Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd
[2019] APO 12
•25 March 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd [2019] APO 12
| Patent Application: | 2011200416 |
| Title: | A child restraint for a vehicle |
| Patent Applicant: | HBG IP Holding Pty Ltd |
| Opponent: | Dorel Australia Pty Ltd |
| Delegate: | Dr V. Z. Kolev |
| Decision Date: | 25 March 2019 |
| Hearing Date: | 28 March 2018, in Sydney, further submissions filed on 14 February 2019 and 1 March 2019 |
Catchwords: | PATENTS – section 59 opposition to grant of a patent – novelty – inventive step – manner of manufacture – full description and best method – regulation 5.23 – subsection 60(3) – fair basis – rearward facing child safety seat including a base unit, a carry cot and a |
| tether – untethered carry cot – opposition successful on the ground of fair basis under subsection 60(3) – all grounds raised by the opponent unsuccessful – regulation 5.23 not invoked – costs not awarded – opportunity to amend | |
| Representation: | Counsel for the applicant: Mr Andrew Fox |
| Patent attorney for the applicant: Ms Kerry Chrysiliou of Chrysiliou |
IP Patent & Trade Mark Attorneys
Observers for the applicant: Mr Richard Horsfall and Mr Anthony
Horsfall
Patent attorney for the opponent: Ms Daneta Crump of FPA Patent
Attorneys Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
| Patent Application: | 2011200416 |
| Title: | A child restraint for a vehicle |
| Patent Applicant: | HBG IP Holding Pty Ltd |
| Date of Decision: | 25 March 2019 |
| DECISION |
Document US 6,439,660 B1 (D1) is not filed in evidence and, for the purposes of deciding the opposition, I will not consult this document under the provisions of regulation 5.23.
The opposition is successful in that claims 1 to 8 (all claims) are not fairly based on the matter described in the specification; however this is the only successful ground of opposition and it was taken into account under the provisions of subsection 60(3). I give HBG IP Holding Pty Ltd two months from the date of this decision to propose amendments in order to overcome the negative finding with respect to fair basis.
All grounds of opposition that were raised by Dorel Australia Pty Ltd are unsuccessful; therefore
I do not make an award of costs.
REASONS FOR DECISION
1. Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a
section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to
Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
Background
2. The matter relates to patent application 2011200416 (the Application) in the name of
HBG IP Holding Pty Ltd (the Applicant). The Application was filed on 01 February 2011 and claims a priority date of 01 February 2010. The Application was advertised as accepted on 11 August 2016. A notice of opposition to grant was filed on 11 November 2016 by Dorel Australia
Pty Ltd (the Opponent).
3. On 18 January 2017, the Applicant filed a request to amend the specification under section
104. The sole purpose of the amendment was to replace in claim 1 the wording “a substantial
horizontal portion” with the wording “a substantially horizontal portion”. The amendment was
allowed unopposed on 15 May 2017.
4. The statement of grounds and particulars (the SGP) was filed on 13 February 2017
together with five documents (D1 to D5) mentioned in the SGP. The evidence in support was filed “Applicant’s Outline of Submissions” (the Applicant’s Summary or AS).
completed on 12 May 2017. The evidence in answer was completed on 16 August 2017.
Evidence in reply was not filed. On 14 March 2018, the Opponent filed “Opponent’s Outline of
5. On 27 March 2018 (the day before the hearing), the Opponent filed a brief letter with the following content (emphasis added):
“It has been suggested that D1 in these proceedings is not formally in evidence. We do not agree but as a precaution request that the Commissioner pursuant to Patent Regulation 5.23, consult Document D1: US 6,439,660 B1 in these proceedings, as it is a document relevant to the proceedings and already available to the patent office.
The document was submitted with the SOGAP [the SGP]. The Applicant is not disadvantaged, as they have had access to this document and referred to it in detail in their Evidence in Answer.
A copy of this letter is being emailed to the Applicant's attorneys.”
I will deal with the issue related to this document later in my decision.
6. I note that the present hearing is with respect to the Application as amended by the
amendments filed on 18 January 2017, and is based on the SGP as filed on 13 February 2017.
Applicable Law and Onus
7. On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
commenced which resulted in significant amendments to the Act and Regulations affecting, inter
alia, the standard of proof required for an opposition to succeed. However, for patent
applications having a request for examination filed before the commencement date of 15 April
2013, the standard of proof remains the one that was in force prior to that commencement date.
According to this standard of proof, it must be established that it is practically certain (or, in other
words, the Commissioner should be clearly satisfied) that the patent if granted would be invalid
(Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742, at [17]; Commissioner of Patents v
Sherman [2008] FCAFC 182, at [18]; F.Hoffman-La Roche AG v New England Biolabs Inc
[2000] FCA 283, at [66-67]).
8. The request for examination with respect to the Application was filed on 12 April 2013,
therefore the above-mentioned standard of proof applies. In addition, the filing date of the
request for examination being before 15 April 2013 also means that the Application was
examined under the Act and Regulations as in force before the amended provisions of the Raising
the Bar Act and the same are also applicable to the present opposition proceedings.
9. It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.
Grounds of Opposition and Evidence
Grounds of opposition
10. The SGP lists and particularises the following as grounds of opposition:
| • | Not a manner of manufacture – paragraph 18(1)(a); |
| • | Lack of novelty – subparagraph 18(1)(b)(i); |
| • | Lack of inventive step – subparagraph 18(1)(b)(ii); |
| • | Claims not clear – subsection 40(3); |
| • | Claims not fairly based – subsection 40(3); and |
| • | The invention not fully described and best method not disclosed – paragraph 40(2)(a). |
11. At the beginning of the hearing, the Applicant requested some clarifications on the exact
that the claimed invention is not novel in light of the common general knowledge. In reply, the
boundaries of the case they have to answer, including with respect to the non-statutory contention and will be addressed during the Opponent’s oral submissions. It appeared to me that, during their oral submissions, the Opponent did not specifically comment in detail on all the grounds listed in the SGP. I asked them to summarise the exact grounds of opposition they are pressing, and based on the Opponent’s explicit oral submissions, the grounds of opposition raised by the Opponent are limited to the following:
| • | Lack of novelty; |
| • | Lack of inventive step; |
| • | Not a manner of manufacture; and |
| • | The invention not fully described and best method not disclosed. |
12. I note that not all of the above grounds are commented on in the Opponent’s Summary,
and I assume that, for those grounds, the Opponent is relying on the SGP and their oral
submissions. I also note that the boundaries of the Opponent’s case were apparently clarified to
the Applicant’s satisfaction as the Applicant did not suggest that they were not sufficiently
informed to enable them to answer the case as presented in the Opponent’s oral submissions.
13. Importantly, the ground of fair basis is no longer pressed by the Opponent. However,
while working on this decision, I realised that my interpretation of the claims could result in the
claims being not fairly based, hence, in deciding the case, I should take into account the ground of
fair basis under the provisions of subsection 60(3). On 31 January 2019, I wrote to both parties
explaining the outcome of my claim construction and inviting further submissions on fair basis:
“Since the issue of fair basis has never been addressed by the parties, both parties are hereby invited to provide any submissions on the issue of fair basis as outlined at items (1) and (2) above. The parties have fourteen (14) days from the date of this letter to file these submissions.”
14. On 14 February 2019, the Opponent filed a letter including the Opponent’s Submissions
on Fair Basis. On the same date, the Applicant requested an extension of time until 28 February
2019 to address the issue. In my correspondence dated 15 February 2019, I decided that:
“I consider the Applicant’s request reasonable in the present circumstances, hence the Applicant is hereby given an extension of time until Friday, 01 March 2019 to file any document(s) they consider relevant to address the concerns explained in my earlier correspondence mentioned above.”
15. On 01 March 2019, the Applicant filed a letter including the Applicant’s Submissions on
Fair Basis. In this letter, the Applicant also asked for my comments on possible not formally proposed amendments, and requested an opportunity to be heard in the event of negative finding on fair basis. In my response dated 12 March 2019, I clarified:
“I note that my concerns with respect to fair basis are raised under subsection
60(3) which mandates:‘The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.’
I can see no reason that the opposition should be decided only on the grounds raised by the Opponent, if this is what the Applicant is indeed suggesting. In addition, I do not think that it is appropriate for me, at this stage, to comment on any possible amendment, even more so in light of the fact that ‘the Applicant does not believe any amendment is necessary’. If ‘any ground on which the grant of a standard patent may be opposed’ is successful, the Applicant will be given an opportunity to propose amendments after the decision is issued if I consider that there is patentable subject matter in the specification.
At item 4, the Applicant requested:
‘In the event that the Delegate maintains the lack of fair basis ground, we
respectfully request an opportunity to be heard.’
I consider that my correspondence dated 31 January 2019 was a provision of such an opportunity under paragraph (a) of subregulation 22.22(2).”
Evidence
16. The evidence in the opposition consists of the following documents:
Evidence in support consisting of:
| • | A declaration by Mr John Bruce Duke dated 27 March 2017 (Duke-1) with exhibits JD-1 to JD-7; and |
| • | A declaration by Mr John Bruce Duke dated 11 May 2017 (Duke-2) with exhibit JD-8. |
Evidence in answer consisting of:
| • | A declaration by Mr Ali Akbarian dated 16 August 2017 (Akbarian) with exhibits ALI-1 to ALI-4; |
| • | A declaration by Ms Kerry Chrysiliou, undated (Chrysiliou) with exhibits KC-1 to KC-9; and |
| • | A declaration by Mr Derek Wainohu, undated (Wainohu) with exhibit DW-1. |
Evidence in reply was not filed.
17. The status of prior art document US 6,439,660 B1 (document D1) mentioned in the
Opponent’s letter of 27 March 2018 as quoted above was also discussed at the beginning of the hearing.
18. I note that indeed document D1 was mentioned in and filed together with the SGP,
however on 14 February 2017, a Delegate issued a letter acknowledging the receipt of the SGP
and explaining the procedure related to the evidence in support (emphasis added):
“Please note that any documents mentioned in the statement of grounds and particulars are not in evidence, even if they have been filed together with the statement. All documents you intend to rely on to establish the grounds of opposition must be filed with the evidence in support. Alternatively, if you have filed documents together with the statement, you may request a direction during the evidence in support period that such documents be treated as evidence in support.”
Despite this clarification, document D1 was neither filed with the evidence in support, nor was a direction as explained above requested during the evidence in support period.
