Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd - [2019] APO 9

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd [2019] APO 9

Patent Application: 2012238254

Title:Child restraint for a vehicle

Patent Applicant: HBG IP Holding Pty Ltd

Opponent: Dorel Australia Pty Ltd

Delegate: Dr W.E. Guinea

Decision Date: 22 February 2019

Hearing Date: 11 December 2018, in Canberra

Catchwords: PATENTS – s59 – novelty – inventive step – manner of manufacture – no grounds made out – opposition unsuccessful – split award of costs

Representation: Counsel for the applicant: Andrew Fox
Patent attorney for the applicant: Kerry Chrysiliou of Chrysiliou IP
Counsel for the opponent: Ian Horak
Patent attorney for the opponent: Danetta Crump of FPA Patent Attorneys Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2012238254

Title:Child restraint for a vehicle

Patent Applicant: HBG IP Holding Pty Ltd

Date of Decision: 22 February 2019

DECISION

The Opposition is unsuccessful. None of the grounds of opposition were made out.

Subject to any appeal, I direct that the opposed application should proceed to grant.

I award costs according to schedule 8 against the Applicant, HBG IP Holding Pty Limited, up to 1 September 2017. I award costs according to schedule 8 against the Opponent, Dorel Australia Pty Ltd, from 1 September 2017 onwards.

REASONS FOR DECISION

Background

Patent application 2012238254 (the “application”) was filed on 9 October 2012. Examination was requested on 12 April 2013, and the application was advertised as accepted on 22 September 2016. The application has an earliest priority date of 9 October 2012. The applicant is HBG IP Holding Pty Ltd (the “Applicant”)
A notice of opposition to the application, under s59 of the Patents Act 1990 (the “Act”), was filed by Dorel Australia Pty Ltd (the “Opponent”) on 22 December 2016. The Opponent filed a statement of grounds and particulars on 22 March 2017.
On 12 May 2017 the Applicant filed voluntary amendments under s104 of the Act. These amendments were to the claims only. Ultimately these amendments were allowed on 1 September 2017.
The filing of evidence in support (“EIS”) was completed on 18 August 2017. This consisted of:
·    a first declaration by Mr William Hunter (“Hunter1”), dated 1 June 2017;
·    a second declaration by Mr William Hunter (“Hunter2”), dated 5 June 2017;
·    a third declaration by Mr William Hunter (“Hunter3”), dated 1 August 2017;
·    a fourth declaration by Mr William Hunter (“Hunter4”), dated 18 August 2017;
·    supporting exhibits BH-1 to BH-12 accompanying Mr Hunter’s declarations; and
·    a declaration by Mr Alan Tanner (“Tanner”), dated 11 August 2017, with supporting annexures AT-1 to AT-5.
The filing of evidence in answer (“EIA”) was completed in part on 1 December 2017. This consisted of:
·    a declaration by Mr Peter Miller (“Miller”), dated 30 November 2017, with supporting annexures PDM-1 to PDM-4;
·    a declaration by Mr Derek Wainohu (“Wainohu”), dated 1 December 2017, with supporting annexures DW-1 and DW-2;
·    a declaration by Ms Kerry Chrysiliou (“Chrysiliou”), dated 1 December 2017, with supporting annexures KC-1 to KC-16; and
·     supporting annexures RH-1 to RH-13 and RH-15 to RH-21.
The Applicant also filed the following evidence outside the period allowed for EIA:
· a declaration by Mr Richard Horsfall (“Horsfall”), dated 1 December 2017, with supporting annexures RH-14(1) and RH-14(2); and
· supporting annexures KC-17 to KC-22.

Ultimately an extension of time was granted under Reg 5.9, meaning that these also form part of the EIA.

The filing of evidence in reply (“EIR”) was completed on 9 March 2018. This consisted of:
· a second declaration by Mr William Hunter (“Hunter2”), dated 8 March 2018, with supporting annexures BH-13 to BH-15.
Both parties filed written summaries of submissions. The Opponent filed their written submissions (the “Opponent’s written submissions”) on 27 November 2018, while the Applicant filed their written submissions (the “Applicant’s written submissions”) on 4 December 2018.
The Applicant’s written submissions noted some deficiencies, in terms of particulars, in the statement of grounds and particulars (“SGP”) in view of the amendments made to the claims. On 10 December 2018 the Opponent filed proposed amendments that addressed the deficiencies. The Applicant did not make any substantive opposition to the proposed amendments at the hearing and I am satisfied that no principles of natural justice have been breached via the proposed amendments to the SGP. I hereby formally allow the proposed amendments to the SGP.

10. Hereinafter where I refer to the SGP, it is to the SGP as amended unless otherwise indicated.

The Invention as Described

11. The invention for this application relates to a child restraint for a vehicle. The application notes that such restraints in the form of child safety seats are mandated by law in most countries. It is noted that there are a variety of such seats known in the art for accommodating children of various ages and sizes. The description then observes that the way in which child safety seats are secured varies in different countries. Until recently the mode of securement in Australia comprised use of a vehicle’s lap or lap/sash seat belts, these being threaded through a dedicated path in the child safety seat. A top tether strap, which engages with a vehicle anchor point, may also be used to secure the upper part of the child safety seat.

12. More recently alternative systems for securing child safety seats has been introduced to Australia. These are known as the ISOFIX or LATCH (Lower Anchorage and Tethers for Children) systems. In these systems a pair of anchor points are provided in the bite of the seat such that there is no need to utilise the lap or lap/sash seatbelt in securing the child safety seat.

13. A difficulty that arises from the above is that both the lap/lap-sash and ISOFIX/LATCH securing means is available to users. As noted in the description at page 2, lines 12 to 20, this means that:

“Where such a dual means for restraint exists, challenges arise for child safety seat manufacturers to provide a child restraint that is able to be used with a vehicle seat belt and a LATCH system which is easy to use and offers the benefits of both systems.
Thus, there is a need to provide a child restraint that accommodates a variety of restraining devices in a simple and convenient manner. Further, there is a need to provide a child safety seat that provides a common path for securing the child safety seat in position in either a forward or rearward facing manner, irrespective of the orientation of the safety seat.”

14. The invention as described proposes a number of embodiments to deal with the above issue. These relate to a child safety seat wherein attachment means are centrally located and/or is configured to accept lap/lap-sash belts or ISOFIX/LATCH belts. The nature of the invention as disclosed is best understood by by reference to figures 2 to 6, which are reproduced below.

