DuBois Ltd v Brackley Industries Pty Ltd
[2003] APO 44
•7 October 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 715920 in the name of DuBois Ltd.
Title: Apparatus for holding a compact disc
Action: Opposition by Brackley Industries Pty Ltd under section 59 of the Patents Act 1990
Decision: Issued 07 October 2003.
Abstract
All the claims are novel and inventive and are for a manner of new manufacture.
Some claims are not entitled to their claimed priority date. However this has no bearing on their novelty.
Claims 1 to 8 do not comply with section 40 in that they are not fairly based because they omit the feature of resilient ejection means
Claims 23 to 25 are not fairly based as they omit the feature of the disc engaging means having lips or rims.
Due to the specification being directed to more than one invention the description and claims as a whole are not clear.
Although the opponent has not succeeded on the grounds of lack of novelty or inventive step, it has succeeded on the grounds of lack of fair basis and lack of clarity. I award costs against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 715920 by DuBois Ltd and an opposition under section 59 of the Patents Act 1990 by Brackley Industries Pty Ltd
BACKGROUND
DuBois Ltd (hereafter DuBois) filed patent application No. 715920 on 3 November 1995 under the Patent Co-operation Treaty. The applicant claims convention priority from GB 9422190.0 filed in Great Britain on 3 November 1994. The application was examined and advertised accepted on 10 February 2000.
Brackley Industries Pty Ltd (hereafter Brackley) filed a notice of opposition on 29 February 2000. The statement of grounds and particulars was filed on 29 May 2000. The statement of grounds and particulars was subsequently amended and the amendment was allowed on 29 November 2000. This followed a decision of the commissioner’s delegate on 25 October 2000 where an application to dismiss the opposition was refused. The service of evidence in support, evidence in answer and evidence in reply was completed on 13 September 2002.
The opponent sought leave to serve further evidence on 4 July 2002. This was granted and the applicant was given leave to serve further evidence in response. This service was completed on 3 January 2003.
The hearing was held in Sydney on 6 and 7 May 2003. Du Bois was represented by Mr Stephen Burley of counsel instructed by Mr Michael Grant, patent attorney of Patent Attorney Services, Melbourne. Brackley was represented by Mr David Studdy, of counsel, instructed by Mr David Carmichael, patent attorney and Mr Chris Schlict patent attorney and solicitor both of Phillips Ormonde Fitzpatrick, Melbourne
EVIDENCE
Evidence in support consists of declarations made by:
Peter Kingsley Bayley dated 29 June 2001 and exhibits PKB-1 to 12. He states that he is director of his own design consulting company. He further states that he has extensive experience in industrial design in both the UK and since 1965 in Australia. He states that he possesses a National Diploma of Design, Industrial Design (first class honours) from the Central School of Art in London and is a Fellow of the Design Institute of Australia.
Gary Abrams, dated I July 2001 and exhibits GA-1 to 25. He states that he is the general manager and sole director of the opponent company Brackley, which imports and distributes moulded plastic packaging products of the type covered by the opposedapplication. He states that his company would have held 15% of the market in 1994 and currently hold 25% of the market. He further states that because of this he has extensive knowledge of the packaging market in Australia.
Gordon David Carmichael dated 4 July 2001 and exhibits GDC-1 and 2. He states that he is a registered patent attorney of the firm of Phillips Ormonde & Fitzpatrick.
Evidence in Answer consists of declarations made by:
Anthony H J Fraser dated 9 January 2002. He states that he is Sales and Marketing director of DuBois. He states that he is named as an inventor on at least 10 different patent applications made by Dubois. He further states that he has worked closely with design and injection moulding toolmakers since 1992. He states that he has degrees in literature and Business Administration and is a Member of the Chartered Institute of Marketing.
Donald Roy McNeill, dated 12 March 2002 and exhibits DM-1 and 2. He states that he is the managing director of DRM Industries here in Australia. He states that DRM is also a distributor of plastic packaging products such as disc holders in Australia. He states that he has a degree in Economics and extensive experience in marketing plastics packaging products in Australia.
Evidence in reply consists of further declarations made by:
Peter Kingsley Bayley dated 12 September 2002.
Gary Abrams, dated 7 September 2002.
Further Evidence in support consists of declarations made by:
Peter Kingsley Bayley dated 25 June 2002 and exhibit PKB-13.
