DAP Enterprises Pty Ltd v Roberts Designs Pty Ltd & Vagero Pty Ltd

[1998] APO 25

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 670386 in the name of DAP ENTERPRISES PTY LTD

Title:          Bathroom and/or Laundry Accessory

Action: Opposition under sec. 59 of the Patents Act 1990 by ROBERTS DESIGNS PTY LTD and VAGERO PTY LTD

Decision:          Issued            .

Abstract

The opposition was upheld on the ground that the invention is not novel and does not involve an inventive step in light of a single item of prior art.  The main issue centred around the question of whether a shelf which was nominally a grip was, for novelty and inventive step purposes, equivalent to a shelf which was nominally a shield for protecting something beneath it from falling water.

The grounds that the specification did not comply with section 40 and that the application was not in respect of a manner of new manufacture were not upheld. The implications of the decision of the High Court in Advanced Building Systems and Anor v Ramset Fasteners were considered.

A request that some of the evidence in reply be ruled inadmissible was refused.

Costs awarded against the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 670386 by DAP Enterprises Pty Ltd, and an opposition thereto by Roberts Designs Pty Ltd and Vagero Pty Ltd under section 59 of the Patents Act 1990.

background

Patent Application 670386 was filed on 11 August 1994 by DAP Enterprises Pty Ltd as application 70228/94, and associated with Provisional Application PM 0574 filed on 11 August 1993.  Application 70228/94 was advertised accepted on 11 July 1996 and given the six-figure number 670386.

A joint notice of opposition to application 670386 was filed on 11 October 1996 by Roberts Designs Pty Ltd and Vagero Pty Ltd.  All evidentiary stages were completed, with just one minor extension of time, by 10 October 1997.

The statement of grounds and particulars lists four grounds of opposition: non-compliance with paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40 of the Patents Act.

The matter was heard on 9 February 1998 in Melbourne.  The applicant was represented by Mr James Samargis of counsel, assisted by Mr Brendan Nugent, patent attorney of the firm Griffith Hack, Melbourne, and the opponents were represented by Mr Gary Nock, patent attorney of the firm Carter, Smith & Beadle, Melbourne.  Also present at the hearing were principals of both parties.

THE SPECIFICATION

The invention is not a complex one, either in concept or realisation.  In essence it takes a well known soap holder, such as is commonly found affixed in bathrooms and laundries to a vertical support such as a wall, and adds a shelf located over the soap holder, the shelf and soap dish being united by an integrally-formed backing means.  As described the invention consists of only one other essential feature, being the function of the shelf, namely:

“to substantially protect a bar or bars of soap in the soap-holder means from water falling from above the accessory”.

That is to say, as well as functioning as a shelf the shelf means cooperates with the soap holder to reduce the occurrence of “soggy soap” in soap stored on the soap holder in such environments as bathroom showers.

The specification concludes with 10 claims of which only claim 1 is independent. The claims read as follows:

“1.     A bathroom and/or laundry accessory which comprises:

(a)a soap-holder means adapted to support and/or contain at least one bar of soap, the soap-holder means further being adapted to drain excess water from the soap;

(b)a shelf means positioned substantially above the soap-holder means and integral with the soap-holder means, the shelf means being adapted to substantially protect a bar or bars of soap from water falling from above the accessory and adapted to retain items such as containers of toiletries; and

(c)a backing means for the soap-holder and the shelf means.

2.An accessory as claimed in claim 1, wherein the soap-holder means is concave with the opening upwards.

3.     An accessory as claimed in claim 1, wherein the soap-holder means is generally flat.

4.An accessory as claimed in any one of claims 1 to 3, wherein drainage is accomplished by means selected from:

(a)a drainage hole or holes

(b)generally parallel, upstanding ridges on the upper surface of the soap-holder means; and

(c)a combination of (a) and (b).

5.An accessory as claimed in any one of claims 1 to 4, wherein the shelf means is so sized and positioned that a projection downwards would extend across the entire soap-holder means.

6.An accessory as claimed in any one of claims 1 to 5, wherein the shelf means is supplied with an upstanding rim around the circumference of the shelf to prevent items such as containers of toiletry falling off the shelf means.

7.An accessory as claimed in any one of claims 1 to 6, wherein drainage of the shelf means is accomplished by means selected from:

(a)a drainage hole or holes

(b)generally parallel, upstanding ridges on the upper surface of the soap-holder means; and

(c)(a) holes or (a) gap(s) in the upstanding rim; and

(d)a combination of (a) (b) and/or (c).

8.An accessory as claimed in any one of claims 1 to 7, wherein the backing means is a tile which may be incorporated into an array of tiles.

9.An accessory as claimed in any one of claims 1 to 7, wherein the backing means is an adhesively backed plate means which may be attached to a waterproof building surface.

10.An accessory as claimed in claim 1 substantially as described with reference to the accompanying drawings.

It will be noted that the invention as claimed contains a further functional limitation over that described in the body of the specification, namely, that the shelf is “adapted to retain items such as containers of toiletries”.