19. Based on the above, at the hearing, I concluded that document D1 is not in evidence and that it can only be introduced into the opposition under the provisions of regulation 5.23. Both parties agreed that they have considered document D1 and have already provided evidence and written submissions with respect to this document. They also stated that they are fully prepared to address the document. The parties agreed that if I decide to introduce document D1 into the
opposition, the conditions of subregulation 5.23(2) would be met and there would be no need for
providing further opportunities for evidence and submissions with respect to this document. I
concluded that I will consider the information contained in the document in light of the parties’
evidence and submissions, and if I decide that the document is likely to change the outcome of
the opposition in a significant way (see Merial Limited v Bayer Intellectual Property GmbH
[2015] APO 16), I will introduce it under regulation 5.23.
The Specification of the Application
20. The specification describes the field of the invention as follows:
“This invention relates to child restraint for a vehicle, and in particular, to a base for a child restraint that removably receives a carriage portion into which the child is located.” (page 1, lines 7-8)
21. The section “Background Art” explains that:
“Various laws and regulations dictate the manner in which infants and children are to be transported in vehicles, especially cars and the like. Most such laws require the infant/child to be restrained in a dedicated and approved child safety seat that is anchored or otherwise secured to a rear seat of the vehicle. The child safety seat may include a dedicated harness that restrains the child in position within the seat, or the child safety seat may utilise the vehicle seat belt or a separate harness to restrain the child therein, depending upon the size and/or age of the child.
As such, there exist a variety and types of child safety seats that are approved for use with children of a variety of ages and/or sizes. Type A seats typically refer to rear facing seats or capsules suitable for accommodating babies/infants up to around 6 months of age and/or 70 cm in length and up to 12 kg. Type B seats typically refer to forward facing seats used to accommodate toddlers and young children from approximately 6 months to 4 years, or from 8 – 18 kg… Some seats may be a combination type A/B or B/E to accommodate a child as the child grows thereby avoiding the need to purchase, or otherwise source, a variety of different seats to accommodate a growing child.” (page 1, line 20 to page 2, line 4)
22. The specification then describes the problem that placing an infant in and removing the
infant from a child safety seat can be distressing to the infant especially if the infant is sleeping, and states that “[c]hild restraints comprising a removable infant carrier secured into a base unit that is in turn fitted to a vehicle seat have previously been proposed for addressing this
problem” (page 2, lines 17-18). These prior art child safety seats “typically comprise a bassinet
or carry cot that is removably received in a base. The base is positioned on a rear seat of the
vehicle such that when received therein, the bassinet or carry cot is located in a rearward facing
manner, with respect to the front of the vehicle” (page 2, lines 19-22).
23. Importantly, “[t]he base is typically shaped such that a tether strap extends around a front-
most portion of the base or carry cot to be secured back to a dedicated anchorage point on the vehicle located behind the vehicle seat” (page 2, lines 22-24). According to the specification:
“One problem with such a prior art arrangement is that the tether strap used to secure the front-most portion of the base or carry cot typically extends across or over the open portion of the base, thereby preventing or significantly impeding removal or placement of the bassinet or carry cot. Hence in order to remove the bassinet or carry cot from the base, it is often necessary to disconnect or loosen the tether strap and then reconnect or tighten the tether strap upon placement of the bassinet or carry cot in the base. Such a requirement is cumbersome and requires significant effort on behalf of the parent or guardian to position/remove the child.
Hence, there is a need to provide a restraint system for a vehicle that provides improved removal/placement of a bassinet or carry cot without requiring significant adjustment to the base unit of the restraint system.” (page 2, line 31 to page 3, line 4)
24. Before describing the invention, the specification makes an explicit disclaimer that:
“The above references to and descriptions of prior proposals or products are not intended to be, and are not to be construed as, statements or admissions of common general knowledge in the art. In particular, the above prior art discussion does not relate to what is commonly or well known by the person skilled in the art, but assists in the understanding of the inventive step of the present invention of which the identification of pertinent prior art proposals is but one part.” (page 3, lines 5-9)
25. The invention is best described with reference to the drawings and I have reproduced the
most illustrative of them. The first embodiment is described with reference to figures 1 to 5. I
have not reproduced figure 1, because it is merely a front view of the same part that is shown in a
perspective view on figure 2.
26. The specification explains:
“Referring firstly to figure 5, a child safety seat 10 according to an embodiment of the present invention is shown in position on a rear-seat 2 of a vehicle. The child safety seat 10 is secured in position on the vehicle seat 2 in a rearward facing manner, typical of a Type-A mode child safety seat, with the vehicle travelling in the direction of arrow A.
The child safety seat 10 comprises a removable carry cot or bassinet 12 that is positioned within a base unit 14 in the manner as shown. When the carry cot 12 is positioned within the base unit 14 it engages with the base unit 14 to be securely retained in position with respect to the vehicle seat 2, as will be described in more detail below. The ability to engage/disengage the carry cot 12 from the base unit 14 provides an ability to readily transport a child from the vehicle without the need to remove the child from the carry cot 12 of the child safety seat 10.” (page 5, lines 6-17)
27. Some other parts of the child safety seat of this embodiment having reference numbers are
described as follows:
13 – a shell of the carry cot;
13a – a base of the shell;
11 – a handle of the carry cot;
15 – a substantially upright portion of the base unit;
16 – a substantially horizontal portion of the base unit;
6 – a seat belt of the vehicle;
20 – a tether system;
22 – a strap member of the tether system;
23 – an adjustment mechanism of the strap member;
24 – a hook member provided at the distal end of the strap member;
4 – an anchorage point on the parcel shelf of the vehicle;
17 – a pair of raised edges extending along lateral sides of the base unit to define sides of
the base unit and an internal portion of the base unit into which the carry cot is received;
18 – slots provided in the raised edges;
25 – a plurality of engagement members formed on the base unit configured to be
received in recesses (not shown) formed in the carry cot so as to lock the carry cot in
position.28. In explaining the operation of the invention, the specification emphasises:
“It will be appreciated that such an arrangement provides for a base unit 14 that is securely anchored in position against the seat 2 of the vehicle at a lower region and at an upper region thereof, utilising both the seat belt 6 and the dedicated vehicle anchorage point 4.
In this arrangement the tether system 20 is configured such that it does not extend over the open region of the base unit 14, thereby providing clear access to the base unit to receive the carry cot 12 therein.” (page 7, lines 7-13)
29. Figure 6 (not reproduced) illustrates what is described as “an alternative arrangement of a
base unit 30 in accordance with the present invention” (page 7, lines 30-31). This alternative
arrangement appears to have, in essence, similar functionality to the base unit 14.
30. The description continues:
“Referring to Figures 7A – 7F [which I have reproduced below] an alternative embodiment of the child safety seat of the present invention is shown. In this embodiment, the carry cot 12 is configured such that it is able to rotate about a central access [sic] through at least 180 degrees to be used in a rearward facing manner, as shown in Fig 7D and a forward facing manner, as shown in Fig 7F.” (page 8, lines 18-22, emphasis added)
31. The specification ends with 8 claims. Claim 1 is the only independent claim and it is
reproduced below:
“1. A rearward facing child safety seat for a vehicle comprising:
a base unit configured to be positioned on a vehicle seat, the base unit having a
substantially vertical portion and a substantially horizontal portion;
a tether connectable to the substantially vertical portion and configured to extendtherefrom to a vehicle anchorage point; and
an untethered carry cot removeably receivable within the base unit,
wherein the carry cot is configured to lockably engage the horizontal portion of the
base unit.”
The Person Skilled in the Art and the Experts for the Parties
32. The hypothetical “person skilled in the art” is a well-established legal concept and I do not consider it necessary to discuss the relevant Authorities.
33. The Opponent submits that:
“The notional persons skilled in the relevant art ‘are those likely to have a practical interest in the subject matter of the invention’ (Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) FCA 980, at [70] and [71]) or ‘those with practical knowledge and experience of the kind of work in which the invention is intended to be used’ (Apotex Pty Ltd v AstraZeneca AB (No. 4) (2013) FCA 162). As has been made clear in the cases, these terms may apply to a range of persons including those responsible for designing and manufacturing products, and users of products who may be expected to be aware of both problems with and what works well with existing technology.” (OS at [5.1])
34. The Applicant states:
“In the present case, the Applicant submits that the person skilled in the art is a person who was, at the Priority Date, familiar with child restraint systems available in Australia, and also had knowledge of safety standard compliance (ie. relevant Australian Standards), proper installation and convenience of use of such systems. It is not necessary that the person skilled in the art be a designer of child restraint systems – that would cast the person skilled in the art too narrowly. Given the subject matter of the claims – child safety seats – the person skilled in the art is a person engaged in designing, manufacturing and/or using child safety seats.” (AS at [67])
35. I can see no substantial disagreements between the parties on this point and I generally
agree with them, although I have certain reservations in relation to the notion that every parent or guardian using a child safety seat in Australia can potentially be considered representative of the person skilled in the art in the patent area.
36. The Opponent relies on the expert evidence of Mr Duke:
“Mr Duke is someone with a practical interest in child restraints and has a practical knowledge and experience of the kind of work in which the invention is intended to be used. As someone who is responsible for designing child restraints, he has knowledge of the state of the common general knowledge as it existed in the patent area before the priority date.” (OS at [5.2])
37. The Applicant relies mostly on the expert evidence by Mr Akbarian:
“Mr Akbarian is an engineer who has worked since 2004 with ‘Mobility Engineering’, and has extensive experience in relation to child restraints for motor vehicles. He was accepted as a person skilled in the art and qualified to give evidence on the types of child restraint systems forming part of the common general knowledge as well as on safety standard compliance, proper installation and convenience of use of those systems at 17 September 2009 in Dorel Australia Pty Ltd v Britax Childcare Pty Ltd [2016] APO 54 at [42].” (AS at [13], first dot- point)
38. The Applicant also relies on two additional declarations: Wainohu (by Mr Wainohu, a
attorney and legal practitioner). Wainohu “gives evidence regarding whether the child safety seat
in D1 would meet Australian Standards” and concludes that “the seat in Figs 1 to 3 of D1 could
not be marketed or sold in Australia as a child restraint” (AS at [13], second dot-point). It appears
that Chrysiliou is filed to demonstrate that “Mr Duke has a significant history as an inventor of
child restraints and tether systems” and that “Mr Duke proclaims on his website … that he has
been designing and developing child restraints for 20 years”, hence “the Commissioner ought
treat Mr Duke’s evidence with considerable caution – he is plainly ‘inventive’” (AS at [13], third
dot-point). According to the Applicant, this declaration “also includes material relevant to
publication dates and features of the Unity carrier, showing that the relevant evidence of
publication on the Britax website was after the Priority Date and that, according to the User
mechanical engineer employed by the Applicant) and Chrysiliou (by Ms Chrysiliou, a patent retaining strap attached to the rebound bar, as in Exhibit JD-3” (AS at [13], third dot-point, original emphasis).