Rodney I L Cruise dated 4 July 2002 and exhibit RIC-1. He states that he is a registered patent attorney of the firm of Phillips Ormonde & Fitzpatrick.
Evidence in response to further evidence consists of a declaration by:
Gordon Williams dated 11 December 2002 and exhibit GW-1. He states that he is professor of Mechanical Engineering at Imperial College London. He states that he has had extensive academic experience in mechanical and polymer engineering, with particular emphasis on the engineering properties of polymers. He has degrees in Mechanical Engineering.
THE SPECIFICATION.
10. The specification is directed to a case for holding a compact disc. It is said to overcome the prior art deficiency of having the disc held by tines which grip the centre of the disc and require two hands to release the disc from the case. The case is said to be suitable for all kinds of compact discs and not only the normal 120mm laser readable disc, carrying pre recorded music or computer programs. It relies for its functionality on two or more resiliently cantilevered radial arms extending inwardly away from the base portion that releaseably engage the central hole in the disc. It ends with 30 claims of which claims 1, 23, 26 and 28 are independent. They read as follows:
1 Apparatus for holding a compact disc having a central hole, the apparatus including a base portion; disc engaging means extending from the base portion for releaseably engaging the central hole of the disc, the disc engaging means including at least two inwardly extending radial arms each resiliently cantilevered from the base portion and arranged to support the centre of the disc away from the base portion the inner ends of the arms together forming a button like member and having rims, or lips, arranged to securely retain a disc by engaging on the outwardly facing surface of a compact disc held by the disc engaging means, the disc engaging means being arranged such that to, release the disc, pressure must be applied to the button-like member to depress the arms causing the rims, or lips, to depress at least the centre of the compact disc towards the base portion, until movement of the inner ends of the arms towards each other caused by said depression of the arms is sufficient to release the engagement of the rims or lips on the outwardly facing surface of the compact disc.
23. Apparatus for holding a compact disc having a central hole, the apparatus including a base portion; disc engaging means extending from the base portion for releaseably engaging the central hole of the disc and arranged to support the centre of the disc away from the central hole arranged such that when the disc engages the disc support means the centre of the disc may be flexed towards the base portion so that, upon release of the engagement of the disc engaging means with the central hole, the disc is able to revert to its unflexed state so that the centre of the disc moves out of engagement with the disc engaging means.
26. Apparatus for holding a compact disc substantially as hereinbefore described with reference to the accompanying drawings.
30. A video style library box as claimed in claim 28 substantially as hereinbefore described with reference to Figures 1 to 8 and/or figure 10 of the accompanying drawings.
11. I note that in claim 1 “at least the centre” of the disc must be able to move towards the base portion. This clearly comprehends both a situation where the entire disc may move, and the disc does not flex, and also a situation where just the centre of the disc may move causing the disc to flex. In addition the disc engaging means include at least two arms resiliently cantilevered away from the base portion which both support and engage the disc by means of lips. These arms form a button in the centre of the disc. Release of the disc is achieved by pressing the button causing the arms to move towards the base portion allowing the lips to disengage.
12. Claim 23 is directed to an arrangement where the disc must flex. The disc engaging means, which must both support and engage the disc, holds the disc in a flexed condition. When the engaging means is released the disc reverts to its unflexed state thereby releasing the disc. I note that there is no specific configuration of the disc engaging means in this claim; it is merely claimed by result.
13. All of the drawings clearly illustrate an arrangement with a resilient ejection means in addition to a disc engaging means for releaseably engaging the centre hole of the disc. This resilient ejection means is illustrated as four arms resiliently cantilevered away from the base portion which support the disc. The disc engaging means is illustrated as including at least two arms resiliently cantilevered away from the base portion which both support and engage the centre of the disc by means of lips.
STATEMENT OF GROUNDS AND PARTICULARS
14. An amended statement of grounds and particulars filed by Brackley was allowed on 29 November 2000. Brackley raised the grounds of novelty, inventive step, manner of manufacture and section 40/fair basis.