The evidence

The evidence in support consists of the following statutory declarations:

·a declaration by Mr Nock, introducing into evidence copies of an Australian Design Registration 65945, United States Patents 4,300,248, 4,548,572 and 4,709,248, an advertisement from the Australian Hardware Journal of December 1991 for a device referred to as an “Award Corner Mounted Shower Tidy” as well as an advertising brochure for the same, and an advertising brochure and packaging for a device referred to as a “Trend Shower Caddy”

·identical declarations by John Renato Phillip Casanola and Donald Andrew Bolton, whose companies are distributors of bathroom and laundry accessories; included as exhibits to the declarations are three advertising brochures by one of the opponent companies, and, according to the declarations, all were published to the declarant, with one particular soap holder (referred to hereafter as “Model No. 123”) shown in the brochures having been bought and on-sold by the declarants

·a declaration by John Lewis Lubben, Managing Director of Vagero Pty Ltd, one of the opponent companies; in this declaration Mr Lubben professes to be well aware of the common general knowledge in the art of the present invention and then goes on to give his views on the opposed specification and its novelty and inventiveness over the prior art in evidence, particularly the Model No. 123 device (supra).

The evidence in answer consists of:

·a declaration by Bryan George Putt, which is in the nature of expert evidence; Mr Putt gives the results of tests carried out on a prototype of the present invention and on the Model No. 123 device to determine their capability of protecting soap in the soap holder from water emitted from a shower rose, and as well he comments upon the relevance of the Award Corner Mounted Shower Tidy and the Trend Shower Caddy (supra) to the present invention.

·a declaration by Mr Nugent which consists of argument in rebuttal of the evidence by Mr Lubben, followed by discussion of the various items of prior art cited in the evidence of Mr Nock (supra).

The evidence in reply is the following:

·a further statutory declaration by Mr Nock, in which he gives details of tests of a similar nature to those described in the Putt declaration (supra) which he carried out on a sample of a soap dish of the present invention substantially identical to the one set forth in the Putt declaration

·a statutory declaration by Fred E. W. Mills, a tile merchant who professes to be fully aware of the common general knowledge in the tiling and laundry/bathroom accessories fields; Mr Mills responds to various points in the Nugent and Putt declarations regarding the present invention and the Model No. 123 device and attempts to establish inconsistencies in the declarations regarding the protective effect which must be afforded by the shelf means of the present invention;  Mr Mills states that the Model No. 123 device is common general knowledge “from which it would be immediately obvious to derive the subject matter of the opposed application”; as well, the declaration discusses the relevance of the Award Corner Mounted Shower Tidy and the Trend Shower Caddy (supra) as prior art

·a further declaration by John Lewis Lubben in which he disputes certain of the evidence contained in the Putt declaration, namely, evidence relating to the relative positioning viewed from above of the soap dish and the shelf in the Model No. 123 device, and also evidence concerning water flow through the hole provided in the shelf to drain away water which settles on the shelf.

The hearing

Mr Nock firstly drew my attention to the rules of construction applying to patent specifications, referring to the decision of the Full Federal Court in Decor Corporation Pty Ltd v Dart Industries Inc, 13 IPR 385. In particular, Mr Nock cited the important principles from this decision, as they apply to the present case, as being:

1) The claims must be construed according to their terms upon ordinary principles.

2) If an expression is not clear or it is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words in the claim.

3) A patent specification should be given a purposive construction rather than a purely literal one.

4) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid.

He went on to note that the classic requirement for clarity of the claims per Section 40(3) of the Patents Act 1990 is that the claims define clearly and with precision the monopoly claimed so that the exact boundaries may be known - Electric and Musical Industries Ltd v Lissen Ltd, (1938) 56 RPC 23 at 39, and Australian Solar Mesh Sales v Tomlin Industries, 21 IPR 447.

Mr Nock then proceeded to analyse claim 1.  Claim 1, he said, had three “identifiable” features, by which I took him to mean structural integers.  These were the soap holder means, the shelf means and the backing means.  As well, he continued, claim 1 also contains some functional language.  The soap holder is adapted to support and/or contain at least one bar of soap, which, according to Mr Nock “would appear to be a basic requirement of any soap holder means”.  The soap holder means is also adapted to drain excess water from the soap.  The provision of a drainage hole and upstanding ridges for this purpose was, asserted Mr Nock, common general knowledge.  The shelf means is adapted to substantially protect bars of soap in the soap holder from water falling from above the accessory.  Mr Nock contended that the use of the word “substantially” to qualify the word “protect” led to a lack of clarity, in that it is not clear what degree of protection has to be afforded by the shelf in order to be within the scope of the claim.

Some of the applicant’s evidence seems to take the line that by the expression “substantially protect” was meant that any water was prevented from striking soap positioned on the soap dish (although later in the hearing Mr Samargis indicated that the applicant would not be arguing that approach). Mr Nock urged that this interpretation be rejected, or otherwise the specification would contravene section 40(2) of the Patents Act by not describing the best method of performing the invention, as the means for achieving the prevention of all water from entering the soap holder had not been described.