39. With respect to Mr Duke and Mr Akbarian, the Applicant submits that:
“Mr Akbarian is plainly a person skilled in the art. As to Mr Duke, he is named as an inventor with respect to a number of patent applications: See Chrysiliou, Annexure KC-6[.] Not only is Mr Duke inventive, but also his inventions have concentrated on child restraints and tether systems. The Applicant submits that, in these circumstances, care must be taken in relation to the weight to be placed upon Mr Duke’s views.” (AS at [68]).
40. I note that Mr Duke does not hide his experience in designing child safety seats and, indeed, his inventiveness:
“The 1990’s was a period of substantial innovation in Australia for child restraints. I was named as an inventor on a small number of Australian patent applications for Foldaway throughout the 1990’s.” (Duke-1 at [11])
Clearly, I need to take this into account in a potential consideration of Mr Duke’s evidence of what a person skilled in the art would do under certain circumstances, however I do not consider his inventive disposition a sufficient reason to give little weight to his entire evidence. This approach is also supported by the cases discussed at [223], [226], and [230] of Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651.
41. On the other hand, during the hearing, the Opponent pointed out that Mr Akbarian does
not appear to have any experience in designing or manufacturing child safety seats, hence care
must be taken in weighing his evidence.
42. Having considered the evidence and the parties’ submissions, I am satisfied that, in view
Akbarian are qualified to give expert evidence in this opposition. I also consider that Mr
of their qualifications and experience in the field of child safety seats, both Mr Duke and Mr and exhibit DW-1) despite being employed by the Applicant (Wainohu at [1]).
Claim Interpretation
43. The rules of claim construction are well established and I do not consider it necessary to refer to the relevant Authorities.
44. I note that there are some substantial disagreements on construction between the parties.
However, since the Opponent does not press clarity as a ground of opposition, I will limit my detailed considerations to the points of contention that I consider material to the other grounds of opposition. In particular, although Mr Duke considers that “[t]he term ‘receivable within the base unit’ is unclear” (Duke -2 at [19]), the Opponent comments:
“As per paragraph 23 of Mr Duke’s declaration #2 ‘if claim 3 defines raised walls, then the interpretation of “received within” in claim 1 should therefore read broader than the claim 3 limitation. It would therefore appear that “walls” are not a requirement of claim 1.’
It is the opponent’s assertion that the term ‘receivable within the base unit’ should therefore be given a broad interpretation.” (OS at [7.16])
As it will become apparent later in this decision, the exact interpretation of the expression
“receivable within the base unit” is not something that can affect the outcome of the opposition,
hence I do not need to decide on the issue conclusively.
45. Given the specifics of the case, I consider it very important to decide whether at least
some of the words or expressions used in the claims are, in fact, terms in the art that would be
given a specific meaning by the person skilled in the art. If this is not the case, the plain meaning
of the words must be used in construction.
46. When Mr Akbarian was specifically asked whether “any of the words used in the Opposed Patent has any special or technical meaning other than the normal English meaning” (Akbarian at [29]), he answered (in the same paragraph) that “[he] did not notice any special technical terms”. Despite this, in answering the question of “what [he] understood some terms in the claims in the Opposed Patent to mean” (Akbarian at [31]), Mr Akbarian provided (in the same paragraph) his interpretation which, in some cases, does not appear to be based entirely on the “normal English meaning” of the words.
47. Mr Duke was not specifically asked about the presence of any technical terms, however
he was, similarly to Mr Akbarian, asked “to provide [his] understanding of the claims of the
opposed patent application and discuss [his] interpretation of the terms used in the
claims” (Duke-2 at [12]). His explanations in Duke-2 at [13] to [28] also suggest that a number
of words and expressions in the claims could have a more specific meaning in the art than the one
suggested by the plain meaning of the words.
48. In essence, both the Opponent’s and the Applicant’s Submissions on Fair Basis are
focused on the interpretation of claim 1. In particular, the parties express their views on the
interpretation of the expressions “[a] rearward facing child safety seat” and “the base unit having
a substantially vertical portion and a substantially horizontal portion”. I will comment on these
submissions when discussing the interpretation of the expressions in question below, however I
note that similar issues will also be discussed later in this decision in the context of fair basis.
“A rearward facing child safety seat”
49. The plain meaning of the words in this expression suggests that a rearward facing child
safety seat is a child safety seat where, in use, the child faces rearward with respect to the
vehicle’s normal/forward moving direction. The important question I need to answer is whether a
rearward facing child safety seat is limited to providing only rearward facing orientation for the
child or it can also allow the child to face forward. In my view, the expression in question refers
to a specific device or at least a specific type of device, hence it is not unreasonable to consider
that it may have a special meaning to the person skilled in the art.
50. Mr Akbarian provides the following explanations:
“‘Child safety seat’: a seat which complies with the relevant current, or future,
Australian Standards 1754 for child restraints.” (Akbarian at [31(a)])“When I refer to a ‘rearward facing’ child restraint, I refer to a restraint oriented such that the child properly secured in the installed restraint faces the rear of the vehicle. When I refer to a ‘forward facing’ child restraint, I refer to a restraint oriented such that the child properly secured in the installed restraint faces the front of the vehicle.” (Akbarian at [16], emphasis added)
51. Mr Duke does not explain the meaning of “child safety seat”, commenting instead that
“[t]he claims refer to ‘a child safety seat’, whilst the title and field of invention refer to ‘a child
restraint’”, and that “[i]t appears to [him] that these terms are being used
interchangeably” (Duke-2 at [13]). When asked to “outline the different types of child restraints
known pre-February 2010” (Duke-1 at [23]), he answered (in the same paragraph, emphasis
added):
“There were 7 different types of child restraint listed in the Australian Standard AS1754:2004. Child restraints can be a combination of two or more of these types. I have grouped them to provide an overview. The full details can be found in Australian/New Zealand Standard AS/NZ1754:2004 (Exhibit JD-1) at Section 1.5 Type Designation on pages 10 and 11. ‘Rearward facing’ refers to a child restraint whereby the child is positioned facing the rear of the vehicle.”
52. While I disagree that any limitations imposed by the “relevant current, or future”
standards should be imported into the claim as apparently suggested by Mr Akbarian, since both (exhibit JD-1) was the relevant version at the priority date (see Duke-1 at [7], apparently also confirmed in Akbarian at [13]), I consider that the information contained in this standard could have implications to the meaning that the person skilled in the art would give to the expression “a rearward facing child safety seat”.
53. At [23]-[24] of Duke-1, Mr Duke discusses the types of child safety seats according to AS/NZS 1754:2004 (exhibit JD-1) as well as according to AS/NZS 1754:2010 (exhibit JD-2). His evidence suggests the existence of rearward facing child safety seats (types A and D) and forward facing child safety seats (types B, C, and E). He also mentions in the above quoted
statement that “[c]hild restraints can be a combination of two or more of these types”. Mr Duke
specifically mentions the so called “travel systems” and the fact that they were considered to meet
the requirements of the standard for type A:
“The use of the generic name ‘Travel systems’ reflects that they provided more than one use option for the parent. The child carrier could, depending on the design, be switched from rearward facing to forward facing on the chassis and could also be carried separately by a carry handle. There was also a base that was left attached to the vehicle seat and which the carrier could latch to. Originally in Australia these child carriers, which were considered to meet Type A Standards as they stood at that time, were only installed directly strapped to a vehicle seat using the vehicle seat belt as the United States bases were not strong enough to meet the Australian crash test loads. During the 1990’s stronger bases were introduced that were left in place on the vehicle seat and strapped in place with the vehicle seat belt. By the mid 2000’s it was considered that these child carriers when installed without a base were not stable enough when dynamically tested, as they moved about the vehicle seat. The child carrier was then tested and approved only secured to the base, but could still be removed from the base and used outside the vehicle. These child carriers were designed to meet Type A1 or A2 rearward facing child restraint standards.” (Duke-1 at [26], emphasis added)
54. Importantly however, having reviewed the Application, Mr Duke states:
“The opposed patent application appears to illustrate both Type A rear facing child restraints and Type A/B convertible rearward and forward facing child restraints. These types of child restraints are outlined in my earlier Declaration dated 27 March 2017 [i.e. Duke-1].” (Duke-2 at [3], emphasis added)
55. Mr Akbarian also declares his familiarity with the different types of child safety seats according to the standard (Akbarian at [8] and [35]), and notes:
“… I understand that the majority of all child restraints sold across Australia in the period between approximately 2000 and approximately 2008 were ‘2-in-1 seats’ or Type A/B seats. These seats are able to be positioned in both a rearward and forward facing configuration.” (Akbarian at [10], emphasis added)
“For example, since the majority of restraints sold in Australia in the years leading up to the Priority Date were Type A/B restraints, knowledge of convertible rearward and forward facing restraints was CGK [common general knowledge].” (Akbarian at [13])
56. Importantly, while commenting on the disclosure of document D1, Mr Akbarian explains
that “[t]he capsule of the US Patent [i.e. document D1] can travel rearward or forward,
however this is not what is claimed in the Opposed Patent, which only refers to a rearward
facing child restraint” (Akbarian at [44], emphasis added).
57. While his evidence appears focused on a single specific issue, Mr Wainohu also provides some explanations on the types of child safety seats according to the relevant standard:
“Under AS 1754 there are four Types of child restraint which are rearward facing
(or capable of being used as rearward facing), namely:
Type A1: rearward facing restraint with a harness or other means of retaining the
occupant of supine length up to 70 cm, and approximately 6 months of age;
Type A2: rearward facing restraint with a harness or other means of retaining the
occupant of supine length up to 80 cm, and approximately12 months of age;
Type A1/B: (as A1) rearward facing restraint with a harness or other means of
retaining the occupant of supine length up to 70 cm, and approximately 6 months
of age; (as B) forward facing chair with harness, suitable for children
approximately 6 months to 4 years of age;
Type A2/B: (as A2) rearward facing restraint with a harness or other means of
retaining the occupant of supine length up to 80 cm, and approximately 12 months
of age; (as B) forward facing chair with harness, suitable for children
approximately 6 months to 4 years of age.