15. Figures 2 and 3 illustrate a child safety seat 20 in accordance with an embodiment of the invention as described. The child safety seat 20 comprises a seat shell 22 and a base 24. The seat shell 22 comprises a pair of dedicated attachment means 30 in the form of semi-circular apertures 31. The dedicated attachment means 30 accommodates securing the child safety seat 20 using either a lap/lap-sash belt 40 (see figure 6 in particular) or an ISOFIX/LATCH belt 12 and is also centrally located in the seat shell 22 so as to provide the same path for a securing strap when the child safety seat 20 is used in either a frontward (figure 2) or rearward (figure 5) facing mode.

16. The dedicated attachment means 30 can include a pivotally mounted cover 32. This can close over the ISOFIX/LATCH belt 12or lap/lap-sash belt 40 to securely lock the straps in place. For this purpose the cover 32 may comprise a lug 33 which applies a force against the ISOFIX/LATCH belt 12or lap/lap-sash belt 40.

The Claims

17. The application as amended comprises 12 claims of which claims 1 and 10 are independent, while claim 9 is an omnibus claim. The claims are reproduced below.

“1. A child safety seat configured for use in each of a forward and rearward position, in a
vehicle, the child safety seat comprising:
a seat shell having a front and a rear, and opposing side walls, the seat shell configured to receive a child therein, each side wall having one only attachment means being an aperture having a continuous boundary defined by the sidewall and located substantially midway between the front of the seat shell and the rear of the seat shell, each aperture configured to receive a restraining strap in each of the forward and rearward positions so that in use the restraining strap extends across the seat shell to facilitate securement of the seat shell to a vehicle seat.

2. The child safety seat according to claim 1, wherein the restraining strap is a vehicle seat belt.
3. The child safety seat according to claim 2, wherein the vehicle seat belt comprises a lap and sash belt combined together.
4. The child safety seat according to claim 2, wherein the vehicle seat belt comprises a lap belt.
5. The child safety seat according to claim 1, wherein the restraining strap is a length of strap having an engagement member located at or adjacent each end thereof, each engagement member being configured to engage with an anchor point provided in a bight of the vehicle seat.
6. The child safety seat according to claim 5, wherein each engagement member engages with its corresponding anchor point on each opposing side of the seat shell to secure the seat shell to the vehicle seat.
7. The child safety seat according to claim 1, further including a base configured to receive the seat shell.
8. The child safety seat according to claim 1, wherein a clip or retaining member is mounted within the aperture to engage with the restraining strap to substantially secure the restraining strap in position with respect to the aperture so as to prevent sliding movement of the restraining strap when the clip or retaining member is engaged therewith.
9. The child safety seat substantially as hereinbefore described with reference to any one of Figures 2, 4, 5 and 6.
10. A child safety seat configured for use in each of a forward and rearward position, in a vehicle, the child safety seat comprising:
a seat shell having a front and a rear, and opposing side walls, the seat shell configured to receive a child therein, each side wall including an aperture having a continuous boundary defined by the sidewall and located substantially midway between the front of the seat shell and the rear of the seat shell , each aperture configured to receive a restraining strap, being a vehicle seat belt, in each of the forward and rearward positions so that in use the restraining strap extends across the seat shell to facilitate securement of the seat shell to a vehicle seat.

11. The child safety seat according to claim 10, further including a base configured to receive the seat shell.
12. The child safety seat according to claim 10, wherein a clip or retaining member is mounted within the aperture to engage with the restraining strap to substantially secure the restraining strap in position with respect to the aperture so as to prevent sliding movement of the restraining strap when the clip or retaining member is engaged therewith.”

The Opposition

18. In the SGP the Opponent pursued grounds under:

· s18(1)(a) – none of the claims are for a manner of manufacture;
· s18(1)(b)(i) – none of the claims are novel; and
· s18(1)(b)(ii) – none of the claims comprise an inventive step.

19. With regard to novelty, claims 1 to 12 were asserted, in the SGP and in the Opponent’s written submissions, as lacking novelty in view of each of the following:

· D1: IGC (Australia) Pty Ltd, GoSafe Child’s Convertible car seat User Manual;

· D2: AU 2003227330 A1; and
· A1: manufacture, use, display, offering to sell, sale, public disclosure and distribution in Australia since 2002 by IGC (Australia) Pty Ltd and Dorel Australia Pty Ltd of the GoSafe Child’s Convertible car seat.

20. At the hearing Mr Horak indicated that the Opponent was abandoning the novelty attack against claims 1 to 9 in view of D1, D2 or A1. The allegation of lack of novelty against claims 10 to 12 in view of these documents was maintained.

21. With regard to inventive step the SGP asserted that each of claims 1 to 12 were lacking inventive step in view of each of the following:

·     the common general knowledge (“CGK”) in the art in Australia at the priority date;
·     any one of D1, D2 or A1 when combined with the CGK;
·     any combination of D1, D2 and A1 with the CGK.

22. However, in the Opponent’s written submissions, and at the hearing, the Opponent has only pressed lack of inventive step in view of CGK alone or in view of CGK when read with each of D1, D2 and A1. Consequently, I will not consider all possible combinations of D1, D2 and A1 as asserted in the SGP.

Onus of and Standard of Proof

23. As examination was requested prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the opposed application. As such the previous burden of proof applies to this opposition, namely that the Opponent will only succeed if they can convince the Commissioner that it is clear or practically certain that the patent if granted will be invalid; see F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17].

Who is the Skilled Addressee?

24. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the CGK in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular, in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”

25. I consider that the skilled addressee is a person or team of persons involved in the designing and/or construction of child safety seats.

26. At the hearing, and in their written submissions, both parties presented arguments as to why their respective declarants were better able to represent the skilled addressee.

27. The Opponent cited Mr Hunter’s tertiary qualifications, depth of experience in mechanical engineering and his experience in crash simulation of child car seats as qualifying him as being able to represent the skilled addressee. In contrast, the Opponent noted that all of the Applicant’s declarants, and Mr Horsfall in particular (being the inventor of the application and director of an entity related to the Applicant), are associated with the Applicant or related entities, which, it was argued, affects the weight to be given to the evidence provided by the Applicant’s declarants. The Opponent also observes that the Applicant’s declarants lack tertiary qualifications equivalent to Mr Hunter’s (Opponents written submissions at [12] to [13]).

