Dyson Technology Limited v Jemella Limited

[2025] APO 6

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Dyson Technology Limited v Jemella Limited [2025] APO 6

Patent Application:                2019271875

Title:Barrel for hair styling appliance

Applicant:  Jemella Limited

Opponent:  Dyson Technology Limited

Hearing Officer:  Xavier Gisz

Decision Date:  26 February 2025

Hearing Date:  13 March 2024, in Video Conference

Catchwords:  PATENTS – section 59 – opposition to grant of a patent – heater for a hair styling appliance – embedded temperature sensor – inventive step – claims are inventive in light of the art pressed – manner of manufacture – sufficiency and support – best method – utility – opposition unsuccessful on the grounds pressed by the opponent – additional document consulted pursuant to Reg 5.23 – some claims do not involve an inventive step – consideration of support pursuant to section 60(3) – some claims do not comply with s 40(3) – opportunity to amend – costs awarded

Representation:  Counsel for the Applicant: JPS Ambikapathy

Patent attorneys for the opponent: Davies Collison Cave

Counsel for the Opponent: Ben Mee

Patent attorneys for the Opponent: Spruson & Ferguson

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2019271875

Title:Barrel for hair styling appliance

Applicant:  Jemella Limited

Date of Decision:                   26 February 2025

DECISION

The opposition under s 59 of the Patents Act 1990 is successful.  Claims 1-9, 11-19 and 21-26 do not involve an inventive step.  Claims 1-7, 9-17 and 19-26 are not supported by matter disclosed in the specification.

Subject to appeal, the Applicant is given two (2) months from the date of this decision to file amendments that would overcome these adverse findings.

I award costs against the Applicant according to Schedule 8 of the Regulations up to the date amendments were allowed, namely 30 November 2022.  Parties are to bear their own costs from 1 December 2022.

REASONS FOR DECISION

Background

1. Patent application 2019271875 (the “Opposed Application”) was filed in the name of Jemella Limited (the “Applicant”) on 25 November 2019. The Opposed Application is a divisional application of 2018263376, itself the national phase entry of PCT/GB2018/051197. Priority is derived from provisional application GB 1707061.6 filed 03 May 2017. Examination was requested on 10 January 2020. A notice under section 27 of Patents Act1990 (Cth) (“the Act”) was filed by Shelston IP on 8 April 2020 followed by another, also filed by ShelstonIP, on 25 January 2021.  Two adverse examination reports issued in respect of the Opposed Application before it was accepted on 09 June 2021 and advertised as accepted on 08 July 2021.

2. The Opponent filed a notice of opposition under section 59 of the Act on 8 October 2021.  A statement of grounds and particulars (“SGP”) was then filed on 10 January 2022 followed by evidence in support (“EIS”) on 11 April 2022.

3. The Patentee proposed to amend their claims on 20 June 2022.  A delegate of the Commissioner granted leave to amend the specification on 07 September 2022 and the proposed amendments were allowed unopposed on 30 November 2022.  The Opposition was stayed while this matter was determined.  All further references to the Opposed Application are to its present form following these amendments.

4. Evidence in answer (“EIA”) was filed on 12 December 2022 followed by evidence in reply (“EIR”) on 14 February 2023.  The Opponent requested to amend their SGP on 17 March 2023 to reflect the EIR.  The Applicant opposed these amendments on 19 April and challenged parts of the EIR on 26 May 2023.  Some of the material filed as EIR was ultimately directed out of evidence on 10 August while amendments to the SGP proposed on 26 July were allowed on 28 August 2023.

5. The Opponent’s written submissions (“OS”) were filed on 27 February 2024, while those of the Applicant (“AS”) were filed on 5 March 2024. 

   Regulation 5.23

6. The Opponent filed KR20120007813 (the “Trais document”) and WO2007029981A1 (the “Smattech document") as annexures to the EIR.  Following a challenge from the Applicant, the delegate proposed to direct the Trais document and associated commentary on both documents out of the evidence.  The Smattech document was not positively directed out of the evidence at this time due to what I assume was an oversight on the part of the delegate.  The Opponent subsequently requested that the Commissioner exercise their discretion under Reg 5.23 in relation to both the Trais and Smattech documents.