However, Mr Nock contended that if I construed the expression “substantially protects a bar or bars of soap from water falling from above” as only requiring that some of the water be deflected by the shelf means, then “the term is hopelessly unclear.”  This was on the basis that the claim did not enable a potential infringer to know what it could or could not do with any certainty (Martin v Scribal Pty Ltd, 92 CLR 17 and Cleveland Graphite Bronze Co Ltd v Glacier Metal CoLtd, (1949) 66 RPC 157 at 174).

As a final issue of clarity, Mr Nock submitted that the phrase “substantially above” in claim 1 is unclear, as either the shelf means must be above the soap holder means or not above the soap holder means, it cannot be just “substantially above”.

In relation to novelty, Mr Nock addressed all his submissions to the Model No. 123 device, although he invited me to consider all the documents in the evidence in reaching my decision in regard to novelty.

Mr Nock began by arguing that the evidence established that the Model No. 123 device was in the public domain before the earliest priority date of the present claims - a point which the applicant conceded when it came to give its submissions.  The Model No. 123 device comprises a conventional soap dish with a horizontal protrusion above it, which, from what is stated in the brochure, is intended to function as a grip.  According to Mr Nock, the Model No. 123 device disclosed all the features of claim 1 of the opposed application, and, based on the reverse infringement test, was an anticipation.  He said that if, contrary to his earlier submissions, I found that “substantially protect” has a definite meaning, then that meaning has to be that only some of the water falling from above the accessory is deflected by the shelf, and it was self-evident that the Model No. 123 device will achieve that requirement.

In relation to inventive step, Mr Nock submitted that the Model No. 123 device, in terms of section 7(3) of the Patents Act 1990, was information that the person skilled in the art could reasonably be expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area, and this was also later conceded by the applicant.  It was Mr Nock’s further contention that, even if the Model No. 123 device did not fall into this category of information, “it would be immediately apparent” to manipulate the dimensions of the shelf in the Model No. 123 device to more effectively protect soap on the soap holder or operate as a storage means.

Mr Nock also submitted that the invention could not be considered to be a new combination.  The combination of the soap holder and the shelf were already known from the Model No. 123 device, and the courts have already found that there is clearly a distinction between a new combination and an improvement in one integer of an old combination, as in May v Higgins, 21 CLR 119, Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc, 26 IPR 565, and Winner v Ammar Holdings Pty Ltd, (1993) AIPC 90-971. He concluded with the following:

“In the present case, the key question on inventiveness may be rephrased as saying the critical question is whether the decision to make the shelf of the combination soap holder with shelf of the BFD Model No. 123 a bit larger or a bit lower involved an inventive step.  It is our submission that this modification to the BFD Model No. 123 was so obvious that it would at once occur to anyone acquainted with the subject and desirous of accomplishing the end.  (Allsop Inc & anor v Bintang Ltd & Others, (1989) AIPC 90-615). Indeed, to adopt the words taken from Edison Bell v Smith, (1894) 11 RPC 389, the modification is so easy that any fool could do it. It follows then that the claimed invention is obvious and does not involve an inventive step.”

As regards “manner of manufacture”, much of the opponents’ case upon that ground relied on the decision of the Full Court of the Federal Court in Ramset Fasteners Australia Pty Ltd v Advanced Building Systems Pty Ltd, 34 IPR 256. However, that decision was overturned by a decision of the High Court brought down on 26 March 1998, as a result of which what had been argued by Mr Nock on the basis of the Federal Court decision no longer applied.

Another approach taken by Mr Nock in respect of manner of manufacture was that the invention was not a patentable combination, since the alleged working interrelationship between the integers of the combination (here I presume Mr Nock was assuming that there were new integers involved, in contrast to his earlier submissions on inventive step), did not in fact exist.  The basis for this assertion was that the shelf did not meet the requirement of protecting a bar of soap from becoming soggy.

In relation to the appended claims, claims 2 and 8 were said to define features which were present in the Model No. 123 device, while the remainder of the claims were said to be lacking in inventive merit.

Mr Samargis began his case by drawing my attention to the fact that the Model No. 123 device did not disclose a shelf as such in combination with the soap dish, but rather a grip or a flange.  He stated:

“If a grip is to operate as a grip, it can’t operate as a shelf, because if anything is sitting on a shelf when you seek to use it as a grip, it will be dislodged, or you will simply not use it as a grip.  The brochure [pertaining to the Model No. 123 device] describes a number of items, including footrests, rails, soap holders, toothbrush holders and shelves.  There is no suggestion from the brochure that a grip is a shelf, and similarly you wouldn’t regard a footrest as a shelf.

Moving on from that position, even from the point of view of obviousness you have a patentable invention, because you have two new features coming together which haven’t been put together before, and you have more than a collocation because you have a definite working interrelationship because it is stated in the complete specification that the shelf has to be so configured that it substantially protects the soap in the soap holder.  It is not that we have said any shelf will do - the soap holder has to be configured so as to provide a benefit.  That is an extra component to consider, along with an assertion that putting the shelf with the soap holder is a new combination and is not obvious.”