28. At the hearing Mr Horak provided some qualifications to the Opponents’ written submissions. In this respect Mr Horak conceded that Mr Wainohu had relevant qualifications, however he highlighted the alleged limited nature of Mr Wainohu’s evidence in response to Mr Hunter, as well as his employment by the Applicant. Mr Horak characterised Mr Horsfall’s evidence as being central to the Opponent’s case and emphasised Mr Horsfall’s lack of independence and qualifications in comparison to Mr Hunter. It was argued that as such Mr Hunter’s evidence should be given greater weight than Mr Horsfall’s. In view of this the Opponent argues that Mr Hunter’s evidence should be preferred where there are disputes on technical matters.

29. In their written submissions (at [64]) the Applicant argued that the skilled addressee…

“…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. Mr Hunter does not meet these requirements. He had no relevant experience in designing child restraint systems in the period from at least 17 years before the Priority Date.”

30. Mr Fox reiterated the above at the hearing. He also accepted the limited nature of Mr Wainohu’s evidence.

31. I have reviewed the qualifications and experience of the putative expert declarants (Mr Hunter, Mr Horsfall and Mr Wainohu) and I consider that each has qualifications and/or experience that allows them to represent what a skilled addressee would know or do, at least in certain respects. Clearly each of these declarants comprise varying qualifications and experience and degrees of independence from the parties. This may well be of of some import with respect to certain findings of fact that I need make throughout this decision. However, I consider that this is best addressed, if necessary, in the weighing up of the evidence where I need to make findings of fact, rather than at this point in the decision.

32. For the sake of completeness, I note that the other declarants (Mr Tanner, Mr Miller and Ms Chrysilou) depose with respect to rather more limited matters in terms of what the skilled addressee would know or do and/or simply place further material into evidence.

Novelty

33. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):

“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.”

34. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:

“…if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”

Consideration of Novelty in view of the Prior Art

35. I will now consider whether any of D1, D2 and A1 deprive one or more of claims 10 to 12 of novelty.

A1 (Prior Use)

36. A1 comprises alleged prior use of the GoSafe Child’s Convertible car seat (“GoSafe seat”), which has been placed into evidence via exhibits BH-3 and AT-1. Save for some mark-up provided by Mr Hunter, these exhibits are identical and comprise a series of photos of the GoSafe seat. I note that some of the figures of BH-3/AT-1 are repeated in BH-7, where Mr Hunter further annotates these figures in relation to his novelty table in BH-9.

37. The GoSafe seat comprises a child safety seat which is usable in a rearward facing manner (for children up to 9kg) and in a forward facing manner (for children more than 9kg). The features of A1 are best understood by reference to photographs A, B, D, E, F and G from BH-3, which are reproduced below. Annotation by Mr Hunter is given in green.

38. From the photographs it can be understood that the vehicle seat belt is used to secure A1, both in forward and rearward facing modes, using the apertures or slots labelled as “primary belt path” by Mr Hunter. The apertures labelled “alternate belt path” by Mr Hunter are for use in forward facing mode only as an alternative to the primary belt path. Photograph G makes it apparent that the version of A1 viewed by Mr Hunter was manufactured before the priority date. Although this is not necessarily sufficient per se to establish novelty in terms of prior use, it is unnecessary for me to consider this issue in detail for reasons that will become apparent.

39. It is clear that A1, as outlined in BH-3/AT-1, discloses most of the features of claim 10. However, it is not immediately apparent that the apertures of the primary belt path are “…located substantially midway between the front of the seat shell and the rear of the seat shell”. To determine whether this is the case or not I need consider the proper construction of “the front of the seat shell”, “the rear of the seat shell” and “substantially midway” as defined in claim 10. I will consider these now below.

40. In this regard the Macquarie Dictionary (Macquarie Dictionary Online, 2018, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, provides several definitions of “front” of which the following is the most relevant for present purposes:

“noun 1. the foremost part or surface of anything.

Similarly the most relevant definition of “rear” from the Macquarie Dictionary is the following:

“noun 1. the back of anything, as opposed to the front.”

41. Consequently, I take the front of the seat shell to be the most foremost point of the seat shell, while conversely the rear of the seat shell is the hindmost point of the seat shell.

42. There is some ambiguity as to what constitutes the “front” and “rear” of the seat shell, as the claim defines a convertible car seat, i.e. one that can be used in either a forward or rearward position. However, I consider that the nomenclature of “forward” and “rearward” positions in the claim is indicative, in the ordinary course of use in the English language, that the front of the seat shell should be understood as the most forward point of the seat shell when used in a forward facing position. This is supported in the specification wherein it is apparent that the dedicated attachment means 30 is described and illustrated (especially in figure 2) as being centrally located in the safety seat when in a forward facing position.

43. In view of the above I have construed the front of the seat shell to be that part of the seat shell which is foremost when used in a forward position, while the rear of the seat shell is the hindmost part of the seat shell when used in a forward position. I note that this interpretation largely coincides with Mr Hunters as best understood from [13b] and [13f] of his third declaration, and as outlined in the Opponent’s written submissions at [59] to [60]. This also accords, in effect, with the interpretation taken by Mr Horsfall (at [76] of his declaration) and Mr Wainohu (at [4] of DW-2), this being that the front or rear of the safety seat is determined by the direction the child is facing.

44. Mr Horsfall disagrees with Mr Hunter’s construction of the “front” and “rear” at [76] of his declaration. However, these disagreements appear to be based on some apparent inconsistencies between [13b] and [13f] of Hunter3 (which I do not consider to materially affect Mr Hunter’s construction when properly understood), and on Mr Horsfall’s own interpretation of the “front” and the “rear” of the safety seat. In this regard it is apparent that Mr Horsfall’s disagreement with Mr Hunter is not so much how “front” and rear” is determined in a directional sense as to how much of the safety seat comprises the “front” and “rear”. In particular Mr Horsfall’s marking up of the “front” and “rear” of the safety seats from RH-14 would appear to be based on an arbitrary determination of where the internal boundary of the “front” and “rear” portions of the safety seat reside, which is so subjective as to prevent reasonable determination of the ambit of the claim. I also note that Mr Horsfall has not explained how he arrived at the internal boundaries for the “front” and ‘rear” portions. Consequently, while I accept Mr Horsfall’s understanding of how “front” and “rear” are determined in a directional sense, I reject his interpretation as to the extent of the “front” and “rear” portions.

45. I note that the Applicant did not make detailed representations on claim construction, merely noting that none “…of the words, terms of phrases appearing in the claims have a special or technical meaning, or are terms of art…The Applicant says that the words ‘located substantially midway between the front of the seat shell and the rear of the seat shell’ are to be given their ordinary English meaning” (Applicant’s written submissions at [26], italics in original).