15. At the hearing the opponent sought to amend the statement to include the matter that the specification as accepted was not entitled to its claimed priority date and was therefore anticipated by the publication of the PCT application from which it derived. I advised the opponent that although I was bound to allow this amendment, the fact that it was only raised at the hearing would have a bearing on costs. I also reminded the opponent I might also need to allow the applicant further time after the hearing to make written submissions in relation to the changed statement. On that clear understanding I allowed the amendment to the statement of grounds and particulars on 6 May 2003, and allowed the applicant 28 days after the hearing to make written submissions on this matter.
16. In the event the applicant managed to make submissions on this point at the hearing but still reserved their right to file written submissions after the event. This they did on 8 June 2003.
17. At the hearing the opponent also asked leave to make further submissions in respect of the applicant’s response to amended grounds. I allowed them only until 9 May to do this.
18. Both sides then had a further 28 days to respond to each other’s submissions.
DECISION
Priority date issues
19. In the amended grounds and particulars of 6 May 2003 the opponent alleges that the present application is not entitled to its earliest claimed priority date of 3 November 1994 [based on that date being the date of filing of the basic application GB 9422190]. Also they alleged it is not entitled to the date of filing of the application itself, that is 3 November 1995, as a priority date. They allege that as a consequence the application is not novel in the light of the publication of its own basic application and the originating PCT application.
20. As part of its submission, the opponent alleged that the claims are not entitled to have as their priority date, the date of filing of the basic application. Mr Studdy further submitted that the complete specification as amended was not entitled to the priority date of the complete specification as filed, since the amendments made under article 19 and article 34 of the PCT, as well as those proposed on 5 November 1997, 29 November 1999 and 8 December 1999 and ultimately allowed were claiming matter not in substance disclosed in the specification as filed. Consequently, Mr Studdy argued, the basic application and the PCT specification as filed that were published on 17 May 1996 rendered the claims not novel as the claimed invention could only have an earliest priority date of 19 December 1996, this being the date of filing the article 34 amendments under the provisions of the PCT.
21. Mr Studdy made a number of submissions on this point including pointing out the fact that the tests for novelty and for "in substance disclosed" differ. I have some difficulty with this argument.
This difficulty is well expressed in previous decisions of the Commissioner.
"Although the tests for novelty and fair basis are not the same I cannot agree with ...[the] argument. The disclosure in the specification which is sought to be used for the purpose of novelty, also serves to support the claims in so far as fair basis is concerned. Thus, whatever is fairly based cannot be held not novel and whatever is not fairly based cannot be used as an anticipation." The Regents of the University of California The Dow Chemical Company [2001] APO 34 (26 July 2001)
In Orenco Systems, Inc v Everhard Industries Pty Ltd [1999] APO 68 (26 October 1999), the delegate stated;
"The opponent's argument in effect is that the amended claims are disclosed in the originally filed specification for the purposes of assessing novelty, but are not disclosed for the purposes of fair basis as they have been broadened beyond what was described. Although the tests for fair basis and novelty are not the same, I have difficulty with the logic of this argument."
"A similar argument was put to me in Firebelt Pty Limited v MacDonald Johnston Engineering P/L[1994] APO 67 (25 November 1994) in considering the fair basis of a petty patent on a provisional application. In that case, I said that either the claims were fairly based on the earlier application, in which case the claims were entitled to the earlier priority date, or if there was such a discernible shift away from the provisional application such that the claims were defining a different invention, there would be no lack of novelty."
22. I am in agreement with these decisions and hence I need not consider the argument of the PCT publication of the specification rendering the as accepted application not novel any further.
23. However since some of the alleged anticipations fall in the period after the earliest claimed priority date but before the later priority date of some of the claims I do need to accurately determine the priority date of the claims of the opposed specification. In particular it is alleged that compact disc containers of the type covered by the present patent application were sold in Australia in 1994.
24. The basic document for this application is GB 9422190.0 filed in Great Britain on 3 November 1994.
25. The fundamental requirement for a claim to be fairly based on a particular disclosure is that the disclosure must contain a “real and reasonably clear disclosure of the subject matter of the claim” - see CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481 and (1994) AIPC 91-079, and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis 30 IPR 479 and (1995) AIPC 91-121.
26. The opponent argued that certain features in the claims of the accepted specification were not present in the basic document and consequently that the claims were not entitled to the earliest claimed priority date of 3 November 1994. In particular the opponent argued the following, which I will deal with point by point:
(a) The claims define an invention, which involves depression of the compact disc to achieve the release of the disc. This was not disclosed in the priority document.