The Type Designation is set out in AS 1754 at 1.5. (a), (b) and (d).” (Wainohu at
[18], emphasis added).
To my mind, the mere presence of Mr Wainohu’s comment in brackets suggests that he does not consider the child safety seats that “are rearward facing” as equivalent to the child safety seats that are “capable of being used as rearward facing”. In light of his explanations of the four types (A1, A2, A1/B, and A2/B), it does not appear to me that his comment in brackets was intended to be an explanation of the meaning of “rearward facing”, rather it was added to cover both the types that are rearward facing (A1 and A2) and the types that can be used as rearward facing (A1/B, and A2/B). In brief, I consider that if Mr Wainohu regarded all four listed types of child restraints as rearward facing, there would be no need for him to provide the comment in brackets at all.
58. On balance, I consider that the evidence on file suggests that the “convertible rearward
and forward facing restraints” would be considered by the person skilled in the art as a separate type of child safety seat (e.g. type A/B), distinct from both the rearward facing (e.g. type A) and the forward facing (e.g. type B) child safety seats. This is also consistent with the language used in the specification:
“The present invention will be described below in relation to a Type A mode child safety seat for use in a vehicle in a rearward facing manner. However, it will be appreciated that the present invention could be equally applicable for use in a variety of different modes of child safety seats, including Type A/B, Type A/B/E etc, and still fall within the spirit of the present invention.” (page 5, lines 1-5, emphasis added)
59. Therefore, I consider it unlikely that a “convertible” child safety seat would be regarded
by the person skilled in the art as a rearward facing child safety seat. Based on the evidence, I am
satisfied that the expression “rearward facing child safety seat” refers exclusively to child safety
seats designed to be used only in one orientation where the child is facing the rear of the vehicle.
60. Interestingly, both parties state in their Submissions on Fair Basis that a rearward facing
child safety seat should not be interpreted as limited to only a rearward facing orientation. The
Opponent’s brief explanations are based on Wainohu at [18] (quoted above); on part of the
description at page 5, lines 1-5 (also quoted above); and on part of the description at page 7
(emphasis in bold added):
“The specification at page 7 discusses the embodiments shown in Figures 1, 2 and 4 and the engagement members 25. It states ‘In another form, the engagement members 25 may be adjustable in position to enable the child safety seat to be readily adapted to suit different types of vehicles and seating positions.’ It seems to contemplate that the embodiment shown in these figures could also have alternative positioning i.e. forward facing such that it is a Type A/B seat.”
61. Given my earlier analysis, I do not find the Opponent’s explanations, including the above emphasised sentence, convincing.
62. With respect to the interpretation of the feature in question, the Applicant puts a lot of
emphasis on the disclosure in the body of the specification and the embodiments described
therein, without too much regard for the evidence on file. I must note that, in general, not all
described embodiments must necessarily be presumed claimed and the fact that certain features
may be disclosed in some embodiments does not mean that they should be read into the claims.
63. The Applicant’s Submissions on Fair Basis further state (original emphasis):
“We disagree with the statement that convertible child safety seats are distinct from rearward facing child safety seats. The fact is that convertible child safety seats which include ‘Type A’ are rearward facing seats which can also be used in a different configuration, namely facing forward in the case of Type B…”
I cannot find any support in the evidence for this statement. A type A/B convertible child safety seat can be used in two configurations – rearward facing and forward facing. The Applicant asserts that they “are rearward facing seats which can also be used in a different configuration, namely facing forward”, however I can see no reason why this statement should be preferred to the opposite statement that they are forward facing seats which can also be used in a different configuration, namely facing rearward.
64. In conclusion, I could have probably agreed with the parties’ interpretation if claim 1 were
defining “a child safety seat which can be rearward facing”; however this is not what the claim is
defining and I do not consider this expression equivalent to the defined “rearward facing child
safety seat” which, based on the evidence before me, I consider to have a more specific meaning
to the person skilled in the art.
“the base unit having a substantially vertical portion and a substantially horizontal portion”
65. I consider that the terms “vertical” and “horizontal” are meaningful only with respect to
the orientation of the child safety seat when in use, positioned on the vehicle seat. Therefore, “a substantially vertical portion” is a portion that is substantially vertical when the child safety seat is in use, positioned on the vehicle seat. Similarly, “a substantially horizontal portion” is a
portion that is substantially horizontal when the child safety seat is in use, positioned on the
vehicle seat.
66. I must clarify that, in the following discussion, I will use the word “positional” as
referring only to the position in space of an item, and not the item’s orientation (e.g. horizontal,
vertical) which is to be determined as above.
67. Claim 1 defines “a base unit configured to be positioned on a vehicle seat, the base unit
having a substantially vertical portion and a substantially horizontal portion; a tether connectable to the substantially vertical portion …, wherein the carry cot is configured to lockably engage the horizontal portion of the base unit”. I consider that “the horizontal portion” refers to the
previously defined in the claim “substantially horizontal portion” despite the omission of the
word “substantially” as no other horizontal portion is defined.
68. The claim clearly defines a rearward facing child safety seat with a base unit having a
substantially vertical portion and a substantially horizontal portion. The point of contention
between the parties is whether the so defined base unit must have only one substantially vertical
portion and only one substantially horizontal portion, or it could have more than one substantially
vertical portions and more than one substantially horizontal portions. It is also important to
decide whether the substantially vertical and substantially horizontal portions of claim 1 have any
defined positional relationships with the parts of the vehicle seat when the base unit is positioned
thereon.
69. Apparently, the expressions in question do not contain any words that could be terms in
the art, hence their interpretation is purely a question of law and the Experts’ views on the matter are of little assistance. Nonetheless, the Opponent’s interpretation appears based on the evidence of Mr Duke and the criticism of the statements of Mr Akbarian:
“(c) ‘Substantially horizontal portion of the base unit’: the part of the base unit
which is positioned on the base of the vehicle seat when the base unit is installed.
Mr Akbarian [in the above definition] appears to be providing a narrow
interpretation of the terms of the claims with reference only to the embodiments
shown in the opposed application, rather than giving terms their normal English
meaning. Claim 1 does not contain any physical limitations on the positioning of
the horizontal portion relative to the vehicle seat.
The opponents preferred definition is as per Mr Duke’s paragraph 15 in declaration
#2, being ‘any part that is substantially horizontal and there is no definition of
where the portion is located’.(d) ‘Substantially vertical portion of the base unit’: the part of the base unit which is positioned against the back rest of the vehicle seat when the base unit is installed.
Again, Mr Akbarian [in the above definition] appears to be providing a narrow interpretation of the terms of the claims with reference only to the embodiments shown in the opposed application, rather than giving terms their normal English meaning. Claim 1 does not contain any physical limitations on the positioning of the vertical portion relative to the vehicle seat.
The opponents preferred definition is as per Mr Duke’s paragraph 15 in declaration #2, being ‘any part that is substantially vertical and there is no definition of where the portion is located’.” (OS at [7.7]-[7.8], original emphasis)
70. The Applicant does not appear to provide detailed comments on the issue in the
Applicant’s Summary. During the hearing, they put a lot of emphasis on reading the claimed features in combination and on the use of the definite article “the” in the expressions “a tether connectable to the substantially vertical portion” and “the carry cot is configured to lockably engage the horizontal portion”. When I explicitly asked the Applicant about their view on the
interpretation of the features in question, they submitted, as best understood, that the use of the
definite article implies the existence of only one substantially vertical portion and only one
substantially horizontal portion.
71. Again as best understood, it also appeared that, in the Applicant’s submissions, due to the
portion that is to be positioned on the vehicle seat. This, combined with the Applicant’s
interpretation of the consistory statement that “advances in the design of the invented device
reside in the tether strap being connected to the rear of the base of the safety seat (ie. the
substantially vertical portion)” (see AS at [19], emphasis added), apparently implies that the
base unit being “configured to be positioned on a vehicle seat”, it is the substantially horizontal of the substantially vertical and substantially horizontal portions with respect to the vehicle seat.
72. In my view, the use of a definite article in this context goes no further than to clarify that,
in the claim, the later mentioning of the specific integer refers to the same integer that was
defined earlier in the claim using the indefinite article “a”. Even if a base unit has more than one
substantially vertical portions, it will still possess the feature of “having a substantially vertical
portion” as defined in the claim. In other words, while the claim defines the existence of one
substantially vertical portion (and this is the substantially vertical portion to which a tether is
connectable), the claim language does not prohibit the existence of additional substantially
vertical portions. Similar considerations apply to the feature of “having … a substantially
horizontal portion”. In addition, the substantially horizontal portion defined in the claim may or
may not be directly positioned on the vehicle seat. I also note that the claim language “a base unit
configured to be positioned on a vehicle seat” does not explicitly require that the portion of the
base unit that is positioned on the vehicle seat must be substantially horizontal (e.g. two or more
vertical portions might potentially provide sufficient stability, rendering this a reasonable
interpretation).
73. Further, I do not consider that the use of the expressions “substantially vertical portion”
and “substantially horizontal portion” renders claim 1 unclear, hence it would be impermissible
for me to limit the scope of the claim by importing additional features (e.g. regarding the
positional arrangement of the substantially vertical and substantially horizontal portions with
respect to the vehicle seat) that could potentially be derived from the body of the specification. In
conclusion, I do not consider that the use of a definite article is sufficient to limit the scope of
claim 1 to only one substantially vertical portion and only one substantially horizontal portion. I
also have no reasons to consider that the substantially vertical and substantially horizontal
portions defined in the claim have any specifically defined positional relationships with respect to
the vehicle seat.
74. The Opponent’s Submissions on Fair Basis appear in agreement with the above
interpretation. In the Applicant’s Submissions on Fair Basis it is stated (emphasis added):
“We agree with the Delegate that the terms ‘vertical’ and ‘horizontal’ have reference to the child safety seat in position on a vehicle seat. This is a consequence of the wording in claim 1 that the base unit is ‘configured to be positioned on a vehicle seat’.