46. With respect to “substantially” midway I take this to mean that the aperture is more or less, within a reasonable degree of tolerance, located halfway between the front and rear of the seat shell as construed above. There is, of course, inherently a degree of imprecision in what constitutes “a reasonable degree of tolerance” or “substantially” midway. However, the use of “substantially” is acceptable as long as it conveys the necessary meaning; see Leonardis v Sartas [1996] FCA 449 at 13. In the present case I take the use of “substantially” to indicate that small deviations from the geometric midpoint are allowed as long as they still allow for the securement of the child safety seat in either of the forward or rearward positions, this being the entire point of the aperture as discussed in the opposed application To be clear I observe that the mere fact that an aperture can be used for fitment in either a forward or rearward facing position does not necessarily mean that it can be considered as being substantially midway; to fall within the scope of the claim the aperture need be reasonably understood as being substantially midway. To do otherwise would be to render the phrase substantially midway as substantially meaningless.

47. Having construed the relevant terms above it can be seen that A1, even considering the fact that the shell in BH-3 is covered, does not comprise an aperture that is located substantially midway between the front of the seat shell and the rear of the seat shell as defined in claims 10 to 12. Mr Hunter argues at page 5 of BH-9 (in discussing figure 1 of BH-7) that this feature is disclosed in A1 as:

“On Figure 1, which shows the seat in the forward facing orientation, I have marked the front and the rear of the seat shell. I have also applied the same interpretation to identifying ‘substantially midway’ as outlined in section 13f) of my declaration: 0.5xwidth+/-10%, which creates a blue band area.
Aperture #1 does not lie wholly within the blue band area.
Approximately 1/3 of the aperture is located within the blue band area and therefore 1/3 of the aperture is substantially midway between the front of the seat shell and the rear of the seat shell.
From a functional perspective, the aperture is defined by a sideways V shape, with a semi-circular rear end. In the forward facing orientation, the seat belt webbing sits against the semi-circular rear end. In use, the semi-circular rear end and the seat belt webbing is located within the blue band area and is therefore located substantially midway between the front and rear of the seat shell in the forward facing orientation.”

48. The difficulty I have with this assessment is that is adding additional qualifiers to the construction of the claim that simply are not present upon a fair reading of the same. The claim requires the aperture to be located substantially midway between the front and the rear of the seat shell, not that part of the aperture is so or that the belt webbing is located substantially midway in use. In this regard I note that the aperture of A1 is not even substantially midway according to Mr Hunter’s interpretation of a 10% tolerance for his feature as outlined at [13f] of Hunter3, let alone in view of the construction I have taken above. Consequently I disagree with Mr Hunter’s assertions in relation to A1 and the aperture being located substantially midway.

49. In view of the above I cannot be practically certain that A1 deprives any of claims 10 to 12 of novelty.

50. D1 has been put into evidence as BH-4/AT-2, which are identical. D1 comprises the associated user manual for alleged prior use A1. Consequently, the disclosure and nature of D1 is virtually identical to that of A1 and need not be repeated here.

51. It also follows that D1 cannot anticipate any of claims 10 to 12 for the same reasons as given above with regard to prior use A1.

52. D2 has been put into evidence as BH-10. D2 relates to providing a system for mounting child safety seats in a vehicle without the need for using seatbelts. In particular D2 states that:

“It is the object of this invention therefore to provide a system and a method of mounting a strap by which a connecting strap can be used for either rearward or forward facing seats but not be removable from the seat.” (page 3, lines 1 to 3).

53. The most relevant embodiment of D2 for present purposes is illustrated in figure 5, which is reproduced below.

54. As can be seen from figure 5, the child car seat 31 comprises a rear belt path 34, a front belt path 33 and a separate belt path 30. A strap 36 extends from either side of the separate belt path 30 and is held within the separate belt path 30 by a rivet or the like (not shown on the figure), or alternatively the dimensions of the separate belt path 30 may such that length adjusters 38 and latches 37 cannot pass through the separate belt path 30, thus preventing removal of strap 36 from the child car seat 31. The strap 36 also comprises latches 37 at either end for securing the child seat 31 via engagement with latch bars (not shown). In use the strap ends are passed from each side of the seat such that they cross over and extend out the opposite side of the child car seat 31. In particular the front belt path 33 is used when the seat is in a rearward facing mode while the rear belt path 34 is used when in a forward facing mode.

55. While D2 discloses many features of claim 10, I do not consider that it discloses that each aperture configured to receive a restraining strap, being a vehicle seat belt. The reason for this is that the relevant apertures (necessarily defined by separate belt path 30) define a path for a strap 36 that is disclosed as being unable to be removed from the separate belt path 30 (either via being secured by a rivet or the like in the separate belt path 30, or the length adjusters 38 and latches 37 being too large to be removed from the separate belt path 30). That is, it is apparent that the strap 36 cannot be a vehicle seatbelt, and indeed the whole point of the disclosure of D2 is to allow for the securing of a child car seat without using vehicle seatbelts at all. Given this I fail to see how the apertures concerned are in any way configured to receive a restraining strap, being a vehicle seat belt.

56. Mr Hunter provides a novelty table in BH-12 that purports to demonstrate that claim 10 lacks novelty in view of D2. However, Mr Hunter’s table fails to appreciate the claim language with respect to the restraining strap being a vehicle seat belt. Rather Mr Hunter simply cites the strap 36 and the relevant apertures without appreciating the nature of these discussed above. Consequently, I do not agree with Mr Hunter’s or the Opponent’s assertions of lack of novelty with respect to claim 10.

57. In view of the above I cannot be practically certain that any of claims 10 to 12 lack novelty in view of D2.

Novelty – Conclusion

58. I am not satisfied that any of claims 10 to 12 lack novelty in view of the prior art cited by the Opponent. This ground of opposition is unsuccessful.

Inventive Step

59. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:

“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;

being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”

60. Although not expressly referred to in the 1990 Act, it has been accepted by the authorities that lack of inventive step in the 1990 Act is commensurate with the previous concept of obviousness under the 1952 Act (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”

61. The test outlined in Wellcome Foundation is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so called problem-solution approach, which I will use in determining the inventiveness of the claims below.

The Problem

62. The application, in general terms, deals with a number of difficulties related to the use of a convertible safety seat in the context of the availability of both vehicle seat belts and LATCH/ISOFIX systems for securement of the convertible safety seat. It is apparent from the opposed application, especially in discussing prior art figure 1, that some difficulty lies with confusion as to which belt path should be used where the convertible child seat can be secured using either a vehicle seat belt or a LATCH/ISOFIX system.