27. This is not entirely accurate. I agree that all of the claims of the opposed specification do involve depression of the disc to disengage the disc engaging means, followed by the resilient ejection means raising the disc to release it. The basic document at several places clearly contemplates the entire disc being depressed, but not flexed, to achieve release of the disc. In particular the basic document at page 4 lines 6 and following. In my view there is clear teaching that the disc is depressed to disengage the disc engaging means followed by the “resilient ejection means” raising the disc to release it.
(b) The priority application discloses an invention requiring the presence of both “disc engaging means” and “resilient ejection means” which are not present in all the claims of the accepted specification.
28. This is an argument that I agree with. The basic document does indeed require both “disc engaging means” and [my emphasis] “resilient ejection means” which are not present in all the claims of the accepted specification. Indeed the feature of the resilient ejection means is not introduced until claim 9 of the opposed specification thus clearly indicating that it is not present in earlier claims. The basic document on the other hand clearly indicates at the bottom of page 2 that the resilient ejection means is required in addition to the disc engaging means. I note that the resilient ejection means is also clearly illustrated in all of the drawings and claimed in all of the claims of the basic document as separate to the disc engaging means. Consequently those claims lacking the resilient ejection means are not fairly based on the basic document and must therefore take as their priority date the date of their first disclosure. Looking at the “as accepted” specification it appears that the first claims or description omitting the feature of the resilient “ejection means” arose as a result of amendments filed on 19 December 1996 under article 34 of the PCT. Thus claims 1 to 8, and 19 to 25 are only entitled to a priority date of 19 December 1996.
(c) The priority application does not disclose “disc support means” as in claims 23 et al.
29. From a fair reading of claims 23 and following it is apparent that what is claimed includes any disc support means that in use allows the disc to be flexed towards the base portion. The only disclosure in the basic document is a disc support means composed of the multiple fingers marked 17 on the drawings. These fingers are resilient and act both as the resilient ejection means and as a support means. They are arranged to engage the disc 5-10mm radially outward of the edge of the central hole where no information is stored. It seems quite clear to me that it is these that flex, not the disc itself. To my mind there is no disclosure in the basic document of any disc support means that in use allows the disc to be flexed towards the base portion. Consequently those claims that claim this feature namely claims 23, 24 and 25 are not entitled to the priority date of the basic document but must take as a priority date the date of their first disclosure. The date of first disclosure of this particular feature appears to be the date of filing, which would normally be their priority date, but since these claims were amended again on 19 December 1996 under article 34 of the PCT they are only entitled to that date for their priority. (See point (e) below).
(d) The application as filed disclosed, in relation to the alleged invention of claim 1, the presence of “resilient ejection means”. This feature was deleted by an amendment filed on December 1996 under article 34 of the PCT.
30. This matter has already been dealt with under point (b) above. Claims 1 to 8, and 19 to 25 are only entitled to a priority date of 19 December 1996.
(e) The application as filed disclosed, in relation to the alleged invention of claim 23, an apparatus in which “disc engaging means” of a particular structure is included together with “disc support means” for the flexure of the disc. The “disc engaging means” feature was broadened by an amendment filed on 19 December 1996 under article 34 of the PCT.
31. As I have already determined that this claim takes 19 December 1996 as its priority date, I will not consider this point in great detail.
(f) The application as filed disclosed in relation to the alleged invention of claim 1 the presence of “disc engaging means” of a particular structure. The definition of this feature was amended by an amendment filed on 22 March 1996 under article 19 of the PCT.
32. This refers to the fact that the claims of the application as accepted have “at least two radial arms each resiliently cantilevered from the base portion, with the inner ends of the arms forming a button like member having rims or lips”. Although this feature appears to have been introduced by the article 19 amendments filed on 22 March 1996 this is not really so. The diagrams of the basic document clearly illustrate the button like member having lips. This is particularly well illustrated by item 16 in figure 1 of the basic document and also figures 3 and 4. In addition the description of the basic document at page 3 clearly indicate a button like member. Thus in my view this means that this feature of itself would entitle the relevant claims to the priority date claimed. However the claims in which it appears have later priority dates than the filing date of the basic document due to the presence of other features not present in the basic document as I have already outlined above.
