Dennison Manufacturing Company v Monarch Marking Systems Inc

[1984] APO 21

In the Matter of the Patents Act 1952

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In the Matter of Application No. 496414 for a Patent by DENNISON MANUFACTURING COMPANY

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In the Matter of Opposition thereto by MONARCH MARKING SYSTEMS INC.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 496414 by DENNISON MANUFACTURING COMPANY (DENNISON) is for a patent for an invention entitled FASTENER ATTACHMENT APPARATUS.  The application was lodged on 30 March, 1976 and was advertised as accepted in the Official Journal of 12 October, 1978.  The application is a separate applic‑
ation made by virtue of section 49A(1) in respect of an invention disclosed in application 471689 which claims priority from US application 29564 lodged on 17 April, 1970.  A Notice of Opposition to the grant of the patent was lodged on 9 April, 1979 by MONARCH MARKING SYSTEMS (MONARCH).
         After service of the evidence in support Dennison lodged a request under section 77 proposing to restrict the ambit of the claims.  In due course the proposed amendments were accepted and the request advertised.
         Monarch lodged Notice of Opposition under section 82 and the matter came to hearing on 11 November, 1983.  The hearing officer rejected the section 77 amendments in total, mainly on the basis of non‑compliance with section 78(1).

The opposition under section 59 came to hearing in Canberra on 25 September, 1984.  Mr. J. Terry, patent attorney of Griffith, Hassel & Frazer, Sydney, represented the applicant and Mr. A.W. Cowie, patent attorney of Cowie, Thomson & Carter, Melbourne represented the opponent.  Immediately prior to the commencement of the hearing Mr. Terry lodged a section 77 request proposing to amend the claims in a fashion similar to the proposals made in relation to the first request, but taking account of the hearing officer's findings.  I proposed that submissions be made in relation to the claims accompanying this latest section 77 request, and as both Mr. Cowie and Mr. Terry were in agreement, the hearing proceeding on this basis.
         The grounds of opposition relied on by Mr. Cowie related to prior publication, lack of novelty, obviousness and non‑compliance with section 40.
The Specification
         The description of the invention has been adequately dealt with in the earlier decision of the hearing officer to which I have already referred.  Consequently, I will go direct to the claims.
         Claim 1 as accepted reads:

"An apparatus for utilizing plural assemblies of fastener attachments in which the individual attachments are secured by a neck to an assembly rod, said apparatus comprising

a plunger at least partially movable along guide means provided in the apparatus,

said plunger having an end for pushing said fastener attachments,

feeding means for bringing each of an assembly of fastener attachments, one at a time into position to be pushed by said plunger,

and means movable with the plunger to cause operation of the feeding means."

Claims 1, 7 and 8 in their most recently proposed form read:

"1.An apparatus for utilizing plural assemblies of fastener attachments in which the individual attachments are secured by a neck to an assembly rod, said apparatus comprising ‑

(a)a plunger at least partially movable along a guide structure and the plunger being arranged for advancing said attachments which are to be inserted into an object,

(b)guide means comprising a portion for penetrating the object and guiding the fastener attachment into the object,

(c)said plunger having an end for pushing said fastener attachments into guided relationship with the guide means,

(d)feeding means for bringing each of an assembly of said fastener attachments, one at a time, into position to be pushed by said plunger, and

(e)fluid actuated means for moving the plunger from an initial position for pushing the fastener attachment into and along the guide means when the penetrating portion is disposed for guiding the fastener attachment through the object, and means for returning the plunger to its initial position, and

(f)means movable with the plunger for actuating the feeding means in suitable synchronisation with the plunger.

7.An apparatus as claimed in any one of the preceding claims wherein said penetrating portion is mounted on a slider on one side of the object and fixed guide means for initially receiving the fastener attachment are located on the other side of the object.

8.An apparatus as claimed in claim 7, wherein said slider actuates the plunger in synchronisation with operation of the slider."

Anticipation
         Claim 1 as accepted is in my view anticipated by two US Patents cited by the opponent as follows:

(i)US 3185367 (RIEGER et al), disclosing a semi‑automatic gun for applying fasteners which secure price tags; i.e. a plunger, at least partially movable along guide means provided in the apparatus, and which has an end for pushing the fastener attachments is disclosed by the plunger 34 having a forward end 65 and the attached drive rod 74 shown in figure 4 of the drawings;

feeding means for bringing each of an assembly of fastener attachments, one at a time into position to be pushed by the plunger can be seen in item 45 figures 2, 17 and 18.

means movable with the plunger to cause operation of the feeding means are disclosed by item 78 on the plunger shown in figure 9, which acts on the mechanism shown in figures 12 and 13 to stretch a spring which on recovery causes the feeding means to operate (see column 5 lines 11 to 22 of the description);

(ii)US 3103666 (BONE) disclosing a tag attaching apparatus having (a) a plunger (86) having a driving rod (88) for pushing fastener attachments, (b) feeding means (50) and (c) means movable with the plunger to cause operation of the feed means (90, 42 and 60 in combination, see figures 6 and 7);  the flexible strip (90) is curved in cross‑section to withstand axial compression without buckling and so flexible strip (60) acts as a pawl on the feed wheel (50), flexible strip (60) being "movable with plunger" (86).