Mr Samargis went to contend that the term “protect” is adequately explained in the specification, and that it was clear from the specification that the invention did not provide total protection from soggy soap.  Rather, the indication in the specification that preferably the shelf projects over the whole of the soap dish is a clear enough indication of how the substantial protection of bars of soap is to occur.

Mr Samargis dismissed the opponents’ allegation that the best method of performing the invention had not been given, saying that the sizing, relative positioning and orientation would be obvious, given the standard sizes in which tiles come, the need to be able to insert one’s hand between the shelf and the soap dish to retrieve the soap, and the need to protect against egress of water onto the soap dish.

At the heart of the dispute, argued Mr Samargis, was whether the invention was novel and inventive. He said that regarding scintilla of invention we may look at secondary factors, such as sales of the prior art alleged to anticipate the invention in suit.  These, he inferred from the evidence, had not been large.

At this point Mr Samargis sought to adduce evidence of the success of the applicant’s product.  Mr Nock objected to this evidence being admitted, and I directed that the applicant would have to comply with the formal requirements for adducing further evidence.  Nothing has eventuated.

While Mr Samargis was prepared to concede that the Model No. 123 device had been made available to the public and that a person skilled in the art could be reasonably expected to have ascertained, understood and regarded it as relevant to work in the relevant art in the patent area, he was not prepared to concede that it was common general knowledge.  In any event this, as I understand it, did not form part of the opponents’ case.

Mr Samargis was also prepared to concede that none of the appended claims “bring forward extra novelty to the determination”, with the possible exception of claim 5.  However, he maintained that the limitation in claim 5 is not required in claim 1, because the words “substantially protect” in claim 1 are referrable back to the specification.

As his final point, Mr Samargis challenged the admissibility of the evidence in reply, claiming it raised new issues, and referring me to Global Lightning Technologies v Raychem Limited Pty Ltd, 36 IPR 572.  In the present case, he submitted, the evidence raises new matters when it seeks to test the performance of the invention claimed.
In response, Mr Nock stated that if an article is functioning as a shelf, it is clearly a shelf.  He disputed Mr Samargis’s claim that the grip of the Model No. 123 device cannot function as a shelf because the things on top would be dislodged, especially as the grip in question is an under shelf cavity.  Regarding the clarity of the expression “substantially protects”, he drew my attention to the decision in Colgate-Palmolive Co and another v Cussons Pty Ltd, 26 IPR 311, in which it was held that the expression “70% of clean dry sand” is of uncertain meaning if it does not specify the type of sand to be used.

On the interaction of claim 5 with claim 1, Mr Nock asserted that the subject matter of claim 5 does not in any way appear in claim 1. He observed that the feature defined in claim 1 is described as being “preferred” in the body of the specification, and hence claim 1 includes the construction where the projection of the shelf means does not extend across the soap holder means.

Mr Nock noted that so-called “secondary factors” do not necessarily carry a great deal of weight.  He instanced Elconnex Pty Ltd v Gerard Industries Pty Ltd, (1992) AIPC 90-848. In this case what occurred was that a competitor immediately produced a copy, but the invention was still found to be obvious. He further noted that so far as novelty is concerned sales are irrelevant anyhow, and that in any case the events of interest took place 11 years ago and therefore there are difficulties in obtaining sales figures.

Finally, Mr Nock cited these cases as authorities for the principle of law that there cannot be novelty of purpose: Inglis v Mason, 3 IPR 588, and Molins v Industrial Machinery Co Ltd,
55 RPC 31.

DECISION

Admissibility of the Evidence in Reply

The applicant has challenged the admissibility of some of the evidence in reply as not being strictly in reply.  It is claimed that the evidence raises new matters when it seeks to test the performance of the invention claimed, and that because a lot of the evidence appears addressed to inutility it is not relevant.

The law on evidence in reply is summed up by these quotes from Phipson (The Law of Evidence), 9th edition:

"evidence in reply, whether oral or by affidavit, must as a general rule, be strictly confined to rebutting the defendant's case, and must not merely confirm that of the plaintiff."

and from the judgement by Graham J in Ernest Scragg & Sons Ltd's Application [1972] FSR 219:

"when the onus of proof on all issues is on one party, that party must ordinarily, when presenting his case, adduce all his evidence, and may not, after the close of his opponent's case, seek to adduce additional evidence to strengthen his own case."

See also a Patent Office decision on (inter alia) evidence in reply, Optech International Ltd v Buxton Micrarium Ltd, 28 IPR 649.

I have considered carefully all the evidence in reply, and have concluded the objections raised by the applicant in this regard are totally without foundation.