(g) The application as filed disclosed “disc engaging means” comprising “at least two resilient inwardly extending radial arms each cantilevered from the base portion”. This has been amended to “two inwardly extending radial arms each resiliently cantilevered”. This amendment was made by amendments filed under article 19 of the PCT on 22 March 1996.
33. This seems to me to be somewhat a matter of semantics. The issue is that the “as filed” application has a disc engaging means comprising two radial arms made of resilient material as opposed to the amended specification where the radial arms are resiliently cantilevered but may be made themselves of non resilient material. I believe that a skilled engineer would have no difficulty interpreting these two as mechanical equivalents. The reality is whatever option is claimed the disc engaging means may be depressed causing the inner end of the arms to move towards each other to disengage the lips from the disc and release it and also move down towards the base portion. I am not of the view that this amendment of itself has any effect on the priority date of the claims.
34. In summary:
Claims 1 to 8 and 19 to 25 are only entitled to a priority date of 19 December 1996 since there is no “real and reasonably clear disclosure of the subject matter of the claims” in the basic document, namely the use of a disc engaging means without a resilient ejection means as well. Claims 9 to 18 and 26 to 30 are entitled to the claimed priority date of 3 November 1994.
Fair basis and clarity
35. The opponent has argued that it is not at all clear what the invention is and that as a consequence the claims are not fairly based. Indeed the specification as accepted at page 3 line 5 describes the invention according to one aspect of the invention, whilst at page 4 line 23 there is a description of the invention according to a further aspect of the invention. It seems to me that there is more than one invention disclosed in the specification as accepted. There is a compact disc holder having a disc engaging means and a resilient ejection means where the disc moves towards the base to release it but does not flex. There is a compact disc holder where the disc engaging means is also the resilient ejection means and there is also a compact disc holder where the flexing of the disc itself is the resilient ejection means. This view is supported by Mr Fraser of Dubois in his statutory declaration.
36. The first aspect described on page 3 is directed towards an apparatus for holding a compact disc having a disc engaging means which releases the disc by allowing at least the centre of the disc to depress towards the base portion. This is the situation I mentioned above where the disc may or may not flex. The opponent argued that this aspect of the invention must have a resilient ejection means as well. The applicant argued that this is not true as the as accepted specification at page 3 lines 29 and following indicates that this feature is only preferable, thus making it an optional feature. I disagree, I am of the view that as outlined in paragraph 35 above there must be some kind of resilient ejection device in all of the claims in order for them to be fairly based.
37. From a fair reading of the basic document, it is clear that the inventive concept, of the so called first aspect of the invention, is that the disc engaging means having lips or rims releases the disc when the button like member is pushed. This release is effected when the lips or rims of the disc engaging means, move in an arc in both a downward and inward direction. Whilst the lips or rims are in this disengaged position there must be some kind of resilient ejection means to push the disc up, otherwise when pressure is removed from the button like member, and the lips or rims inevitably spring back, they will reengage the disc. I note at this point that claim 23, which relies on the disc flexing to be the resilient ejection means, clearly contemplates the centre of the disc being moved [upwards] out of engagement with the disc engaging means. As drafted claims 1 to 8 encompass two distinct possibilities, the disc flexes or it moves in its entirety. It is only when the disc flexes that the disc holder has a resilient ejection means. When the entire disc moves this feature is not present in claims 1 to 8, and as such these claims are not fairly based.
38. Claims 9 to 22, having the resilient ejection means are fairly based.
39. Despite another consistory clause supporting it claim 23 and those following do not have a disc engaging means having lips or rims which is what allows the disc to be securely held. On a fair reading of the specification it appears to me that the disc engaging means must have lips or rims. Since claims 23 to 25 do not have this feature they are not fairly based.
40. On the matter of the clarity of the claims I note that the description supports more than one invention, as do the claims. There is confusion in my mind as to what the invention is. One of the objects of the invention as stated at the bottom of page 1 and the top of page 2 is that bending of the disc is something to be avoided, yet some of the claims are directed towards flexing of the disc to provide the resilient ejection means. I fail to see how desirable flexing differs from undesirable bending and thus in my view both the description and claims as a whole lack clarity.
NOVELTY
41. A test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228 at page 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
See also General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486.
42. Thus:
"To anticipate the patentees claim, the prior publication must contain clear and unmistakable 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. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
43. The opponent relied on the following documents for want of novelty:
EP 0356 539 published 7 March 1990
44. The whole specification is directed to disc storage boxes having disc engaging means and in one case disc ejection means.