63. Consequently, one could take the problem to be solved to relate to how to help ensure the correct restraint path is utilised where a convertible car seat can be secured using either a vehicle seat belt or a LATCH/ISOFIX system. However, I note that the claims have been amended since acceptance. In effect new claim 10 recites positive use of a vehicle seat belt for restraining purposes (the fact that the convertible safety seat is configured to receive a restraining strap, being a seat belt, that in use extends across the seat shell to facilitate securement of the seat indicates this). As such claim 10 would no longer solve this problem, and thus it is necessary to amend the problem to one that would be solved by all the claims.

64. Therefore, I consider that the problem to be solved is “how to help prevent incorrect vehicle seat belt threading for child safety seats that are convertible between a rearward facing and a forward facing mode”. It is apparent that all the claims solve this problem.

65. I note that this essentially coincides, as best understood, with the problem put forward by the Applicant at [64] of their written submissions. The fact that this problem was well known in the art is evidenced by Miller at [13] to [18] and exhibits KC-4 to KC-12. It is thus apparent that the problem as I have formulated it does not breach the principles outlined in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202] to [203] (“AstraZeneca”).

66. The Opponent appears to put forward two different problems throughout their written submissions. The first is evident at [35] and [94], and is the problem put to Mr Hunter at [7] of his first declaration:

“…there is a need to provide a child safety seat that provides a common path for securing the child safety seat in position in either the forward or rearward facing manner, irrespective of the orientation of the safety seat.”

This problem is verbatim from page 2, lines 17 to 20 of the opposed application.

67. At the hearing and in written submissions (at [70]) the Applicant argued that:

“…Mr Hunter’s evidence on obviousness proceeds from an instruction given to him that the “need to provide a child safety seat that provides a common path” was part of the ‘problem’ at the Priority Date: Hunter 1 at [7], last sentence. The instruction given to Mr Hunter was a direction to the invention. No evidence is led on behalf of the Opponent to the effect that this ‘need’ formed part of the common general knowledge at the Priority Date. It cannot be assumed to have formed part of the common general knowledge. That matter must be proved, and cannot be assumed from the text of the Specification: AstraZeneca AB v Apotex Pty Ltd (2014) 107 IPR 177 at 224 [203] (Besanko, Foster, Nicholas and Yates JJ). The approach adopted by the Opponent ignores that the need for a common path, in fact, formed part of the invention, and that its analysis (via the instruction issued to Mr Hunter) commits the classical error described in AstraZeneca and also of hindsight analysis.” (italics in original).

Mr Horsfall also deposes at [64] of his declaration that “…recognition that having a common belt path would minimise confusion is part of the invention”.

68. At the hearing Mr Horak pointed to A1, D1 and D2 as having a common belt path for the forward or rearward facing mode of a convertible car seat (hereinafter the “common belt path”). It is true that these disclose a common belt path, at least in general terms. However, the fact that something may be known from a number of disclosures is not, per se, evidence that it is common general knowledge (“CGK”); see British Acoustic Films Ltd v Nettlefold Products (1936) 53 RPC 221 at 250 and as endorsed and qualified in General Tyre and Rubber at 482 to 483. Consequently, I do not take the disclosure of A1, D1 and D2 as sufficient proof of a common belt path comprising CGK. There is no other evidence that would also support this feature being CGK before the priority date. It follows that I cannot conclude that a common belt path is CGK before the priority date.

69. The above does suggest that a common belt path for use in either the forward or rearward facing modes at least comprises s7(3) information. However, the problem to be solved as posed by the Opponent, and put to Mr Hunter, is not simply having a common belt path, rather it is the need to provide one. There is no evidence to suggest that this “need” formed part of the CGK or is s7(3) information and hence framing the problem in these terms breaches the principles from AstraZeneca. It is also apparent that the problem put to Mr Hunter is framed such that it comprises part of the solution, leading to difficulties in terms of ex post facto analysis.

70. The other problem put forward by the Opponent appears to be that people were using alternative paths or apertures to incorrectly restrain the seat. This is exemplified for D2 in the Opponent’s written submissions at [99] and was also argued with regard to A1 (and thus D1) by Mr Horak at the hearing. While rather closer to the problem as I have formulated it, it is not the same and I reiterate the problem I have outlined above as the proper formulation of the problem at hand.

Lack of Inventive Step in View of Common General Knowledge (s 7(2))

71. This argument was pressed in the Opponent’s written submissions (at [94] to [96]). I note that the Opponent has not outlined, in any significant way, what elements, features, understanding or methods comprised CGK before the priority date. Rather, Mr Horak argued at the hearing “…this is not a case where one needs to get, you know, integer A from the common general knowledge integer B from the common general knowledge and decide to combine them”. Mr Horak argued that in terms of assessing inventiveness, “…the Cripps test is not the only test”, citing Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 in support of his contention. In this respect Mr Horak pointed to Konami Australia Pty Ltd v Aristocrat Technologies Australia Pty Ltd [2016] FCAFC 103 (“Konami”) at [92] et seq (also cited by the Opponent at [88] of their written submissions), in support of the fact that it is irrelevant whether each item or feature of the claimed invention is CGK, rather the question is whether the skilled addressee would arrive at the invention when armed with the CGK. In citing Konami the Opponent contended (at [89] of their written submissions), and reiterated in general terms by Mr Horak at the hearing, that:

“It is open to the Delegate in assessing the inventive step to consider whether there is any barrier or difficulty overcome. If not, a conclusion as to lack of inventiveness can follow.”

72. Notwithstanding their submissions with regard to the Cripps test and Konami, there are still several difficulties for the Opponent’s case under s7(2). The first is that there has been, as noted above, no clear identification of even alleged items of CGK that would be used by the skilled addressee in arriving at the invention as claimed. At best one is left to infer this from Mr Hunter’s evidence. However, even if I assume that the understanding and considerations used by Mr Hunter to allegedly arrive at the claimed invention at [10] to [13] of Hunter1 comprise CGK (and this is rather dubious given Mr Horsfall’s (Horsfall at [28] to [44]) and Mr Wainohu’s (DW-2 at [3]) response to these paragraphs), Mr Hunter still does not arrive at the invention as claimed in any of the claims. The child safety seat that Mr Hunter arrives at in BH-2 has a single aperture which is clearly not located substantially midway between the front and rear of the seat shell.