Considering firstly the second declaration by Mr Lubben and the declaration of Mr Mills, the former is directed entirely to rebuttal of inferences contained in the Putt declaration, while the latter is limited to considering the experimental data contained in the Nugent and Putt declarations and questioning the logic of the conclusions drawn from that data.  I will add that that in my view there seems to have been a good reason for that questioning, and it is noteworthy that at the hearing the applicant itself appeared to back away from some of the assertions which appeared to be made in that evidence.  While a substantial part of these Lubben and Mills declarations consisting of analysis of the evidence could perhaps have been presented as submissions at the hearing, there is nothing amiss with it being placed in declaratory form as part of the evidence in reply.  Indeed, this should be to the applicant’s advantage, by giving them warning of what is to be argued at the hearing.  I consider this evidence to be properly in reply.

The  second Nock declaration is, I gather, where the applicant’s concerns mainly lie.  In his declaration, Mr Putt described and gave the results of experiments he conducted on the Model No. 123 device in order to see how much water entered the soap dish under simulated conditions of actual usage.  However, so far as I can tell, no comparative experiments were carried out on devices said to have been made in accordance with the present invention, although it is clear from Mr Putt’s declaration that he had prototypes of such in his possession.  Mr Nock has, however, done just that, and put the results in as evidence in reply.  This evidence, then, addresses a line of evidence and argument which was injected into this matter by the applicant and which, in my view, could not reasonably have been expected to have been anticipated by the opponents when compiling their evidence in support.  This would seem to be precisely the purpose for which evidence in reply is intended.

I find that the evidence in reply is admissible in its entirety.

Construction of claim 1

It is a prerequisite to determining the grounds of opposition in this matter that I construe the scope of the claims.  The only claim which I believe any issues arise as to its construction is claim 1.  Those issues are threefold:

1. The scope of the term ”shelf means”

The Macquarie Dictionary (second revision) defines “shelf”, apropos the present context, as

“a thin slab of wood or other material fixed horizontally to a wall, or in a frame, for supporting objects; and

“a shelf-like surface or projection; a ledge”.

The Shorter Oxford English Dictionary (third edition) defines “shelf”, apropos the present context, as:

“a slab of wood, etc. fixed in a horizontal position to a wall, or in a frame, to hold books, vessels, ornaments, etc.”; and

“one of the transverse boards in a bookcase, cabinet, or the like”.

The first point to be noted from these definitions is that a “shelf”, being a “slab”, connotes solidness, meaning that, for example, if a stream of water were to impinge upon it that stream would be deflected by the shelf.  The second point is that given the simple purpose to be served by the “slab”, that of providing a support for objects, that purpose would not appear, in any practical sense, to impose any limitation upon the nature of that slab insofar as its dictionary definition is concerned.

2. The meaning of the expression “substantially protect”

I think both  sides were, in the end, agreed that “protect” in this specification was not being used in an absolute sense, but rather in a partial sense.  In any event, that is my reading of the document.  In ordinary usage, the word “protect” allows both possibilities, and hence it is common for it to be qualified one way or the other, as in “total protection” and “partial protection”.  A good deal of evidence was put forward by both parties on this point, but even without that evidence it is obvious that in the environment of a shower recess it is almost a practical impossibility to totally prevent a soap holder from being impacted with water falling from above unless it were to be somehow sealed watertightly.  The clear interpretation of the present specification is that the invention is intended to reduce, rather than eliminate, the amount of water striking the soap holder.

I attach no significance to the term “substantially”.  As Grove J stated in Young v Rosenthal, 1 RPC 29, regarding “substantially”:

“That word to my mind is an utterly and entirely useless word because the law gives it him without using it.”

3. The limiting effect upon the scope of the claim of the integer

“the shelf means being adapted to substantially protect a bar or bars of soap in the soap-holder means from water falling from above the accessory”

As I have previously indicated, this integer was the focus of considerable attention in the evidence and at the hearing.  Having regard to how I have construed “shelf” and “substantially protect”, I fail to see how this feature imposes any substantive limitation upon the scope of the claim at all.  The shelf means is positioned above the soap-holder means and deflects a stream of water impacting upon it.  It would appear a natural outcome of this arrangement that the shelf inherently affords some protection to soap on the soap holder means from water falling from above.

Section 40

The opponents have canvassed several section 40 issues in this matter. It is probable that their primary purpose in this was to draw attention to issues of construction, but in any event I consider the specification does meet the requirements of section 40. Nonetheless, for the sake of completeness I will deal briefly with the points raised by the opponents.

The opponents contend that if the term “substantially protect” is being employed in an absolute sense, the specification lacks sufficiency because it does not disclose how this result is to be achieved. However, as I have found that “substantially protect” is not being employed in an absolute sense, there can be no ensuing section 40 issue.

The opponents also contend that the integer

“the shelf means being adapted to substantially protect a bar or bars of soap in the soap-holder means from water falling from above the accessory”

is unclear, in that it does not give adequate instruction to potential infringers as to what the bounds of the claim are.  I disagree.  As I have already found, when properly construed by reading the specification as a whole this feature may be discounted from being a substantive limitation upon the scope of the claim.  While excess verbosity which has the effect of hindering a facile construing of a claim may be undesirable, it will not be objectionable unless it causes ambiguity in the claim.  I do not perceive this to be the case here.