45. Firstly there is disclosure of the so-called prior art, which has lips or what are termed small swelling or protrusions on the disc engaging means. Whilst the disc engaging means is cantilevered it has no button like member; in fact the cantilevered arms do not even meet. There is an illustration of the difficulty of removing the disc from the disc engaging means illustrating the problem that the disc has to be pulled upwards and outwards to clear the swellings or protrusions and thus does not anticipate the claims of the opposed specification.
46. Secondly the actual invention disclosed in this citation, has a disc engaging means. Although this has no so called lips or rims described as such, there are disclosed so called shoulder protrusions, which in my view are the same as the lips or rims of the claimed invention. The disc engaging means does form a button like member, but in addition there are flap pieces which when the button like member is pushed downwards to release the disc, they then push upwards to eject the disc. That is pushing the button like member downwards towards the base of the holder first releases the disc and then as pressure continues, pushes the flap like members away from the base to eject the disc. This is not quite what is taught in the opposed specification. In those claims of the opposed specification which have resilient ejection means, the feature that these resilient means spring back of their own accord when the pressure is released is not actually claimed. Thus although as illustrated they are not operated by the downward movement of the button like member physically forcing them up as in this citation, this limitation is not in all the claims. Claims 12 to 18 do specify the resilient ejection means as of a kind not encompassed by this citation.
47. However there is still one major difference between the citation and the opposed specification, namely there is no teaching that at least the centre of the disc is depressed towards the base portion. Thus in my view there are no clear and unmistakable directions to have either a disc engaging means with lips alone or with the resilient ejection means claimed by claims 9 to 11, where at least the centre of the disc is depressed towards the base portion. Consequently this citation does not anticipate any of the claims of the opposed specification.
PCT/NL93/00141 published 3 March 1994
48. The device shown in this citation does not have the feature of the disc engaging means “including at least two inwardly extending radial arms….. the inner ends of the arms together forming a button like member”. On the contrary the inwardly extending arms, which are of the type encountered in prior art rosette type holders, do not in fact meet one another and a separate button like device is placed over the top of them. Thus they in no way even suggest the construction of the invention as claimed in claims 1 to 22. Mr Abrams in his declaration argued that despite the lack of rims or lips the device of the citation would inherently result in the depression of the disc towards the base. I see no teaching of this at all, the downward pressure appears to be designed to move the mounting elements inwards but not downwards as well so it is difficult to see how this could impart a downward movement to the disc. It was also argued that as the disc engaging means of claims 23 to 25 has no lips or rims they were definitely anticipated. However despite this there is still no teaching of downward disc movement or flexure.
49. Consequently all the claims of the opposed specification are novel in the light of this document.
DE 3425579 published 16 January 1986
50. This citation discloses a central button like member having rims or lips formed from the inner ends of inwardly extending radial arms. However neither the description or the claims, or the drawings show the inwardly extending radial arms supporting the disc away from the base portion. On the contrary they show the disc quite clearly resting on the base portion. The opponent’s witness Abrams in his declaration argued that due to manufacturing tolerances that there is in fact the possibility of the disc being able to move towards the base portion. However despite arguments from the opponent’s counsel I am not persuaded. To my mind there are no clear and unmistakable directions to depress at least the centre of the disc towards the base portion of the disc holder. On the contrary the citation teaches depression of the button like member just to move the radial arms inwards to disengage the rims and allow the disc to be pulled off its holder. Consequently all of the claims are novel in the light of this citation.
JP 5-73756 published 8 October 1993
51. This citation discloses a disc holder having inwardly extending radial arms in a rosette configuration. However these arms do not have lips or rims, nor do the inner ends of the arms form a button like member. These arms do have a marked outward slope, which would function in the same way as lips of the opposed specification. However there is no teaching of the disc being depressed towards the base portion, rather there is teaching of downward finger pressure causing the rosette arms to move inwards to release the horizontal pressure they are exerting on the disc. Thus there is also no teaching to flex the disc either.
52. There are no clear and unmistakable directions to either depress at least the centre of the disc towards the base portion of the disc holder, or to flex the disc, nor is there any teaching of a button like member. Consequently all of the claims are novel in the light of this citation.