7. The Opponent’s 5.23 request stated that both documents were relevant to at least the ground of inventive step.  The delegate, responding on 13 July 2023, stated an intention to decline the 5.23 request in the absence of an explanation of how these documents could be said to be better than the documents already in evidence.

8. The Opponent provided further submissions on 26 July 2023.  These submissions put that Smattech is a ‘clearer [demonstration] of multi layered ceramic heaters in similar commercial areas to those of the opposed application’.  The responding delegate declined to invoke Reg 5.23 as he understood there was ‘already evidence going to the features concerned being CGK’ and ‘mere speculation that… the Opponent might lose a point on evidence of CGK is not sufficient to conclude these documents would be crucial to the delegate’s decision’.

9. At the hearing, I expressed a view that I should consult Smattech and indicated that I would write to the parties on this matter.  I sent this correspondence on 5 April 2024 seeking submissions on whether I should invoke Reg 5.23 and, in the case that I chose to do so, an appropriate timetable for evidence and submissions from the parties.  For the avoidance of doubt, I also proposed to positively direct the Smattech document out of the EIR.

10. Neither party objected to me consulting Smattech and I directed that the Commissioner would do so on 2 May 2024.  The Opponent provided evidence under Reg 5.23(2)(c) on 3 June 2024 while the Applicant did so on 19 August 2024.  The Opponent then provided representations on 2 September 2024 and the Applicant on 3 September 2024.

    Section 60(3)

11. At the hearing, I questioned both parties as to whether the claims lacked support due to the omission of features essential to the working of the invention. After further consideration, I came to a preliminary view this was a relevant issue which had not been addressed by the Opponent’s case. Consequently, my letter of 5 April 2024 also sought submissions on both support and the procedural question of whether I should invoke s 60(3). The Applicant chose not to file submissions on either point and instead proposed to amend their claims. In the absence of submissions in chief from the Applicant I did not seek submissions in answer from the Opponent. I will consider this matter under the heading of support.

    Amendments proposed subsequent to the hearing

12. The Applicant requested leave to amend their specification on two occasions following the hearing. The first of these requests was made on 26 April 2024 in response to my correspondence on s 60(3). The second was made on 20 August 2024 in conjunction with the Applicant’s Reg 5.23(2)(c) evidence. In both cases, the Opponent filed comments under Reg 10.2(7) which put that the Commissioner should defer consideration until after this opposition has been decided. The responsible delegate was of the same view, stating that ‘whether or if the proposed amendments would address or obviate any potential outcome from the opposition, or would simply be unnecessary, cannot be known until the decision issues’.

13. As consideration of the proposed amendments has been deferred, my decision here remains in relation to the specification as amended on 30 November 2022.  This is the version of the specification that the parties provided their submissions on at the hearing.  I will comment on the proposed amendments only to the extent that I think it is helpful to do so.

    Evidence

14. Documents D1-D10 filed with the SGP were directed into evidence on 11 January 2022.  The following is a summary of the subsequently filed declaratory evidence.

Declarant	Dated	Exhibits
EIS	Robert Streeter (“Streeter1”)	11 April 2022	RS-1 to RS-10
EIS	Rodney Dabboussy (“Dabboussy1”)	11 April 2022	RD-1 to RD-4
EIA	Mark Gagiano (“Gagiano1”)	1 December 2022	MG-1 to MG-8
EIA	Peter Xu (“Xu”)	2 December 2022	PU-1
EIR	Robert Streeter (“Streeter2”) excluding: ·    [17] – last six sentences ·    [18], [20] – references to an insulating substrate and Oasis prior art ·    [21] – fourth last sentence ·    [28] – last four sentences ·    [30.2] – last three sentences ·    [35] – last sentence ·    [36] – third through to sixth sentences ·    [37] – entire paragraph	14 February 2023	NONE
EIR	Rodney Dabboussy (“Dabboussy2”) excluding: [2], [4] and [5]	13 February 2023	NONE
5.23	Robert Streeter (“Streeter3”)	31 May 2024	RS-12
5.23	William Hird (“Hird”)	16 August 2024	NONE
5.23	Mark Gagiano (“Gagiano2”)	19 August 2024	NONE