73. Secondly Mr Horsfall’s and Mr Wainohu’s response to the Hunter declarations suggests that Mr Hunter’s knowledge and experience are not commensurate with what would be expected of the skilled addressee. Two examples of this are that Mr Hunter appeared to be unaware that frontal impacts are most severe (Horsfall at [38]) or that different vehicle seat belt lengths need to be considered to allow for fitment to different vehicles (Horsfall at [41] and DW-2 at [3]). There is no evidence disputing this and I have no reason to doubt Mr Horsfall’s or Mr Wainohu’s evidence on these points, which appear to be logically probative. Indeed, Mr Hunter was informed, as part of his evidence in reply for the purposes of redesigning the safety seat of BH-2 accordingly, that “…front impact protection was the most important consideration due to the majority of car crashes being front impacts…” (Hunter5 at [2]) and “…if you wanted to make the length of the belt similar in front and rearward orientations, what changes would you make…” (Hunter5 at [8]). It seems very unlikely to me that the skilled addressee would need to be informed of these sorts of facts while embarking on a design process for a child safety seat and indicates that Mr Hunter is not well placed to represent what the skilled addressee knew or would do in designing a child safety seat as at the priority date.

74. I observe that the Opponent points to Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [2012] FCA 467 (“Britax”) as support for Mr Hunter’s ability to represent the skilled addressee. In particular, the Opponent pointed to the following comments by the Court from [251] and [255] of Britax:

“Mr Hunter has had some limited practical experience of designing and testing child safety seats and associated restraint systems before the earliest claimed priority date of 1 August 1994 (for the Tenth Patent). However, putting aside this experience, Mr Hunter, as a trained and well-qualified mechanical engineer, is appropriately qualified to assist the Court by his evidence without more. The relevant art falls within the scope of mechanical engineering, and his training and qualifications give Mr Hunter sufficient qualification…
…Mr Hunter displayed an expansive knowledge of the matters relevant both to child safety seats and mechanical engineering.”

75. Despite this, there are a number of factual matters that distinguish the present situation from Britax. The first is that the earliest priority date under consideration in Britax dates to 1 August 1994, while the opposed application has an earliest priority date of 9 October 2012, a difference of more than 18 years. As best understood from Hunter1 at [2] to [5] and BH-1, Mr Hunter’s most recent experience in the design of child safety seats dates to the early 1990s. This means that while Mr Hunter’s experience and knowledge, in terms of designing child safety seats, may have been appropriate in Britax, it is highly doubtful that his knowledge would be current in the field as at 9 October 2012. I consider that the observations above with regard to frontal impacts and seat belt lengths confirm those doubts.

76. To be clear, I accept, as the Court did in Britax, that Mr Hunter’s mechanical engineering knowledge and experience means that he is able to assist me in the present matter. It is just that Mr Hunter is not well placed to provide more specific evidence, beyond some general mechanical engineering factors, as to what a skilled addressee would know and do in terms of designing a child safety seat as at the priority date of 9 October 2012.

77. The third difficulty for the Opponent is that the problem provided to Mr Hunter does not comply with the principles from AstraZeneca, with the result that the Opponent’s case under s7(2) is fatally flawed. In addition, the problem provided to Mr Hunter comprised elements, in particular the common belt path, which form part of the claimed solution, thus tainting Mr Hunter’s path to the invention with ex post facto analysis. No matter which test one uses to determine whether something is obvious, the path taken to the invention needs to be free of ex post facto analysis.

78. I note, for completeness, that it is true that Mr Hunter arrived at a child safety seat commensurate with claim 1 in Hunter5, and in particular having the centrally placed aperture which is present in all of the claims. This seat is illustrated in BH-13. Mr Hunter arrived at this design after being provided further information based on criticisms of his initial design by Mr Horsfall, as discussed above. However, the validity of Mr Hunter’s approach here is still fundamentally flawed as it suffers from the same difficulties in terms of framing the problem and ex post facto analysis as discussed above, and also from Mr Hunter’s inability to represent the skilled addressee in terms of designing a child safety seat as at the priority dat.

79. In view of the above I cannot be practically certain that the invention as claimed in any of the claims lacks inventive step in view of the CGK alone. In this regard I note that I consider omnibus claim 9 to be commensurate in scope with independent claim 1.

Lack of Inventive Step in View of CGK and Prior Art (s 7(3))

Ascertained, Understood and Regarded as Relevant

80. For matters of convenience I will put aside for the moment the question of whether each of A1, D1 and D2 would have been ascertained, understood and regarded as relevant by the skilled addressee, and will only revisit this question for each of these if this proves necessary.

A1 and D1

81. The arguments in view of A1 are given at [100] to [102] of the Opponent’s written submissions. The Opponent’s principle argument (at [101]), is that:

“The removal of the ‘alternate’ path posts no technical difficulty and is an obvious solution if persons were incorrectly placing the straps through this aperture. There is no invention in removing an aperture that is unnecessary for fitment of the seat.”

At the hearing Mr Horak made similar arguments, although he also argued that obstruction of an aperture was not inventive. The Opponent’s contentions in this regard, and in centralising the remaining aperture, are nominally supported by Mr Hunter’s analysis with regard to A1/D1 in Hunter2.

82. The difficulty for the Opponent is that Mr Hunter was asked to consider A1/D1 in view of the problem he was presented with in Hunter1 as discussed above, and whether A1/D1 solved this problem (Hunter2 at [3]). This means that Mr Hunters approach again falls foul of the principles in AstraZeneca and is tainted by ex post facto analysis.

83. Further, although it would seem that Mr Hunter considered A1/D1 to solve the problem (see Hunter2 at [13]), he “…was then asked by FPA to consider being faced with the task of removing the Alternate belt path from the Mother's Choice seat such that only one common belt path was provided. I was asked whether any adaptions would be required” (Hunter2 at [12]). The basis for doing this is said to be “…to ensure that the common seat belt path could be used in a greater number of vehicles” (Hunter2 at [13]). The difficulty with this approach is that it is not commensurate with the problem to be solved as I have formulated it. In addition, the task presented to Mr Hunter here comprises directions to part of the solution as embodied in claims 1 to 9, thus further confounding his analysis with ex post facto analysis.

84. A further difficulty for the Opponent’s case is that Mr Hunter suggests, at [15] of Hunter2 and in a rather summary fashion, that moving the common belt path of A1/D1 to positions 2, 3 or 4 (as shown in photograph C of BH-3, of which only positions 2 and 3 are commensurate with being substantially midway between the front and rear of the seat shell as per all the claims) so as to create a single common belt path “would require minimal changes to the seat shell”. Conversely Mr Horsfall deposes, at [67] to [69] of his declaration, and in some detail, that none of these positions are suitable as they would result in interference with other features, such as rebound bars, support struts, harness spreader plates or thigh straps as appropriate. Mr Horsfall also makes the point, in various places in the cited passages, that modifying the seat to avoid the interference concerned would require major redesign, would result in unacceptable weakening of the child safety seat and/or result in the seat no longer complying with the relevant standard. Mr Hunter has not contested Mr Horsfall’s evidence on this point in reply. In view of this, and Mr Hunter’s brief statements in contrast to Mr Horsfall’s detailed response I cannot on balance accept Mr Hunter’s assertions with respect to creating a single common belt path comprising minimal changes to the seat shell. This further undermines the Opponent’s obviousness case under s7(3) using A1/D1.