US 4819799 published 11 April 1989
53. This citation discloses a flexible blister pack. The opponent has only cited it against claim 23. They argue that it discloses all of the features of claim 23 and that flexing of the disc may occur. I have to disagree. Whilst on the face of it there are similarities there is clear teaching in this citation that the disc does not flex. In particular at column 4 line 8 and following where it states “Thus, minor deformation of the upper and lower sheets 12, 13 can occur without deformation [my emphasis] of the compact disc C”.
54. It is therefore clear to me that this citation does not anticipate claim 23.
October 1995 edition of Magazine “One to One”
55. There was some suggestion in Mr Abram’s declaration that some advertising material relating to the sale of the DVD boxes of the opposed specification was available in Australia before the priority date of the claims. In particular he cited the October 1995 edition of a magazine called “One to One” and an advertising page from that journal illustrating AMARAY CD Safe, a type of DVD box. He also tendered as physical evidence a DVD box itself, which corresponds to the box illustrated both in the advertisement and also to that in figure 1 of the opposed specification. However this is the embodiment of the invention that includes the resilient ejection means, in particular the type with resilient arms resiliently cantilevered from the base portion as in claim 9. Since I have already determined that this claim is entitled to the earliest claimed priority date of 3 November 1994, the disclosure in this magazine cannot anticipate it.
INVENTIVE STEP
56. Subsections 7(2) and 7(3) of the Patents Act of 1990, when read in the light of the definition of “prior art base” provided in schedule 1 of the Act, relevantly indicate that a claimed invention will lack an inventive step when compared with the prior art base, if it is obvious in the light of:
common general knowledge existing in the art before the priority date considered alone; or
common general knowledge when considered with information in a single document, provided that document could be reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area before the priority date by the person skilled in the art.
The common general knowledge
57. The relevant art is clearly packaging for DVDs, CDs and the like and there is agreement from both parties on this and also on the fact that such packaging is commonly made from injection moulded plastic materials. The first issue is who the skilled addressee is? The opponent has argued that the skilled addressee is in fact a team comprising the person directly involved in the promotion distribution and sales of such packaging and an industrial designer experienced in the design of injection moulded consumer articles. The applicant has argued that in fact the notional skilled worker is somebody who is a person who is engaged in the design and manufacture of compact disc holders and is likely to have specific experience of injection moulding of plastics.
58. In the light of these submissions I have formed the view that the notional skilled addressee is a combination of somebody who has actual experience in at least the design of CD or DVD cases, and somebody who has sales and marketing knowledge of the CD and DVD packaging industry.
59. In this regard I have the statutory declarations of:
Mr Abrams who is a chartered accountant who has knowledge of the CD and DVD packaging industry in Australia from a sales and marketing perspective, but he has no design qualifications or experience.
Mr Bayley, who is a qualified designer with extensive experience, but who clearly states that he has no direct experience in designing CD or DVD cases.
Mr Fraser has knowledge of the CD and DVD packaging industry from a sales and marketing perspective, but he has no design qualifications or experience. Although he states that he is named as an inventor on a number of patents I note that his degrees are in literature and Business Administration and is a Member of the Chartered Institute of Marketing.
Mr McNeill, has a degree in Economics and extensive experience in marketing plastics packaging products in Australia. He does not state that he has any experience in the design of CD or DVD cases.
Professor Williams has had extensive academic experience in mechanical and polymer engineering, with particular emphasis on the engineering properties of polymers. He has degrees in Mechanical Engineering. He is not resident in Australia.
60. On the face of it I can rely on Messrs Mc Neill, Fraser and Abrams to tell me the state of the common general knowledge as regards what prior art products were distributed on the Australian market.
61. Mr Abrams, who is resident in Australia, states that in his opinion the following integers were “commonly known in the industry” [presumably in Australia].
Disc engaging means having resiliently cantilevered arms.
Lips or rims to secure the disc.
Support means at the outer periphery of the CD.
Disc flexure to release the disc.
62. Mr Mc Neill, who is resident in Australia, states in his declaration that as late as 1997 he had great difficulty in finding a suitable CD or DVD holder in Australia. He also states that in his view the prior art rosette type holder was the most commonly used holder for both audio and computer program CDs. He said that DVDs were not common at this time in Australia but that he would understand that the holder for a DVD would be the same as that used for a CD.