Whether there can be more than one vertical portion and more than one horizontal portion is not to the point, because claim 1 identifies the relevant substantially vertical portion as that to which the tether is connectable. Claim 1 also identifies the relevant substantially horizontal portion as that to which the carry cot is lockably engaged.”
While I somewhat agree with the emphasised statement above, as best understood, this did not appear to be the Applicant’s position at the hearing.
75. The Applicant’s Submissions on Fair Basis again advocate for narrower interpretation of
these features in claim 1, referring to Mr Akbarian’s interpretation as quoted above as part of OS
at [7.7]-[7.8] (see items (c) and (d) in italic). The Applicant also argues that:
“Even the Opponent’s witness, Mr Duke in Duke 2 at [3] readily recognised that ‘Rather than carrying the tether across the space where the child or child carrier is inserted/removed through, the tether is attached to the portion of the base sitting against the vehicle seatback and runs directly to the vehicle anchorage point so that the tether does not run across the occupant space.’ Duke 2 also said at [4]: ‘The opposed application requires at least:
a. A base unit that sits on the vehicle seat with a vertical portion that sits
against the vehicle seat back.’”
I must emphasise, however, that at [3]-[4] of Duke-2, Mr Duke comments on what the Application “relates to” and “requires”, and not on what the Application claims. Mr Duke’s comments on the features in question as defined in claim 1 are to be found at [15] of Duke-2, as quoted above as part of OS at [7.7]-[7.8].
76. In conclusion, I do not find the Applicant’s explanations on the issue as per the
Applicant’s Submissions on Fair Basis convincing.
“an untethered carry cot”
77. I consider it important to decide what is meant by claim 1 in stating that the carry cot is
untethered. According to Mr Akbarian, “‘[u]ntethered’: means there is no strap connected to the
item” (Akbarian at [31(g)]). A very similar explanation is provided by Mr Duke: “[t]he term
‘untethered’ simply means that there is no piece of webbing connected to the carry cot” (Duke-2
at [18]).
78. I consider the above statements by the Experts to be a helpful starting point to interpret the
expression in question in the context of the claim, but I do not find them conclusive. Literal
adoption of these statements could mean that any carry cot would become untethered if all straps
or pieces of webbing that might be initially connected to it are removed or disconnected. In a
similar way of thinking, any untethered carry cot can have a strap or a piece of webbing
connected to it, thus ceasing to be untethered. I consider that, on purposive construction in the
context of the claim, it is more important to identify whether the carry cot is designed such that,
in use (i.e. with a child in it and placed in a moving vehicle), it is connected or not connected to a
strap or a piece of webbing. In other words, whether connecting it to a strap or a piece of
webbing during its intended operation is or is not contemplated by its design.
79. I also need to consider what it means for a strap or a piece of webbing to be connected to
the carry cot in the context of the claim. At one extreme, it could be argued that if, in use, a carry cot is connected (e.g. lockably engaged) to the base unit and the base unit itself is connected to a strap or a piece of webbing, then the carry cot is also (indirectly) connected to a strap or a piece of
webbing. However, if I adopt this interpretation, this would lead to absurd construction as the
carry cot of claim 1, in use, can never be untethered as defined in the claim because it will always
be (indirectly) connected to a strap or a piece of webbing via its connection to the base. At the
other extreme, it may be argued that “connected” means “directly connected and in direct
contact”. However, this would mean that a somewhat indirect connection via any known
intermediate means such as, e.g., a hook, a clip, etc. would result in the carry cot being considered
not connected which I also consider absurd.
80. In addition, regardless of the precise meaning of “connected”, I do not believe that being
connected to a strap or a piece of webbing is necessarily equivalent to being tethered. With
respect to the word “tether”, Mr Duke explains:
“The term ‘tether’ is a commonly used term, as discussed in my earlier Declaration dated 27 March 2017 [Duke-1], which is supported by the further wording in claim 1 of ‘configured to extend therefrom to a vehicle anchorage point’.” (Duke-2 at [16])
81. The above mentioned discussion in Duke-1 is provided at [25]:
“FPA asked me to outline the tether requirements for Australia. These can be found under Section 3.5 Anchoring and Attachment System of AS/NZ1754:2004. From a general design perspective, I have included below the most relevant sections. The Standard refers to ‘anchorage strap’ but the common term in use for this strap is ‘tether’. [in the original, the content below is formatted as a table]
Relevant AS/NZ1754:2004 Section
3.5.1(a) The child restraint shall be designed for anchoring to the vehicle
frame or body.
3.5.1(b) The anchoring system shall anchor the child restraint securely
against deceleration in forward, rearward and sideways directions, and
when inverted.
3.5.1(c) Except if it is a Type E child restraint, the upper portion of the
child restraint shall be designed to be attached to the vehicle through an
upper anchorage strap and fittings which shall be provided with the child
restraint.
3.5.1(d) The lower portion of the child restraint shall be designed to be
attached to the vehicle through an adult seat belt.
…”
82. Mr Akbarian’s explanation of the word “tether” is “the top tether strap connected to the substantially vertical portion of the base unit” (Akbarian at [31(e)]).
83. A purposive construction of the words “tethered” and “untethered” should apply. It is
clear from the evidence that the purpose of the tether is to provide for the child safety seat
additional anchoring to the vehicle. Hence, a carry cot would still be untethered even with a strap
or a piece of webbing connected to it, if in use, the strap or piece of webbing does not anchor the
carry cot to the vehicle. In other words, it is also important what else the strap or piece of
webbing is connected to, in use, in addition to being connected to the carry cot. Further, for the
carry cot to be tethered, both connections of the tether (to the carry cot and to the vehicle’s
anchoring point), whether direct or indirect, must be able to transfer certain force to provide the
additional anchoring. Only then it would make sense to consider that the parts are indeed
connected for the purpose of tethering.
84. Based on the above discussion, I conclude that, in the context of the claim, the carry cot is
untethered if, by design, in use, it is not anchored to the vehicle through any direct or indirect
connection to a tether (i.e. a strap or piece of webbing), other than via its lockable engagement
with the base unit.
Fair Basis under Subsection 40(3)
85. As already mentioned, lack of fair basis is not a ground of opposition raised by the
Opponent, however my claim interpretation has revealed certain deficiencies in relation to this ground, hence I consider it necessary to take it into account under the provisions of subsection 60(3) which states:
“The Commissioner may, in deciding a case, take into account any ground on which the grant of a standard patent may be opposed, whether relied upon by the opponent or not.”
86. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58
(Lockwood), it was stated that “… when assessing whether there is fair basing within the meaning
of s 40(3), it is necessary to split the patent into the claims and the body of the specification, in
order to see whether the former are fairly based on the matter described in the latter” (at [49]). In
that respect, the High Court approved the following approach:
“The approach required by s 40(3)
Erroneous principles. The comparison which s 40(3) calls for is not analogous to
that between a claim and an alleged anticipation or infringement. It is wrong to
employ ‘an over meticulous verbal analysis’. It is wrong to seek to isolate in the
body of the specification ‘essential integers’ or ‘essential features’ of an alleged
invention and to ask whether they correspond with the essential integers of the
claim in question.
‘Real and reasonably clear disclosure’. Section 40(3) requires, in Fullagar J’s
words, ‘a real and reasonably clear disclosure.’ But those words, when used in
connection with s 40(3), do not limit disclosures to preferred embodiments.‘The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.’
Fullagar J’s phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the ‘real’ disclosure, are in truth only loose or stray remarks.” (Lockwood at [68-69], original emphasis, references omitted)
87. The High Court further explained:
“Doric submitted that Olin decided that a claim based on a consistory clause cannot be fairly based. It did not. Rather, as the Patentee submitted, 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. These points are reflected in the statements in an Australian text:
‘Claims found to be inconsistent with the general description of the invention may be invalid as being not fairly based on the matter described in the specification. In order to avoid this possibility a well drawn specification will usually include in the body of the specification one or more formal “consistory statements” setting forth what the patentee considers to be the scope of the invention, such statements often quoting the exact wording of the broadest claims in the specifications. … Such statements will generally follow an introductory portion of the specification, which may describe the technical field of the invention and the problems with the prior art which are to be addressed by the invention. It is important that the introductory part of the specification be worded so as to be consistent with the scope of the invention as defined in the claims and any formal consistory statements.
A statement implying that the invention has a limited field of application or requires as an essential feature something which is not required by the claims may result in a finding that the claims are wider than the invention disclosed in the specification, and are accordingly invalid for lack of fair basis on the matter described in the specification.’” (Lockwood at [99-100], emphasis added, reference(s) omitted)
The positional arrangement of the substantially vertical and substantially horizontal portions of the base unit with respect to the vehicle seat
88. I have already concluded that the base unit of claim 1 can have one or more substantially
vertical portions and one or more substantially horizontal portions, and that the substantially
vertical portion and the substantially horizontal portion as defined in the claim do not have any
specifically defined positional relationships with respect to the vehicle seat. Following the above
discussion of the law, I need to decide whether a child safety seat having these features of claim 1
is “inconsistent with the general description of the invention” including any consistory
statements.