The expression ”substantially above“ is also said by the opponents to be unclear.  As I have said previously, the word “substantially” is inconsequential.  The degree of uncertainty it suggests would be inferred by the addressee of the specification in its absence, and be capable of being ascribed a definite scope.

I find that the opposed application satisfies all the requirements of section 40 of the Patents Act.

NOVELTY

At the hearing the opponents focussed their attention on one item of prior art in their evidence in support, which was the Model No. 123 device shown in a brochure which was conceded by the applicant to have been published before the priority date of the present claims.  This device bears a very close resemblance to the preferred embodiment of the present invention.  It comprises a ceramic tile with a soap dish located proximate the lower edge of the tile (the orientation of the tile being given by the orientation of the soap dish) which is, for all intents and purpose, the same as the soap dish of the present invention.  Extending proximate the upper edge is a rectangular protrusion which I think the aptest way of describing is “shelf-like”.  This shelf is basically rectangular, but with the outer corners bevelled.  This protrusion is referred to in the brochure as a “grip”.  As I understand it from the hearing, its underside has an indentation which facilitates its use as a grip.

However, also in the evidence in support was a photograph of the Model No. 123 device with a couple of items typically found in a shower recess - a bottle of shampoo and a tube of jelly material - standing upon the (upper surface of the) grip.  I am satisfied that the grip on the Model No. 123 device falls within the scope of the word “shelf”.  Mr Samargis put forward an argument that the grip could not function as a grip and a shelf at the same time.  This may be the case, but does not alter the fact that in terms of its physical configuration it constitutes a shelf.

There are several ways of approaching the question of whether the invention defined by claim 1 is novel in the light of the Model No. 123 device.  All, I believe, lead to the same conclusion, namely, the invention is not novel.

The standard test for novelty is the reverse infringement test which is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 at 235 where Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391).

Comparing claim 1 with the citation, clearly the Model No. 123 device has a  soap-holder means as defined by the claim, and a backing means as defined by the claim.  It also has a shelf means positioned substantially above the soap-holder means.  The fact that the shelf means is “adapted to retain items such as containers of toiletries” is also a characteristic of the Model No. 123 device.  Alternatively, it could also viewed as a non-essential feature since it does not appear in the statement of the invention in the body of the specification.

The only other integer of claim 1 is

“the shelf means being adapted to substantially protect a bar or bars of soap in the soap-holder means from water falling from above the accessory.”

As I have already indicated, this seems to do no more than define an inherent characteristic of the arrangement constituted by the other integers of the claim.  As such, it therefore seems that, in the process of reading the citation on to the claim, placing any significance upon this feature would be unwarranted.  Alternatively, even if one does take account of it for the purpose of the exercise of ascertaining whether the citation discloses each and every one of the essential features of the claim, it seems entirely proper to reason that because the citation discloses the arrangement of the other features of claim 1, that same inherent feature of claim 1 can also be considered as inherent to, and therefore disclosed by, the citation.

At the hearing Mr Nock put forward an argument that the claims are not novel in light of the Model No. 123 device based on the principle of law that there is no “novelty of purpose”.  That is to say, the device as claimed and the device disclosed by the citation are structure-wise indistinguishable.  The only distinguishing characteristic between them is that in the citation the shelf is intended to be used as a grip, while in the claim its function is to retain items for use in bathrooms and laundries and to protect the soap dish from water falling from above.  Mr Nock cited a couple of well known cases as authorities for that principle of law (supra).  I fully agree with Mr Nock on this.  I believe his argument to be soundly based in law and on the facts.  In reality, it is the reverse infringement test in slightly different livery.

Of the appended claims, Mr Samargis conceded that if claim 1 fell, then so did all the appended claims barring claim 5.  Claim 5 limits the extent of the shelf means to being across the entire soap-holder means.  The various photographs of the Model No. 123 device in evidence appear to show that it does not quite extend as far as the soap dish in a direction away from the backing tile.  In his evidence Mr Putt observes that the shelf extends 45mm from the backing tile, whereas the soap dish extends 50mm.  In his second declaration Mr Lubben counters this by saying that, as I understand it, 5mm of the soap dish is a lip and decorative “horns”.  At the hearing Mr Nock stated that, measured from the back face of the backing tile, both the soap dish and the shelf extend 63mm, but no evidence was advanced in support of this assertion. Be all of that as it may, I believe that in the present context claim 5 must be given a purposive construction in order to determine its scope ( per Catnic Components Limited v. Hill & Smith Limited, (1982) RPC 183). The slight variation in the extent of the prior art arrangement compared with that of the shelf of the arrangement defined by claim 5 could not, in the words of Lord Diplock in Catnic Components, have any material effect upon the way the invention worked.  This is clear from the specific characteristics of the described invention.  Therefore, this being the case, the prior art would infringe claim 5, and by virtue of the reverse infringement test (supra), it renders the claim not novel.

Accordingly I find that claims 1 to 10 are not novel in light of the Model No. 123 device.