Turning to the proposed amended claims, Mr. Cowie submitted that US 3185367 (PHH2) disclosed all the features of claim 1 excepting feature (b) and the fluid actuated means of feature (e).  Concerning the latter he submitted that fluid actuation was a mere known substitution for the hand actuation as disclosed in the cited document.  Concerning the former he contended that guide means were constituted by the blunt nozzle 51 (see e.g. Fig. 3) through which a pointed fastener would be inserted into the merchandise, and on the basis of the citations needles were well known alternatives to the nozzle.  Mr. Terry responded by saying that the citations were not satisfactory evidence of general common knowledge and it was not allowable to mosaic disclosures therefrom.  In this matter I agree entirely with Mr. Terry.  There is no evidence on file to the effect that substitution of the nozzle feeder by a needle feeder for the fasteners is a matter of common knowledge, and in respect of this feature I find that claim 1 is distinctly different from the apparatus disclosed in US 3185367, which is therefore not a valid citation.
         In my view, however, the features of proposed claim 1 are disclosed in US 3103666 (PHH3) as follows:

feature (a) is disclosed by a cylinder (86) in a bore in one handle of a pliers like hand tool ‑ when the plunger advances a fastener can be inserted into an object;

feature (b) is disclosed by a pointed slotted hollow needle (38) which can open up a hole through fabric and provide a passageway for an end of the fastener to pass through;

feature (c) is disclosed by a driving rod (88) which pushes one end of the fastener through the needle;

feature (d) is disclosed by a toothed wheel (50) which feeds fasteners one at a time into position to be pushed by the plunger;

feature (e) is disclosed in part by spring (98) which returns the plunger; the driving forward of the plunger follows as a consequence of clenching a hand on the handles of the apparatus; a flexible band curved to resist buckling in compression is the drive element that compresses spring (98) and pushes the fastener along the needle;

feature (f) is disclosed by item (60) which activates the feedwheel (50) as it moves when the handle (42) moves to the unclenched position driven by spring (98) and axial compression resisting tape (90).

Thus the only feature not fully disclosed is feature (e).  However, claim 1, in feature (e), relative to the citation, specifies "fluid actuated means" as a mere substitution for manual operation of the equivalent parts of the apparatus of the latter.  In my view such mere substitution of a known power means for manual means cannot contribute novelty.
         Accordingly, I determine that claim 1 as presently proposed is anticipated by US 3103666 (PHH3).
Obviousness
         Mr. Cowie made a number of submissions under this heading which I do not find it necessary to detail.
         Mr. Terry in response drew my attention to the law set out in Minnesota Mining and Manufacturing Co. & 3M Australia Pty. Ltd. v. Bieirsdorf Ltd. 29 ALJR page 29 and Graham Hart Pty. Ltd. v. S.W. Hart Pty. Ltd. 52 ALJR at page 279, i.e. that evidence in support of the objection of obviousness has to come from common general knowledge in the art in Australia.  He pointed out that this was not the situation in the present opposition as the two citations on which Mr. Cowie relied were US patent specifications not demonstrably falling within the required category.
         I agree entirely with Mr. Terry's submissions on this matter, and will say no more on it.
Section 40
         Mr. Terry in analysing the specification and claims as proposed to be amended submitted that proposed claim 1 encompassed two embodiments.  The feature (b) in one instance was a pointed, slotted, hollow needle that would open up a hole through an object; in the other it was a slender rod with a gripping recess at its end, the rod being slender enough to pass through a pre‑
existing hole.  Mr. Cowie however contended that in spite of appended claims 7 and 8 it was not clear that the guide means of feature (b) would have "a portion for penetrating the object" if they merely had "a portion for passing through a hole in the object".
         At this stage I find myself in agreement with Mr. Terry on this point, however I note that these claims as yet are only proposed to be amended and the question of section 40 is one aspect that will be considered when the section 77 request is examined under the terms of section 79 of the Act.
Conclusion
         I have found that the opponent's exhibits PHH2 and PHH3 anticipate claim 1 (at least) in the form in which it was accepted, and that exhibit PHH3 also anticipates claim 1 in the form in which it was proposed immediately prior to the hearing.  Consequently I uphold the opposition, and award costs against the applicant.
         As I am satisfied that there is patentable matter in the application in suit, I direct the applicant to lodge amendments to my satisfaction within 60 days of the date of this decision.  It seems to me that this might best be done by amending the statement of amendments lodged on 25 September, 1984.  Finally, as I pointed out at the hearing and above, that statement of amendments is yet to be considered under the terms of section 79 of the Act.

(J.L. ROVETA)