89. Turning to the body of the specification, I note the consistent emphasis that the
substantially vertical portion, to which the tether is connectable, is, in fact, the portion of the base
unit that is configured to be positioned against the backrest of the vehicle seat. In addition, the
substantially horizontal portion, which the carry cot is configured to lockably engage, is, in fact,
the portion of the base unit configured to be positioned on the vehicle seat:
“Referring to Figure 4, when the base unit 14 is located on the vehicle seat 2, the substantially upright [i.e. vertical] portion 15 is received against the corresponding upright back support of the vehicle seat 2 and the substantially horizontal portion 16 is received on the corresponding seat portion of the vehicle seat 2.” (page 6, lines 17-20)
“In the arrangement as shown, … the tether system 20 is configured such that it does not extend over the open region of the base unit 14, thereby providing clear access to the base unit to receive the carry cot 12 therein.” (page 7, lines 5-13)
“Similarly, [on figure 6] the base unit 30 comprises a substantially vertical portion 32 and a substantially horizontal portion 34 that are each configured to be located on the corresponding vertical and horizontal portions of the vehicle seat 2 respectively.” (page 7, lines 33-35)
“In his [sic] embodiment [shown on figure 7A-7F], the base unit 14, 30 is
configured in the manner as discussed above” (page 8, line 23).90. I am unable to find any suggestion that the substantially vertical and substantially
horizontal portions of the base unit can have a different positional arrangement with respect to the
vehicle seat than the one described above. Indeed, it appears that this particular arrangement of
the two portions is a core feature of the inventive design as it allows the desired outcome to be
achieved:
“It will be appreciated that the child safety seat of the present invention provides a system whereby a carry cot can be removably mounted to a base unit in a simple and effective manner. The base unit can be secured by way of a tether arrangement to a vehicle anchorage point in a manner that doesn’t impede access of the carry cot to the base unit. As such, there is no requirement to adjust the tether arrangement prior to or following placement of the carry cot on the base unit, as is typically the case with existing devices.” (page 9, lines 5-11, emphasis added)
91. The importance of this particular arrangement is also recognised by the Experts. Mr Duke
| states: |
| “I was shown Australian Patent Application 2011200416 (‘the opposed patent application’) and asked to provide my comments on the general disclosure of the opposed patent application as it would have been understood up until 1 February 2010 (the priority date of the opposed patent application).” (Duke-2 at [1]) |
| “The opposed patent application relates to a child restraint having a base unit that sits on the vehicle car seat and a removable carrier that connects to the base. Rather than carrying the tether across the space where the child or child carrier is inserted/removed through, the tether is attached to the portion of the base sitting against the vehicle seat back and runs directly to the vehicle anchor point so that the tether does not run across the occupant space … |
| The opposed patent application requires at least: |
a. A base unit that sits on the vehicle seat with a vertical portion that sits
against the vehicle seat back;
b. A carrier for receiving a child that engages with the base unit; and
c. A tether that attaches to the vertical portion and extends to the vehicle
anchorage point without extending over the carrier.” (Duke-2 at [3]-[4],
emphasis added)
92. Having reviewed the specification, Mr Akbarian interprets the claimed features in
question as:
“(c) ‘Substantially horizontal portion of the base unit’: the part of the base unit which is positioned on the base of the vehicle seat when the base unit is installed;
(d) ‘Substantially vertical portion of the base unit’: the part of the base unit which is positioned against the back rest of the vehicle seat when the base unit is installed” (Akbarian at [31], emphasis added)
While I agree with the Opponent’s criticism (as quoted earlier in this decision) of Mr Akbarian’s narrow interpretation of these features in claim 1, I consider that the above quotation is a good indication of what Mr Akbarian considers to be the teaching of the specification.
93. I note the existence of a consistory statement expressing the features in question using similar wording to that of claim 1:
“Accordingly, in one aspect of the invention there is provided a rearward facing
child safety seat for a vehicle comprising:a base unit configured to be positioned on a vehicle seat, the base unit having a substantially vertical portion and a substantially horizontal portion. The child seat includes a tether connectable to the substantially vertical portion and configured to extend therefrom to a vehicle anchorage point. The safety seat further includes an untethered carry cot removeably receivable within the base unit. The carry cot is configured to lockably engage the horizontal portion of the base unit.” (page 3, lines 11-18)
94. However, I find it very important to take into account the Applicant’s own interpretation
of this statement:
“The ‘Statement of Invention’ (p3) then describes embodiments of the invention. Without limiting the nature of the alleged invention (which of course resides in a combination of features), the Applicant notes that advances in the design of the invented device reside in the tether strap being connected to the rear of the base of the safety seat (ie. the substantially vertical portion) and the carry cot being untethered while still being removably connected to the base. The consistory clause contains reference to these at p3 lines 13-18 where it is described that the carry cot is ‘untethered’ and is ‘removeably receivable within the base unit’, with a tether arrangement connectable to what is described as ‘a substantially vertical portion’.” (AS at [19], emphasis in bold added)
Here, the Applicant provides a narrower interpretation of the consistory statement by clearly indicating that the substantially vertical portion is at “the rear of the base of the safety seat”, i.e., in use, it is positioned against the backrest of the vehicle seat. Clearly, the Applicant considers that this positional relationship is where the “advances in the design of the invented device reside”. I find this fact highly significant.
95. Based on the above analysis, I conclude that “the general description of the invention” is
limited to a design solution where (regardless of the total number of substantially vertical and
substantially horizontal portions of the base unit) the substantially vertical portion, to which the
tether is connectable, is the portion of the base unit that is configured to be positioned against the
backrest of the vehicle seat, and the substantially horizontal portion, which the carry cot is
configured to lockably engage, is the portion of the base unit configured to be positioned on the
vehicle seat.
96. I consider that there is no “real and reasonably clear disclosure” of a design including a
base unit having a substantially vertical portion and a substantially horizontal portion, with their
respective working interrelationships with the tether and the carry cot, without any defined
positional arrangement with respect to the vehicle seat. This appears inconsistent with the
approach of the instant invention requiring the specific arrangement mentioned in the previous
paragraph. It is interesting to note that the Applicant’s own submissions, explaining the nature of
the invention and consistently advocating for somewhat narrower interpretation of claim 1,
appear to support this finding.
97. In conclusion, I am satisfied that claim 1 is not fairly based on the matter described in the
specification. Claims 2 to 8 depend on claim 1 and none of these claims defines the required
specific positional arrangement as mentioned above, hence claims 2 to 8 are also not fairly based
on the matter described in the specification.
A rearward facing child safety seat having a carry cot rotationally movable with respect to the base
98. Claim 7 defines (emphasis added):
“7. The child safety seat according to claim 1, wherein the carry cot is
rotationally movable with respect to the base about a central axis.”
Here, I consider that “the base” refers to the base unit defined in claim 1 as no other base is defined and the evidence suggests that the terms “base unit” and “base” can be used interchangeably (see Duke-1; Duke-2 at [3]; Akbarian at [31(h)], [55], and [58]). Therefore, claim 7 defines a rearward facing child safety seat, wherein the carry cot is rotationally movable with respect to the base unit.
99. In the description, the feature of rotation is discussed only in the following parts:
“In yet another embodiment, the carry cot may be supported such that it is movable with respect to the base unit. In one form, the carry cot may be rotationally movable with respect to the base unit about a central axis.” (consistory statement at page 4, lines 1-3, emphasis added)
“Referring to Figures 7A – 7F an alternative embodiment of the child safety seat of the present invention is shown. In this embodiment, the carry cot 12 is configured such that it is able to rotate about a central access [sic] through at least 180 degrees to be used in a rearward facing manner, as shown in Fig 7D and a forward facing manner, as shown in Fig 7F.
In this embodiment, the base unit 14, 30 is configured in a manner as discussed above, and comprises a number of engagement members 25 that project from a surface of the base unit 14, 30. The carry cot 12 comprises a shell 13 that is mounted on a base 13a in a manner that facilitates rotational movement of the shell 13 with respect to the base 13a such that when the base l3a is securely mounted on the surface of the base unit 14, 30 of the safety seat, the shell 13 is able to be rotated through at least 180 degrees to enable the carry cot 12 to be used as either a forward or a rearward facing seat. As shown in Figure 7D, the shell 13 may also be tiltably adjustable with respect to the base l3a to enable an angle of inclination of the shell 20 to be adjusted for use. Movement of the shell 13 with respect to the base 13a is controlled with a locking mechanism to enable the shell to be locked in position during use. In such an arrangement, in addition to the shell 13 being able to be used in a forward and rearward manner, the shell may also be rotated into a 90 degree position as shown in Figures 7B and 7E to assist in removing or accessing the child when located in the child safety seat 10.” (page 8, lines 18-36, emphasis added)
100. In my earlier discussion with respect to the interpretation of the expression “rearward
facing child safety seat” in claim 1, I concluded that this expression refers exclusively to child safety seats designed to be used only in one orientation where the child is facing the rear of the vehicle. It appears to me that this interpretation leaves very little room for rotation as this would
likely affect the child orientation. In addition, as briefly mentioned earlier, the body of the
specification describes two distinct types of child safety seats. The first type is a rearward facing
child safety seat (of type A) described with reference to figures 1 to 5 (the first embodiment) and
figure 6 (the second embodiment of the same type). The second type is a convertible rearward
and forward facing child safety seat (e.g. of type A/B) described with reference to figures 7A to
7F. I note that all explanations of the feature of rotation are clearly related to the convertible child
safety seat, which, as I concluded, is not a rearward facing child safety seat. Indeed, it is this
ability to rotate by at least 180 degrees that distinguishes the described convertible child safety
seat from the described rearward facing child safety seats. Although, the specification
contemplates rotation by 90 degrees, this is still done only in the context of “the shell 13 being
able to be used in a forward and rearward manner”, hence not in the context of rearward facing
child safety seat.
101. There is no suggestion in the body of the specification that the feature of rotation which
appears to be a critical design feature of the described convertible child safety seat can be
borrowed and incorporated into a rearward facing child safety seat such that the device could still
be considered a rearward facing child safety seat.
102. In addition, a somewhat less important point is that, in both types of child safety seats, the
carry cot 12 includes the shell 13 and the base 13a of the shell (see figures 3 and 7A; page 5, lines
32-34). The base 13a is part of the carry cot and is distinct from the base unit 14, 30. It is clear
from the description that what actually rotates is not the carry cot 12 as defined in claim 7, but
only the shell 13 of the carry cot. The base 13a of the shell is fixed to the base unit 14, 30 and
does not rotate. Hence, it appears that there is no description of the rotation of the entire carry cot
as such.
103. It follows that “the general description of the invention” does not include a rearward
facing child safety seat, wherein the carry cot is rotationally movable with respect to the base as
claimed in claim 7. It appears that, at best, the Applicant has attempted to claim one distinct
embodiment (i.e. the convertible child safety seat) as an optional or preferred arrangement of
another distinct embodiment (i.e. the rearward facing child safety seat) which I consider
“inconsistent with the general description of the invention”.
104. Based on the above, I consider that there is no “real and reasonably clear disclosure” in
the body of the specification of a rearward facing child safety seat including the feature of
rotation as claimed in claim 7. Therefore, I am satisfied that claim 7 is additionally not fairly
based on the matter described in the specification due to the presence of the feature of the carry
cot being rotationally movable.
Novelty under Subparagraph 18(1)(b)(i)
105. The well-established test for novelty can be found in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
connection to a tether, other than via its lockable engagement with the base (which is operated via
the catch marked “PRESS”). Hence, I do not consider that document D6 discloses an untethered
carry cot as defined in claim 1. It is possible that Mr Duke considered the fact that the tether is
attached to the base sufficient justification for his statement, however it appears to me that in the
arrangement of document D6, both the base and the carry cot are tethered.