Grounds of the Opposition

1. The SGP filed on 10 January 2022 identified the following grounds under s 59(b) and s 59(c):

   a)Not a manner of manufacture,

   b)Not novel

   c)Lack of an inventive step,

   d)Lack of utility

   e)Disclosure not clear enough and complete enough (s 40(2)(a))

   f)Claims not supported (s 40(3))

   g)Claims not clear (s 40(3))

   h)Best method not disclosed (s 40(2)(aa))

2. The amended SGP filed on 26 July 2023 maintained each of the above except novelty.  These were all pressed at the hearing, and I will consider them in the order they were argued.

   Legislation, Onus and Standard of Proof

3. The Opposed Application was filed after 15 April 2013 and is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 (“Raising the Bar”). Amendments to sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of Raising the Bar.

4. The standard of proof that applies in the present case is the balance of probabilities. The onus rests on the Opponent to establish the grounds they seek to rely on. If I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the present application under s 60(3A). Before refusing an application and where it is appropriate that I do so, s 60(3B) requires that I provide the Applicant with a reasonable opportunity to amend the relevant specification for the purpose of removing any ground of opposition.

   The Invention as Described

5. The opposed application identifies the field of the invention as relating to a heatable barrel for hair styling appliances such as curling tongs, curling wands, or hot iron brushes, and to associated components and manufacturing methods (Opposed Application, page 1).  It goes on to explain that typical designs mount a heater on a heater carrier which is fitted inside an elongated barrel.  This necessitates heat transfer across at least two barriers and is contrary to a desire in the art to increase the speed and efficiency of thermal transfer.

6. Two distinct components are described in detail.  These are a ‘barrel with integral heater-mounting surface’ (Opposed Application, beginning on page 6) and an ‘improved heater architecture’ (Opposed Application, beginning on page 9).  The barrel (item 12, Figure 2) is preferably formed as a single metal extrusion and includes an integral heater-mounting surface (item 16, Figure 2, Opposed Application, page 7).  This heater-mounting surface may be flat and appear as a chord in cross-section.  Improved efficiency is said to be achieved when the heater-mounting surface is twice the thickness of the external surface (item 14, Figure 2).  The heater element (item 20, Figure 2) can be held in contact with the heater-mounting surface using a spring clip (item 18, Figure 2, Opposed Application, page 8).  The use of this barrel is exemplified in the context of a curling tong appliance.

   
   Figure 2 of the Opposed Application

7. The heater architecture of the Opposed Application is said to improve the thermal response of the hair styling appliance.  Specifically, the Applicant reports that it is advantageous to use a heater having an integral, rather than external, temperature sensor (Opposed Application, page 9).  In the exemplary embodiment, the heater element is formed from 3 co-fired ceramic layers (Opposed Application, page 11).  These are the top layer (item 23, Figure 7), the temperature sensor layer (item 24, Figure 7), and the heater track layer (item 26, Figure 7).  Each is formed from a ceramic substrate consisting of a material such as aluminium oxide and contain through-thickness solder pads (item 21, Figure 7) for electrical connection.  The temperature sensor layer has a resistance track (item 25, Figure 7) which may have either a positive or a negative temperature coefficient for measuring temperature.  The heater track layer (item 27, Figure 7) has resistive track for heating which aligns with the track in the temperature sensing layer (Opposed Application, page 12).  Each of the tracks is placed away from the surface of the heater element to avoid electrocution (Opposed Application, page 11).

8. The heater element is powered by a control circuit (Opposed Application, page 10).  This includes a resistance sensing unit which generates a signal based on the temperature sensing track.  The signal from the resistance sensing unit is passed to a control unit which adjusts the current provided to the heating track by a drive unit.  An interface may enable the user to specify a temperature or type of hair styling operation to be carried out.