85. Finally, the Opponent also pointed to a test report (given in AT-5), and apparently from February 2002, of what appears to be an earlier version of the GoSafe Seat. At the hearing Mr Horak took me to the first bullet point of clause 6.2.4 of this report, which reads as follows:

“On Pages 2 and 19 of the instruction booklet reference was made to the use of an ‘Alternate Path for Seat Belt’ and on Page 22 there were also illustrated instructions for its use in conjunction with a ‘seat belt locking clip’. However the marking on the child restraint at the position indicated on Page 22 specified ‘NO SEAT BELT HERE’ and a crosspiece moulded into the shell obstructed the seat belt path.”

86. At the hearing Mr Horak argued that this was evidence that it would be a matter of routine to obstruct an aperture, and so arrive at the invention. The problem with this line of reasoning is that section 6 of the report, of which clause 6.2.4 comprises a part thereof, outlines failures under the relevant standard; see AT-5 at clause 2. It is thus difficult to see why it would be obvious to undertake something which in the specific case of AT-5 was identified as a defect. Indeed, in the versions of the GoSafe seat in evidence (A1/D1) there is no such obstruction and the alternate path is clearly available to be used where appropriate. Even if one were minded to obstruct the alternate path in A1/D1, the remaining aperture would still not be located substantially midway between the front and the rear of the seat shell, and as noted above it would not be a matter of routine to redesign the GoSafe seat such that this is the case.

87. In view of the above I cannot be practically certain that any of the claims lack inventive step in view of either A1 or D1.

88. The Opponent’s s7(3) arguments in view of D2 are given at [97] to [99] of their written submissions. The Opponent relies on a brief statement by Mr Hunter in the novelty table with regard to D2 in BH-12 that:

“…it would be obvious that in the Figure 5 embodiment of the ‘330 Patent that Apertures #1 and #2 could be deleted, and if this were done, the embodiment in Figure 5 would accord with this integer.”

89. While Mr Hunter has provided a solution in the form of the removal of apertures, he has not indicated what problem he was attempting to solve with this solution. In the absence of a proper consideration of the problem to be solved, a consideration of the relevant CGK and how this would be used to arrive at the solution, Mr Hunter’s rather bald statement with regard to removal of the apertures is indicative of ex post facto analysis and cannot be accepted.

90. In further support of this I observe that the front 33 and rear 34 apertures are disclosed in D2 as being used to respectively secure the seat in a rear or front facing position. Thus, it is not apparent that simply deleting both of these apertures would be obvious as it would deprive D2 of its stated means of securement. I observe that similar, although more detailed, statements were made by Mr Horsfall at 1.5 of RH-21, and these have not been disputed by Mr Hunter. To the extent that the apertures may be deleted and still allow for proper securement of the seat, I observe that Mr Hunter has not outlined how he would achieve this in any way, as well as failing to provide a proper analysis in terms of the problem to be solved and the relevant CGK.

91. The Opponent also argues at [99] of their written submissions that:

“If the problem was that installers were using these supplementary apertures to incorrectly tether the seat, it would be a matter of routine to remove or otherwise obscure those apertures. There is no technical solution or technical advance in simply removing an optional and unnecessary seat belt path.”

As should be apparent from the above, it is rather incorrect to characterise the apertures 33, 34 as “supplementary”. Rather they are clearly disclosed as being central to the securement of the child safety seat of D2 in a forward or rearward mode as appropriate. Even if there were problems with incorrect threading of the restraints in D2, as discussed above there has also been no proper analysis in the context of the problem as to how the skilled addressee would utilise CGK and so arrive at the invention as claimed by deleting both apertures 33, 34. I also note that inventive step (see the test from Wellcome-Foundation above) is predicated on what the skilled addressee would do in view of the problem, not what they could do.

92. In view of the above I cannot be practically certain that it would be obvious to delete both apertures 33, 34 so as to have “…each side wall having one only attachment means being an aperture…” as per claims 1 to 9. It follows that the Opponent has been unsuccessful in establishing these claims as lacking inventive step in view of D2 when combined with the CGK.

93. With respect to claims 10 to 12, the principal difference with regard to D2 relates to each aperture configured to receive a restraining strap, being a vehicle seat belt. No evidence or submissions as to how the skilled addressee would arrive at this feature on starting with the problem to be solved and in view of the CGK has been provided by the Opponent. This amounts to a failure by the Opponent to discharge their onus of proof. I further note that as D2 is directed towards not using a vehicle seat belt to secure a child safety seat, it is rather difficult to envisage either why or how the skilled addressee would modify D2 so as to arrive at this feature. It follows that I cannot be practically certain that claims 10 to 12 lack inventive step in view of D2 when combined with the CGK.

Inventive Step – Conclusion

94. I cannot be practically certain that any of the claims lack inventive step. This ground of opposition is unsuccessful.

Manner of Manufacture

95. The statutory basis for manner of manufacture is found at s18(1)(a) of the Act which states:

“an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.”

96. Notably Schedule 1 to the Act comprises a Dictionary which defines invention as follows:

“‘invention’ means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention”.

97. Fundamental principles with respect to manner of manufacture were outlined by the High Court in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 (“NRDC”) at [14];102 CLR 252 at 275:

“It is therefore a mistake, and a mistake likely to lead to an incorrect conclusion, to treat the question whether a given process or product is within the definition as if that question could be restated in the form: ‘Is this a manner (or kind) of manufacture?’ It is a mistake which tends to limit one's thinking by reference to the idea of making tangible goods by hand or by machine, because ‘manufacture’ as a word of everyday speech generally conveys that idea. The right question is: ‘Is this a proper subject of letters patent according to the principles which have been developed for the application of s. 6 of the “Statute of Monopolies’”

98. The NRDC decision related to a process for eradicating weeds from crop areas. A test applicable to the facts of this case was given in NRDC at [22], 275:

“The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art (see Re Virginia-Carolina Chemical Corporation's Application (1958) RPC 35, at p 36) - that its value to the country is in the field of economic endeavour.”