63. Mr Fraser , who is resident in the UK and employed by the applicant company Dubois, states that in his view the technology of DVD holders is world-wide. He also states that the rosette style of prior art holder was common prior to the Dubois invention of the opposed specification.
64. I do not accept Mr Abrams view that what “commonly known in the industry” was necessarily part of the common general knowledge in Australia before the priority date of the claims. This is because of the contradictory evidence of particularly Mr Mc Neil also Mr Fraser. Although Mr Abrams expressed the view that certain individual integers were part of the common general knowledge in Australia, he does this by reference to a number of individual pieces of evidence each directed to different integers. There is no disclosure of the combination of features found in the claims of the present invention, and no indication from Mr Abrams as to why it would be obvious to combine a particular set of features in the same way as the opposed specification does. Indeed Mr Mc Neil’s evidence suggests that this combination of features was not common general knowledge because of the great difficulty that he had in finding a suitable DVD holder in Australia as late as 1997.
65. There is also the issue of the second part of the team of persons making up the notional non-inventive skilled addressee. For this I must rely on the only two declarants with technical qualifications, namely Mr Bayley and Professor Williams. Mr Bayley effectively disqualifies himself at paragraph 9 of his first declaration where he states:
“ I have read and carefully understand the draft [my emphasis] Statutory Declaration of Gary Abrams.
I am not in a position of knowledge in relation to the state of the art in storage apparatus for compact discs or the like and accept his comments outlined in paragraphs 6, 7 ,8 and 9 of his Statutory Declaration.”
In other words Mr Bayley is not able to be the second part of the team of persons making up the notional non-inventive skilled addressee.
66. Professor Williams on the other hand is an engineer well skilled in the art of the engineering properties of polymers. However he is resident in the UK, and also in his statutory declaration makes no comment at all on what he believes to be the state of the common general knowledge in Australia.
67. The opponent has also argued that the patent documents cited in the application itself were part of the common general knowledge, citing Bristol Myers Squibb v Faulding 2000 FCA 316; 46 IPR 553 as authority. This may be the case in some circumstance but not in this case. The prior art documents are all said to be deficient in how they allow the DVD to be removed from the holder without using two hands and the risk of the DVD being ripped off whilst still held by the holder thus causing damage.
68. I find that in the light of the fact that I have no declarations from any witness able to form the second half of my team of persons making up my notional non-inventive skilled addressee, I am unable to determine the state of the common general knowledge in Australia before November 1994. Thus none of the claims can possibly lack an inventive step in the light of the common general knowledge alone.
Common general knowledge plus another document.
69. Any further consideration of this ground is not possible since I am unable to determine the state of the common general knowledge at the relevant date.
MANNER OF MANUFACTURE
70. The opponent argued that this was a situation where the specification failed the so called threshold of inventiveness test under section 18 (1) of the patents Act 1990 as established in Phillips v Mirabella 132 ALR 117; 32 IPR 449. However this is really an inventive step issue and I have already dealt with this.
CONCLUSION
71. All the claims are novel and inventive and are for a manner of new manufacture. However I have found that some claims are not entitled to their claimed priority date. However this has no bearing on their novelty. I have also found that claims 1 to 8 do not comply with section 40 in that they are not fairly based because they omit the feature of resilient ejection means. I have also found that claims 23 to 25 are not fairly based as they omit the feature of the disc engaging means having lips or rims. Due to the specification now being directed to more than one invention the description and claims as a whole not clear.
72. However I am of the clear view that there is patentable subject matter present and therefore allow the applicant 60 days from the date of this decision in which to propose suitable amendments.
COSTS
73. Costs normally follow the event. However in this case, counsel for the applicant made submissions that if the opponent were to succeed on the basis only of the amended statement of grounds and particulars, then I should not award any costs after that event against the applicant. In this case although the opposition has not succeeded on grounds of lack of novelty or inventive step, it has succeeded on the ground of fair basis and lack of clarity of the claims. Since these grounds were in the original statement, I think it is appropriate that. I award costs against the applicant, Du Bois.
Rob Melvin
Delegate of the Commissioner of Patents
07 October 2003
Patent attorneys for the applicant: Patent Attorney Services Melbourne
Patent attorneys for the opponent: Phillips Ormonde Fitzpatrick Melbourne
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