135. Even if I disregard the fact that Mr Duke’s statement in relation to the functional
difference (see Duke-2 at [42] quoted above) appears to resemble an ex post facto analysis, this statement is based on Mr Duke’s understanding that the carry cot of document D6 is untethered, which I found not to be the case. There is no evidence that the person skilled in the art, regardless
of the problem they may be facing (see Wellcome Foundation), would modify as a matter of
routine the child safety seat with a tethered carry cot of document D6 so as to arrive at the
invention claimed in claim 1.
136. With respect to the relevant parts of the common general knowledge concerning the
tethering arrangements employed in child safety seats, Mr Duke notes:
“FPA asked me to outline the tether arrangements for rearward facing child carriers with a base. Type A child carriers made to meet the AS/NZ1754:2004 Standard typically had a ‘loop’ tether. A loop tether includes a single piece of tether webbing extending from the vehicle anchorage point behind the vehicle seat e.g. the parcel shelf, which connected to a loop of webbing. The loop of webbing looped over the back of the child carrier and was held in place by a clip or clips on the back of the child carrier. To remove the child carrier from the base and vehicle, the loop was removed from the back of the child carrier making it free to disengage from the base. The tether remained attached to the vehicle.” (Duke-1 at [30], emphasis added)
Mr Akbarian was asked an even more direct question: general knowledge]. I did not know of any child restraint having an untethered carry cot at the Priority Date.” (Akbarian at [17], emphasis added)
138. Apparently, both Mr Duke and Mr Akbarian agree that, at the priority date, the
arrangements forming part of the common general knowledge were limited to the use of tethered
carry cots.
139. Regarding the known tethering arrangements where the tether is attached to the base,
Mr Akbarian notes:
“I was also asked what information or knowledge about carry cots able to be removably attached to a base would have been CGK [common general knowledge]. I consider some features of the Baby Safety Capsule were CGK, such as the top tether which was permanently attached to, and looped around the front section of the base unit. I believe that the Baby Safety Capsule was most well known in the period before the 2000s, but since the manufacturer (Safe-n- Sound) did little to actively promote the product in the 2000s, and it was not as widely available to purchase as it was before that time, it gradually became less well known and replaced by the Type A/B systems.” (Akbarian at [14], emphasis added).
140. I note that the above reference to “the Baby Safety Capsule” relates to the child safety seat
of document D6 which, as I have already established, does not have an untethered carry cot. In other words, the fact that “the top tether … was permanently attached to … the front section of the base unit” does not necessarily mean that the carry cot was untethered.
141. In addition, Mr Akbarian provides in exhibit ALI-1 at [16]-[18] some explanations with
respect to the tethering arrangement of the “traditional capsule” system. These explanations are somewhat similar to the relevant parts of the above quotation and, apparently, they also refer to the device of document D6 (see Akbarian at [11] and [39]).
142. I note that the specification comments that in the prior art devices “a tether strap extends
around a front-most portion of the base or carry cot to be secured back to a dedicated anchorage
point on the vehicle located behind the vehicle seat” (page 2, lines 22-24, emphasis added), which
might potentially imply that the tether strap could be connected only to the base with the carry cot
being untethered. However, as I already mentioned, the specification explicitly states (see page 3,
lines 5-9 as quoted earlier) that “the above prior art discussion does not relate to what is
commonly or well known by the person skilled in the art”.
143. In summary, I consider that the evidence on file does not allow me to conclude that child
safety seats having untethered carry cots were part of the common general knowledge in the art at
the priority date. In addition, no evidence is present to demonstrate that the person skilled in the
art (in seeking a solution to whatever problem) would be motivated to reach, as a matter of
routine, something within the scope of claim 1. I am not satisfied that the Opponent has
established that the invention defined in claim 1 is obvious in light of the common general
knowledge.
144. Following the above conclusion, the question of whether all the features of the device
described in document D6 formed part of the common general knowledge at the priority date (as asserted by the Opponent) becomes of little relevance for the outcome of the opposition and I do not need to answer it conclusively.
Inventive step in light of the common general knowledge together with document D1
145. As a matter of procedure, I note that this point was not commented on in the Opponent’s Summary and it was somewhat briefly addressed in the Opponent’s oral submissions.
146. Document D1 was discussed earlier in this decision. As already noted in this earlier
discussion, Mr Duke considers that document D1 discloses all essential features of claim 1,
however I concluded that document D1 does not disclose a rearward facing child safety seat as
defined in claim 1. Even if I assume that the person skilled in the art would have ascertained,
understood and regarded document D1 as relevant, the Opponent has not provided any evidence
that will allow me to conclude that the person skilled in the art would be motivated to modify the
teachings of document D1 and thus reach the invention defined in claim 1.
147. With respect to this document, Mr Akbarian comments:
“The carry cot of the US Patent [document D1] is able to travel forward or rearward facing and is able to rotate 360 degrees so that the child is positioned to more safely receive the impact force during a collision.
I consider the child restraints in the US Patent and the Opposed Patent to be so different that it was difficult to compare them due to the number of contrasting features between them.” (Akbarian at [41]-[42])
148. Indeed, the core concept of the disclosure in document D1 is the ability of the carry cot to rotate about two axes to reduce the impact during collision, but this also means that the carry cot orientation can be easily reversed as explained earlier. In addition to the absence of any evidence that the person skilled in the art would be motivated to somehow limit this 360 degrees rotation
capability to create a rearward facing child safety seat as in claim 1, this modification even
appears counterintuitive as it goes against the core teaching of this document. I am not satisfied
that the Opponent has established that the invention defined in claim 1 would be obvious to the
person skilled in the art in light of the common general knowledge together with document D1,
even if this document were to be considered part of the opposition. It follows that introducing
document D1 into the opposition under regulation 5.23 will not change the outcome of the
opposition with respect to the ground of inventive step.
Inventive step summary
149. I have not established that claim 1 is obvious. Claims 2 to 8 are ultimately appended to
claim 1 and add further features to those defined in claim 1, hence I have no reason to consider
that any one of these claims is obvious. Therefore in conclusion, I have not established that any
one of claims 1 to 8 does not involve an inventive step.
150. In light of the above finding, I do not need to decide conclusively on:
| • | the exact problem solved by the claimed invention; |
| • | what exactly formed part of the common general knowledge at the priority date; and |
| • | whether document D1 would have been ascertained, understood and regarded as relevant by the person skilled in the art. |
None of these considerations have any potential to affect the outcome of the opposition.
Manner of Manufacture under Paragraph 18(1)(a)
151. This ground of opposition was not commented on in the Opponent’s Summary. The relevant particulars in the SGP are reproduced below in their entirety:
“(c) Claims 1 to 8 do not define patentable subject matter as they relate to a mere
variation in the working of an existing child safety seat.
There is no admission that any features of the pending claims are novel or
inventive over the common general knowledge of the skilled addressee
considered alone or in combination with prior art documents D1 to D5
identified above. However, on the face of the specification, it appears that the
alleged invention resides in the absence of a tether from the carry cot to a vehicle
anchorage point and moving the tether connection from the front of the base to the
rear of the base.
Moving the location of the tether connection, in addition to generally lacking
novelty and inventive step, is nothing more than a mere variation in the method of
known methods of tethering car seats.
(d) Claims 1 to 8 do not define patentable subject matter as each of the features
recited in these claims is known in light of the common general knowledge in the
art in Australia at the relevant priority date of the claims, and/or from any one of
the documents identified above. As such, the alleged invention as defined in each
of the claims does not define patentable subject matter.
(e) Claims 1 to 8 do not define patentable subject matter. The invention as claimed
was common general knowledge of the person skilled in the art and contributes to
the ground that the alleged invention does not define a manner of new manufacture
as the alleged invention consists of nothing more than a mere collocation of
known integers.” (SGP, section 2.2 “Manner of manufacture”, emphasis added)152. I find that the above statements could benefit from some further clarification. For
example, point (d) appears to be conflating novelty and inventive step on one hand with manner of manufacture on the other. During the hearing, as best understood, the Opponent clarified that given the device of document D6 (which the Opponent considers part of the common general
knowledge), on the face of the specification, it appears that the alleged invention resides in
moving the tether connection from the front to the rear of the base unit (however the Opponent
does not consider this to be defined in the claims), in which case the invention claimed in claim 1
is a mere collocation of known integers since each of the features of claim 1 are known from the
device of document D6.
155. Returning to the section 2.2 of the SGP quoted above, I have not established that any one
directions by being “a mere variation in the working of an existing child safety seat [i.e. the
device of document D6 as clarified at the hearing]”. In addition, despite the Opponent’s assertion
that “[t]here is no admission that any features of the pending claims are novel or inventive over
the common general knowledge of the skilled addressee considered alone or in combination with
prior art documents D1 to D5 identified above”, I have no reasons to conclude that the
specification, on its face, does not contain the prerequisite inventiveness so as to be describing at
least an alleged invention (following NV Philips Gloeilampenfabrieken v Mirabella International
153. I have already established that the carry cot described in document D6 is not untethered
and that child safety seats having untethered carry cots were not part of the common general
knowledge in the art. While I note that the carry cot of document D1 may appear to be
untethered, a mere collocation (as distinct from a patentable combination) requires the absence of
any working interrelationships or potential working interrelationships between the known integers
of the claim. In Advanced Building Systems Pty Limited v Ramset Fasteners (Aust) Pty Limited
[1998] HCA 19, the High Court noted at [12]:
“Each of the claims in the Patent is for an apparatus which comprises a combination of elements or integers. In Welch Perrin & Co Pty Ltd v Worrel, this Court (Dixon CJ, Kitto and Windeyer JJ) considered the validity of a patent for an invention for a mechanical hay rake. Referring to the specification, their Honours said:
‘It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing.’