Figure 7 of the Opposed Application

The Claims

1. As most recently amended on 30 November 2022, the specification ends in 26 claims which are set out in their entirety in Annex A.  There are 4 independent claims.  Claims 1 and 21 are product claims to a hair styling appliance comprising a heater element.  Claims 11 and 24 are corresponding method claims to a method of manufacturing a hair styling appliance.  Claims 2-10, 12-20, 22, 23, 25 and 26 are ultimately dependent on one of these independent claims.  Claim 1 reads:

   Claim 1: A hair styling appliance comprising a heater element ,

   wherein the heater element comprises

   a substrate having a conductive track for generating heat upon application of an electrical current thereto, and

   an integral temperature sensor that comprises a resistive track, the resistance of which changes with temperature;

   wherein the conductive track, and the resistive track of the temperature sensor, are both embedded, one above the other, within the thickness of the substrate; and

   wherein the substrate comprises a ceramic material.

   Who is the person skilled in the relevant art?

2. The specification is to be construed through the eyes of the person skilled in the art (“PSA”). The PSA is a hypothetical worker in the art who possesses the common general knowledge (“CGK”) but is non-inventive.  Where the invention relates to a number of disciplines, the PSA may 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. v Beiersdorf (Australia) Ltd. (1980) 144 CLR 253 at [115]).

3. In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 at [16], Kiefel J identified the person skilled in the art as:

   … a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time. They are likely to have a practical interest in the subject matter of the invention and may often work in the art with which the invention is connected. (citations omitted)

4. Finkelstein J described some of the functions of this person and their many labels in Root Quality Control at [70]:

   He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious. Sometimes he is the “notional skilled addressee”, sometimes the “uninventive skilled worker in the particular field”, sometimes the “non-inventive worker in the field”, sometimes the “person skilled in the art” and sometimes the “non-inventive hypothetical skilled addressee”. (citations omitted)

5. And in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [23], the High Court additionally noted that:

   The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.

6. The Opponent put in both their written and oral submissions that ‘[i]t does not appear to be in dispute that the Application is directed to a team with an interest in making products for hair styling involving heating: Streeter, [16]; Gagiano, [64]-[65]’ (OS at [30]).  They state that the relevant team will include both engineers and industrial designers, but characterise the problem of increasing the speed and efficiency of thermal transfer as an ‘engineering problem’ (OS at [36] and [37]).  They further state that the relevant team will have exposure to, and knowledge of, products and components across all price points and be familiar with a range of component part manufacturers with whom they would consult as a matter of course (OS at [35]).

7. The Applicant identifies the PSA to be ‘persons involved in the hair styling industry, engaged in, or who have experience in, the design, development and manufacture of heated hair styling appliances’ (AS at [33]).  They agree that this person would be familiar with a range of hair styling component part manufacturers and consult with these manufacturers as a matter of course (AS at [35]).  The Applicant emphasises Mr Gagiano’s evidence that the opposed application is ‘very clearly specific to the hair styling industry’, which is ‘a distinct sector of the market place’ (AS at [31]).

8. In oral submissions, the Opponent put that the Applicant was seeking to improperly confine the PSA ‘to a team that works exclusively on hair styling appliances and which is entirely devoid of any other knowledge or experience’ (Opponent’s oral submissions at 50:30). It was the Opponent’s position that the PSA would instead also have experience with ‘other appliances’ (OS at [35]); a point which they supported by reference to the work history of the declarants.

9. I agree that the PSA is a team with an interest in the design, development, and manufacture of heated hair styling appliances.  The evidence establishes that this team will include both industrial designers and engineers.  I also think that it establishes that this team will work exclusively on hair styling appliances.  Mr Gagiano states at [65] of his declaration that companies in the field tend to be ‘dedicated to hair styling products’.  Where this is not the case, there is usually internal demarcation as Mr Streeter describes in terms of the different ‘teams’ at Dyson (Streeter1 at [8]).  While many workers may well have experience with ‘other appliances’ I see no reason to think that this will be universal in fact or nature.