More recently the authorities have directly considered the patentability, or otherwise, of computer implemented business methods, most notably in Research Affiliates LLC v Commissioner of Patents [2014] FCAFC 150 (“Research Affiliates”) and Commissioner of Patents v RPL Central Pty. Ltd. [2015] FCAFC 177 (“RPL”). The discussion in RPL referred to the terminology from NRDC, with the observation at [117] that such terminology was apposite but “…not conclusive of patentability”. This observation was given with respect to consideration of a similar conclusion by the majority in D’Arcy v Myriad Genetics Inc. [2015] HCA 35 (“D’Arcy”) at [23]:
“This Court in NRDC did not prescribe a well-defined pathway for the development of the concept of ‘manner of manufacture’ in its application to unimagined technologies with unimagined characteristics and implications. Rather, it authorised a case-by-case methodology. Consistently with that approach, and without resort to the ‘generally inconvenient’ proviso in s 6 of the Statute of Monopolies, there may be cases in which the court will decide that the implications of patentability of a new class of inventionare such that the invention as claimed should not be treated as patentable by judicial decision”.
Further the Court stated at [144] of D’Arcy that:
“Whatever words have been used, the matter must be looked at as one of substance and effect must be given to the true nature of the claim.”
It was in this light that their Honours, at [96] to [98] of RPL, outlined considerations useful in determining whether a computer implemented business method is patentable:
“A claimed invention must be examined to ascertain whether it is in substance a scheme or plan or whether it can broadly be described as an improvement in computer technology. The basis for the analysis starts with the fact that a business method, or mere scheme, is not, per se, patentable. The fact that it is a scheme or business method does not exclude it from properly being the subject of letters patent, but it must be more than that. There must be more than an abstract idea; it must involve the creation of an artificial state of affairs where the computer is integral to the invention, rather than a mere tool in which the invention is performed. Where the claimed invention is to a computerised business method, the invention must lie in that computerisation. It is not a patentable invention simply to ‘put’ a business method ‘into’ a computer to implement the business method using the computer for its well-known and understood functions.
Is the mere implementation of an abstract idea in a well-known machine sufficient to render patentable subject matter? Is the artificial effect that arises, because information is stored in RAM and there is communication over the Internet or wifi, sufficient? Does any physical effect give rise to a manner of manufacture? Are the mere presence of an artificial effect and economic utility, without more, sufficient to determine manner of manufacture?
It is not a question of stating precise guidelines but of deciding, in each case, whether the claimed invention, as a matter of substance not form, is properly the subject of a patent.”
Thus, in relation to so-called business related inventions, it is necessary to look at the invention as a matter of substance, rather than as a matter of form. Upon doing so one will then be able to ascertain if this substance provides for a manner of manufacture using the established authorities. Relevantly RPL and Research Affiliates provided principles that assist in determining where the substance of these types of inventions resides and whether that material is patentable. In particular at [99] to [107] of RPL, their Honours reiterated a series of these principles from Research Affiliates (in particular at [94]).
While the principles from RA and RPL were made in the specific context of computer implemented inventions, the general principle of assessing the substance of an invention for the purposes of determining patentability is apposite for any subject matter, as is apparent from D’Arcy at [144] and adopted by the Deputy Commissioner at [77] of Sanofi-Aventis Healthcare Pty Limited v Reckitt Benckiser Healthcare (UK) Limited [2018] APO 11.
Some relevant factors to consider, in general terms, for assessing the substance of any claimed invention are given in the Patent Manual of Practice and Procedure (“MPP”) at 2.9.2.2:
“Relevant factors to consider when identifying the substance of the claimed invention include:
·The form of words, breadth and emphasis of the claim.
·How does the invention work?
·What problem does it address?
·What are the advantages of the invention?
·What does the invention add to the state of the art as at the priority date?”
The Opponent’s arguments with respect to manner of manufacture are given at [110], which is repeated below:
“The invention posited in the present case appears merely to be the proposition that instead of a label advising the installer not to utilise a particular path because the path might be obscured or removed. There is no technical solution to removing an optional or “alternate” path for the seat belt in circumstances where it is well established that the primary path will hold the seat in both the forward and rearward positions.
At the hearing Mr Horak submitted that “…the substance of the invention here has no technical solution, when you look at, when you extract what is really the invention.” Mr Horak argued that the invention was not in the technical realm, and that there was no technical difficulty in identifying and sealing off an alternate belt path of D1.
It is apparent that all the claims comprise a child safety seat comprising an aperture in each side wall that it is located substantially midway between the front and rear of the seat shell and is used to secure the child seat by using a restraining strap in general or a vehicle sea belt. As observed earlier in this decision, the claims are directed to the problem of “how to help prevent incorrect vehicle seat belt threading for child safety seats that are convertible between a rearward facing and a forward facing mode”. It is clear that the central placing of a single aperture only in each side wall in claims 1 to 9 would at least go some way to solving the problem, since there is only one way to thread the vehicle seat belt in either forward or rearward facing mode. Similarly, the fact that claims 10 to 12 comprise a centrally placed aperture, which is configured in use for securing a safety seat via a vehicle seat belt per se also goes towards solving the problem, since the centrally placed aperture can be used in either of the forward or rearward facing modes with respect to a vehicle seat belt.
To my mind it is difficult to see how constructing a child safety seat to help obviate incorrect seat belt threading would fail to be for a manner of manufacture when properly claimed. The invention as claimed clearly provides, in substance, a material advantage in the sense of NRDC.
In view of the above I disagree with the Opponent’s assertions that the invention amounts to merely advising an installer not to use certain apertures, or that somehow the invention does not lie in the technical realm. The Opponent’s remaining submissions, in terms of removing or blocking an alternate path, are rather more pertinent to arguments on inventive step than to manner of manufacture.
In summary I am not satisfied that any of the claims lack a manner of manufacture. This ground of opposition is unsuccessful.

Conclusion

The opposition is unsuccessful. None of the grounds of opposition were made out. Subject to any appeal, I direct that the opposed application proceed to grant.

Costs

Costs usually follow the event. However, in the present case the Applicant filed amendments during the opposition that were allowed on 1 September 2017. In this respect it can be seen that the opposition comprised a degree of success up to this date, despite a lack of success overall. Consequently, I award costs according to schedule 8 against the Applicant, HBG IP Holding Pty Limited, up to 1 September 2017. I award costs according to schedule 8 against the Opponent, Dorel Australia Pty Ltd, from 1 September 2017 onwards.

Dr W.E. Guinea

Delegate of the Commissioner of Patents