeal has been decided or is discontinued.
COSTS
The power of the Commissioner to award costs is discretionary, so I must take account of all relevant circumstances.
In the present case the opponent has been unsuccessful on all grounds, and the usual practice in these circumstances is for costs to follow the event. However, the applicant amended the specification after the service of evidence in support which in my view is a prima facie acknowledgement of the validity of the opposition at that time. Mr Fitzgerald submitted that the opponent was not as a consequence entitled to an award of costs up to and including the date of advertisement of allowance of the amendments in view of the manner in which it had conducted its case. Specifically, he noted that the opponent had abandoned a number of grounds of opposition at the hearing, while its attack on claim 24 was completely new.
I agree with this submission. The function of the statement of grounds and particulars is to give the applicant fair notice of the case to be met, and thus in preparing a defence to the opposition the applicant would normally assume that all issues set out in the statement of grounds and particulars would be pursued by the opponent at the hearing. The conduct of the opponent here in abandoning the majority of those issues, and raising the new issue of fair basing, at the hearing has therefore imposed considerable inconvenience on the applicant as well as the Commissioner who is charged with the orderly conduct of proceedings brought before her.
In these circumstances I do not believe the opponent is entitled to any award of costs. As a consequence, I award costs in accordance with schedule 8 against the opponent and in favour of the applicant.
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Davies Collison Cave, Melbourne
Patent attorneys for the opponent: Freehills Carter Smith Beadle, Melbourne