This notion of a ‘new thing’ includes a new result, ‘that is, a new way of achieving an old purpose or the fulfilment of a new purpose’, and ‘a new combination of features to obtain an improved result’. The significance of the exclusion of a ‘mere collocation of separate parts’ appears from the statement by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd that it is ‘the interaction’ between the integers which is ‘the essential requirement’. It is this which supplies the inventive step and denies an allegation of lack of subject-matter in the case of a valid combination patent.” (reference(s) omitted)
154. On purposive construction, I consider that the integers of claim 1 (being parts of the
rearward facing child safety seat defined in the claim) clearly exhibit working interrelationships. For example, I have already considered the meaning of “an untethered carry cot” and concluded that, in the context of the claim, the carry cot is untethered if certain conditions are satisfied in
use, i.e. with the base unit positioned on a vehicle seat and tethered to the vehicle anchorage point using the tether, and the carry cot received within the base unit and lockably engaged with it. The Opponent does not appear to have put sufficient emphasis on establishing the absence of
(potential) working interrelationships between the integers of any one of the claims.
of the claims is obvious, hence the claimed invention cannot be in the category of mere working the claimed invention is not a manner of manufacture.
Full Description and Best Method under Paragraph 40(2)(a)
156. A succinct expression of the relevant test for full description can be found in Kimberly- Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25]:
“The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?” (reference(s) omitted)
157. The grounds of opposition under paragraph 40(2)(a) are particularised in the SGP, section 2.6 “Sufficiency and best method”, which I have reproduced below in its entirety:
“(a) The complete specification does not describe the invention fully, and does not disclose the best method known to the applicant of performing the invention. No details are provided in relation to the ‘engagement members 25’ and how ‘the carry cot is configured to lockably engage the horizontal portion of the base unit’ as defined in claims 1, 2, 5 or 6.
(b) The complete specification does not describe the invention fully, and does not disclose the best method known to the applicant of performing the invention. No details are provided in relation to the ‘the carry cot is rotationally movable with respect to the base about a central axis’ as defined in claim 7 or ‘wherein the carry cot is tiltable with respect to the base unit’ as defined in claim 8.”
158. Referring to the evidence on file, the Opponent summarises their reasoning in the section
11 “Best method” of the Opponent’s Summary, which I have also reproduced below in its
entirety:
“As stated in Mr Akbarian’s declaration at paragraph 32 ‘the broadest form of the invention, which I describe in paragraph 28 is a concept more than a design’ (our emphasis). Given the applicant’s proficiency in designing and manufacturing child restraints, as one of the larger child restraint companies in Australia, it would appear that the applicant has not disclosed the best method known to them at the filing date of 1 February 2011 for performing the invention. As outlined in Mr Duke’s declaration #2 at paragraphs 6 to 11 and 29, there are clear inconsistencies between the Figures in the opposed application and a general lack of detailed description disclosing how the invention is to be realised. Most importantly, as outline [sic] in paragraph 29 on [sic] Mr Duke’s declaration, ‘Given that the carry cot is completely untethered, in order to be a “child safety seat” the securing of the carry cot to the base unit is the most functionally important element’ … ‘I would have to completely develop from scratch an interaction between the carry cot and the base unit.’” (original emphasis)
159. Indeed, at [29] of Duke-2, Mr Duke states (emphasis added):
“I was asked whether I could take the specification and implement the invention without further design work. I do not consider that there is enough explanation to allow me to produce this product without a substantial amount of further design work. I would have to completely develop from scratch an interaction between the carry cot and the base unit. Given that the carry cot is completely untethered, in order to be a ‘child safety seat’ the securing of the carry cot to the base unit is the most functionally important element.”
160. In my discussion of document D6, I noted that Mr Duke considers that the carry cot
described in this document “is not connected to the tether”, which would mean
“untethered” (following his explanations of this term as discussed earlier in my decision). I am
not presented with any evidence that “completely untethered” is any different from simply
“untethered”, hence I find it difficult to understand Mr Duke’s concerns that he “would have to
completely develop from scratch an interaction between the carry cot and the base unit” because
“[g]iven that the carry cot is completely untethered, … the securing of the carry cot to the base
unit is the most functionally important element”. Following Mr Duke’s interpretation of
document D6 (i.e. that the carry cot is untethered), it would not be unreasonable to assume that
“the securing of the carry cot to the base unit” would be equally important for the device of
document D6. Then, it is unclear to me why, for example, Mr Duke would be unable to use the
interaction between the carry cot and the base unit of the device of document D6 at least as a
starting point to “produce something within [claim 1] without new inventions or additions or
prolonged study of matters presenting initial difficulty”.
161. It appears that Mr Duke’s main concern is with respect to the engagement members
described in the specification (but not defined in claim 1):
“There is no indication from any of the Figures or the detailed description how the engagement members work. The Figures are not showing engagement members that are readily known by me. As mentioned at points 6 and 8 above, there are a number of different engagement members shown. Perhaps they are represented diagrammatically, but the nature and functionality of them are not explained.” (Duke-2 at [10])
162. In that respect, the specification describes:
“As is shown in Figures 1, 2 and 4 the base unit 14 has a plurality of engagement members 25 formed thereon. The engagement members 25 project from a surface of the base unit 14 and are configured to be received in recesses (not shown) formed in the carry cot 12 so as to lock the carry cot 12 in position against the base unit 14. The engagement members 25 are configured such that as the carry cot 12 is lowered into position against the base unit 14, the engagement members align with the corresponding recesses in the carry cot to facilitate locking of the carry cot 12 in position. The engagement members 25 and/or the recesses may be releasably disengaged through an appropriate releasing mechanism provided on the child safety seat 10 to facilitate controlled release and removal of the carry cot with respect to the base unit. In another form, the engagement members 25 may be adjustable in position to enable the child safety seat to be readily adapted to suit different types of vehicles and seating positions.” (page 7, lines 14-25)
166. In addition, while “a substantial amount of further design work” might potentially indicate
the discussion in the paragraph immediately above, it is not entirely clear to me what exactly
163. Based on the above explanation, I cannot agree that “the nature and functionality of [the
engagement members] are not explained”. The specification is clear that “[t]he engagement
members 25 project from a surface of the base unit 14 and are configured to be received in
recesses (not shown) formed in the carry cot 12”.
164. On the same issue, Mr Akbarian states:
“I was asked whether I would be able to implement the invention without further design work. The broadest form of the invention, which I describe in paragraph 28 is a concept more than a design. It includes an altered tethering arrangement which is clearly described in the Opposed Patent as extending from the substantially vertical portion of the base unit to a vehicle anchorage point (see, for example, page 6, line 27 to page 7, line 13, and see also Figures 4 and 5) of the Opposed Patent. The process of executing the concept of the Opposed Patent would need to be followed in the normal way for a child restraint to be realised, and to that extent some further design work may be needed including choosing the base unit and carry cot materials from those described in the patent, choosing the form of the engagement members for lockably engaging the carry cot to the base unit from those described in the patent (eg. projections/male portions and recesses/ female portions) or otherwise known, choosing colour schemes and cushion materials.” (Akbarian at [32], emphasis added)
165. Both Mr Duke and Mr Akbarian agree that further design work would be needed, however I do not consider that the important question about the amount and complexity of this further design work is clearly answered. While Mr Akbarian appears to consider this as part of the “normal way”, Mr Duke states: “I do not consider that there is enough explanation to allow me to produce this product without a substantial amount of further design work” (Duke-2 at [29] as quoted above, emphasis added). I find that Mr Duke’s exact wording deserves some attention. While I appreciate that this wording might have been prompted by the words of the question he was asked (Duke-2 at [29] as quoted above), I must emphasise that the patent specification is not comprehensive technical documentation, complete with detailed engineering drawings and specifications, for the production of a specific product. Instead, and in accordance with well- established law, it describes the invention with reference to exemplary embodiments. Many different products would fit within the scope of the claims. Similarly, I consider that Mr Duke’s criticism of inconsistencies between the drawings as mentioned by the Opponent (see e.g. Duke-2 at [6]) would be more appropriate if it were directed to a set of precise engineering drawings. In general, the drawings in a patent specification are nothing more but illustrations to assist the understanding of the inventive concept.
possible insufficiencies in the description, I note that this is not the proper test. Firstly, in light of detailed technical documentation, or something else). Secondly, and again as a matter of law, a substantial amount of further routine design work does not necessarily mean that the description is deficient.
167. Based on the above analysis, I do not consider that the evidence on file is sufficient to justify a finding of lack of full description.
168. With respect to the disclosure of the best method of performing the invention known to
the Applicant, I note that following the above discussion on full description, it appears that the specification does disclose a method of performing the invention. I am not presented with any evidence that a better method was known to the Applicant at the time of filing the Application. I
find the Opponent’s statement that “[g]iven the applicant’s proficiency in designing and
manufacturing child restraints, as one of the larger child restraint companies in Australia, it
would appear that the applicant has not disclosed the best method known to them at the filing
date of 1 February 2011 for performing the invention” somewhat speculative in nature.
169. In summary, I am not satisfied that the Opponent has established that the invention is not
fully described or that the best method of performing the invention known to the Applicant is not
disclosed.
Conclusion and Costs
170. As I already mentioned, document D1 is not in evidence. In this decision, I have
considered the information contained in this document and provided a comprehensive discussion of its disclosure with respect to the relevant grounds of opposition. Based on this consideration, I conclude that the document does not have the potential to change the outcome of the opposition
in a significant way. Therefore, I can see no reason to introduce document D1 into the opposition
under the provisions of regulation 5.23.
171. I have found that the claims are not fairly based on the matter described in the
specification, hence the opposition is successful. In particular, I have found that all claims are not
fairly based because they omit the required positional arrangement of the substantially vertical
portion and the substantially horizontal portion of the base unit with respect to the vehicle seat. I
have also found that claim 7 is not fairly based due to the presence of the feature of the carry cot
being rotationally movable with respect to the base.
172. However, I have not established that the invention defined in any one of the claims is not
novel or does not involve an inventive step. I have also not established that the claimed invention
is not a manner of manufacture. In addition, I have not established that the invention is not fully
described or that the best method of performing the invention known to the Applicant is not
disclosed.
173. I consider that the above identified deficiency can be overcome by suitable amendments
to the specification, hence I consider it appropriate to give the Applicant an opportunity to
propose such amendments.
174. It is a normal practice that the cost should follow the event and the parties’ submissions
were also along these lines. I note that the Applicant amended the claims during the opposition period, however this minor wording amendment was not material to the opposition. In addition, the opposition is successful on the sole ground of fair basis which was not raised by the
Opponent, but taken into account under the provisions of subsection 60(3). Therefore, I consider it appropriate not to make an award of costs.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents
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