I will turn briefly now to the other items of prior art put forward in evidence by the opponents in respect to lack of novelty.

1.  Registered Design 65945.  This shows the soap dish and the shelf means as a single continuous shelf.  As the shelf means is not above the soap dish, this does not anticipate the present invention.

2.  United States Patent 4300248.  This comprises a snap-in soap dish liner for insertion into a soap dish recess.  The liner has a top wall, a bottom wall two side walls and an end wall.  The liner is so sized that the top wall protrudes from the recess and shields the soap dish from water falling upon the recess at an angle.  The protruding part of the top wall has an abutment which snap-locks in a conventional handle-washcloth ceramic support.  .This arrangement of the protruding part of the top wall and the handle does not result in a flat upper surface, and therefore does not fall within the scope of the term “shelf”.  The claims are novel in light of this citation.

3.  United States Patent 4548572.  This is an arrangement of two soap dishes one above the other which can be moved towards each other to compress two or more pieces of soap present on the lower shelf together to save soap.  The upper soap dish does constitute a “shelf”, but it is not integral with the lower soap dish, as required by the present claims and hence they are novel in light of this citation.

4.  United States Patent 4709428.  This is a hinged cover for a soap dish, which rotates around a horizontally disposed U-shaped handle located above the dish.  A plug is provided for the interior of the handle to prevent water entering the soap dish by this route.  Because the plug is not, by inference, fixed or integral with the soap holder, it does not fit within the definition of a shelf as set out above.  The claims are novel in light of this citation.

5.  “Shower Tidy”.  This device is largely open at the back, and does not have any structural element which could reasonably be said to constitute “a backing means” such as is defined by the claim.  Also, the opponents have failed to satisfactorily establish a publication date before the priority date of the claims in suit for the particular documents in the evidence relating to the “Shower Tidy”.  Mr Nock was only able to say in his statutory declaration, in relation to the advertisement in evidence regarding the “Shower Tidy”, that “I understand that the Journal was published in December 1991.”  The only reference to 1991 in the journal extract in evidence is a handwritten one. There is insufficient evidence in regard to this citation to warrant a finding of lack of novelty.

6.  “Shower Caddy”.  This device is also largely open at the back, and does not have any structural element which could reasonably be said to constitute “a backing means” such as is defined by the claim.  No evidence of publication is provided, beyond an assertion by Mr Nock in his evidence that “the Trend Shower Caddy has been sold by Peter Fanning and Company Pty Ltd to major retailers such as K-Mart and Big W since the early 1980’s.”  This is insufficient to establish either publication of the brochure and packaging in evidence in relation to this device, or prior user of the device.  The evidence in respect of this citation is not sufficient to establish that the present claims lack of novelty in light of it.

INVENTIVE STEP

I have found that the Model No. 123 device discloses the claimed invention, and the applicant concedes that the Model No. 123 device had been made available to the public and that a person skilled in the art could be reasonably expected to have ascertained, understood and regarded it as relevant to work in the relevant art in the patent area.  It follows therefore that I find the claims lack an inventive step over the Model No. 123 device.

Regarding claim 5, my finding that that claim was not novel was based on a purposive construction of the claim. However, even if a purely literal construction were to be given to the claim, then this claim would still founder for lack of inventive step.  Extending the shelf of the prior art (that is, the Model No. 123 device) to extend across the soap dish is a mere workshop alteration which involves no inventive quality or inventive ingenuity (per Lockhart J in Werner RD & Co v Bailey Aluminium Products Pty Ltd, (1989) 85 ALR 679). A variation over the prior art which is simply a matter of degree does not involve invention. It would be obvious to a person skilled in the art that increasing the degree of protection afforded to the soap dish by the shelf would depend on the extent of the shelf. While it is arguable that some invention lay in recognising the problem of the impact of water upon the soap dish or, once that problem had been realised, in arriving at the solution of providing a shelf above the soap dish, this is of no relevance here as it was already known in the art (the Model No. 123 device) to so provide a shelf.  Once that had been done, no matter for what purpose, the resulting advantage obtained from shielding the soap dish would have been manifestly obvious, as would the imperatives for dimensioning the shelf appropriately.

Nothing in the way of evidence or submissions was put forward by the opponents on the issue of whether the invention in suit lacked an inventive step over Registered Design 65945 and United States Patents 4300248, 4548572 and 4548572.  As I have already observed when considering the novelty of the present claims, these disclosures possess certain differences which, at least so far as novelty is concerned, are substantial.  Those differences also seem to me to be, on the face of it, substantial in an inventive step context.  In opposition proceedings it is generally incumbent upon the opponent to establish its case.  In the absence of any evidence to support the proposition that it would be obvious for a person skilled in the art to combine these citations with the common general knowledge in the art to arrive at the present invention, I must exercise the benefit of my doubt the applicant’s way and find that the opponents have not establish lack of inventive step in light of Registered Design 65945 and United States Patents 4300248, 4548572 and 4548572.

However, the “shower caddy” and the “shower tidy” were the subject of a small amount of evidence from the opponents.  That evidence was by Mr Mills in his evidence in reply.  He states:

“I would also comment that the Trend Shower Caddy includes members connecting all of the shelves together.  These members perform the same function as the “backing means” recited in claim 1 of the opposed application.”

I am inclined to agree with this.  The arrangement shown in the “shower caddy” and the “shower tidy” devices seem to me to be a mere technical equivalent of the present invention, as per paragraph 4.3.3 of Volume 2 of the Australian Patent Office Manual of Practice and Procedure. However, I think that a lack of inventive step allegation based on the “shower caddy” and the “shower tidy” is not sustained on another basis, that being the disclosures on which it is based have to be reasonably expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area. As I have already expressed, I have strong doubts that the opponents have even satisfactorily established that the “shower caddy” and the “shower tidy” devices were public knowledge before the earliest priority date of the present claims, let alone that they could have been reasonably expected to have been “ascertained”, as that expression is held to mean in section 7(3) of the Patents Act 1990.  Therefore I find that the claims of the opposed application do not lack an inventive step in light of the “shower caddy” and the “shower tidy” device.

MANNER OF MANUFACTURE

Mr Nock put forward an argument that the claimed invention was not a manner of manufacture in accordance with section 18(1)(a) of the Patents Act 1990.  This was based primarily on the decision of the Full Court of the Federal Court in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd, 34 IPR 256. This argument relied on the principle set down in the Ramset case that in order to be patentable in accordance with section 18(1)(a) a combination has to have some inventive merit over and above being a valid combination, a valid combination being one in which there is a working interrelationship between its integers producing a new or improved result or an old result in a better way. However, that decision was appealed to the High Court and the Full Bench of the High Court in its decision in Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd [1998] HCA 19, issued 26 March 1998 (that is, after the present matter was heard), upheld the appeal. The High Court rejected the approach taken by the Federal Court. After commenting that:

“[‘merit’] was used sometimes in reference to subject-matter, sometimes in reference to novelty.  The phrase invites error through imprecision of legal analysis”

it concluded:

“In that respect the Full Court [of the Federal Court] was in error in considering under the ground of revocation in sec 100(1)(d) matters that could have arisen under other grounds, namely obviousness and lack of novelty, but which either did not arise or were put to one side”.

Ramset was decided under the Patents Act 1952.  In the case of an opposition under the Patents Act 1990, novelty and inventive step are expressly taken into account, via sec 59(b), in sec 18(b)(i) and (ii). In light of what the High Court has said, I do not consider it is open to me to find that a (valid) combination is not a patentable invention in accordance with sec 18(1)(a) because it lacks inventive merit.

However, the High Court in Ramset did cite with apparent approval the earlier High Court decision in N V Philips’ Gloeilampenfabrieken v Mirabella, (1995) CLR 655. This decision found that the requirement in sec 18(1)(a) that a patentable invention be an invention imported a requirement into Sec 18(1)(a) that “patentable invention” exclude anything which was not, on the face of the specification, a proper subject of letters patent according to traditional principles. So-called “mere collocations of known integers” fall into that category of inventions which traditionally have been regarded as non-patentable (see British Celanese Ltd v Courtaulds Ltd,
52 RPC 171 at pages 193‑194), and so would appear to be precluded from patentability by section 18(1)(a). On the other hand, following Ramset, it would appear that any combination of known integers between which there was a working interrelationship producing a new or improved result or an old result in a better way would be a manner of new manufacture and therefore not unpatentable in that regard.

Now, as well as the “inventive merit” approach, Mr Nock also submitted that the present invention was not a patentable combination because there is no working interrelationship between the soap holder and the shelf means. His line of reasoning proceeded along the path that the working relationship defined by the claim - that of the shelf protecting soap in the soap dish from becoming soggy - did not exist because, as a practical matter, the shelf was not able to so protect the soap.  This is said to be due to the fact that soap on the soap holder will only be made soggy by a cause other than water falling on the soap - in particular, a blocked drain hole in the soap dish.

This argument really seems to go to the utility of the invention. There is no question that there is a working interrelationship between the soap dish and the shelf. It is that the shelf protects the soap on the soap dish from falling water. It is both specifically defined in the claim, as well as being inherent to the dimensioning and juxtapositioning of the soap dish and the shelf. Accordingly I find that the invention is a true combination and a manner of manufacture as required by section 18(1)(a) of the Patents Act 1990.

CONCLUSION

I have found that the grounds of opposition of non-compliance with section 40 and with paragraph 18(1)(a) (manner of manufacture) of the Patents Act1990 have not been established, but I have found that the opponents have been successful in their grounds of opposition of non-compliance with paragraphs 18(1)(b)(i) (novelty) and 18(1)(b)(ii) (inventive step).  Moreover, I am unable to discern any inventive matter whatsoever disclosed in the specification.

I refuse the application.

COSTS

In accordance with the general principle that costs follow the event, I award costs against DAP Enterprises Pty Ltd.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack, Melbourne

Patent attorneys for the opponents   :  Carter Smith & Beadle, Melbourne