10. I also think that the specification is addressed to those with an interest in the design, development and manufacture of components for heated hair styling appliances.  This group includes workers at the component part manufacturers with whom the appliance designers would consult.  My reason for thinking this is that the specification identifies the field of the invention to include ‘a heatable barrel for a hair styling appliance [and]… associated components’ (Opposed Application page 1).  I am further fortified in this view by Mr Gagiano’s evidence at [98] that engineers who work for ‘component part manufacturers’ should not be ‘overlooked’ when identifying ‘the various engineers active in hair styling development’.

    The declarants

1. The Opponent has provided evidence from Rodney Dabboussy and Robert Streeter.  Mr Dabboussy is a patent attorney and is not asserted to be an expert in relation to the technology of the invention.  His evidence is limited to putting certain documents into evidence and documenting a product ‘tear-down’ on which Mr Streeter comments.  The Applicant has provided evidence from Mr Mark Gagiano and Mr Peter Xu.

2. Mr Streeter and Mr Gagiano are employed by the Opponent and Applicant respectively.  Both state that they have complied with the Federal Court Expert Evidence Practice Note (‘GPN-EXPT’) and have not let their professional relationship with the parties influence the evidence they have given.

   Mr Robert Streeter 

3. Mr Robert Streeter holds a Bachelor of Engineering in acoustics and is a Principal Engineer with the Opponent.  He joined Dyson as a noise and vibration engineer in 2010 and has worked on several different products since.  The first of relevance is Dyson’s ‘heated fan’ which he worked on from 2011 to 2014.  Mr Streeter reports gaining ‘a good knowledge of the properties of and the uses’ of positive temperature coefficient (PTC) heaters during this time (Streeter1 at [3]). 

4. Mr Streeter’s initial involvement with hair care appliances came in 2014 when he joined the ‘Supersonic’ hair dryer team.  Although primarily responsible for noise and vibration issues, he reports gaining ‘broad based expertise in haircare product development’ through collaborative work with the broader team (Streeter1 at [5]). 

5. From 2016, Mr Streeter has led hair care appliance development teams and has been involved with products including hot air dryers and hair stylers.  As a result, he reports being ‘exposed to all developments with hair appliances involving heating plates such as straighteners and curlers as well as those focused on heated air and [having] significant experience with the engineering issues and trade offs’ (Streeter1 at [11]).  He further reports working on a ceramic heater research and development program from 2019 to 2022.

6. The Applicant pressed several criticisms of Mr Streeter’s evidence.  The first was that he did not possess the necessary expertise and experience to give evidence on CGK and obviousness (AS at [13]-[14]).   The Applicant characterised Mr Streeter’s ‘core expertise’ at the priority date as relating to the ‘design and development of hair driers (heating air), heated fans (heating air) and vacuum cleaners (suction) with particular responsibility for noise and vibrations issues’.  This was said to differ from the subject matter of the opposed application which the Applicant characterised as relating to ‘heating and hairstyling appliances’.  To the extent that Mr Streeter may have been exposed to the relevant subject matter as a team member or manager, the Applicant put that this knowledge would be a step removed from that of a PSA.

7. As a further point on Mr Streeter’s expertise, the Applicant argued his evidence suggested that he had not previously considered the subject matter of the opposed application to be relevant to his work.  This was because Mr Streeter stated that he had regard to ‘[p]atents determined to be relevant to our projects’ but also that he had not previously seen the opposed application or any equivalent document (Streeter1 at [15] and [18]).

8. As a final point on Mr Streeter’s expertise, the Applicant submitted that conceded errors in Streeter1 demonstrated a lack of familiarity with the subject matter.  Specifically, at [37] he incorrectly defines the acronym MCH to reference a micro and not metal ceramic heater, at [39] he incorrectly identifies the T3 BodyWaver product to contain a ceramic barrel and at [43] he incorrectly identifies the Conair product to have a ceramic heater when it has a wound wire heater.

9. The Opponent’s response argued that any inexperience attributed to Mr Streeter only bolstered their case.  Their reasoning was, that in the absence of any allegation of impermissible knowledge, anything known to Mr Streeter would also be known to workers having greater experience.  They also put that similar criticisms could be made of the Applicant’s witness Mr Gagiano who was only exposed to the relevant subject matter from what appear to be supervisory positions (Gagiano1 at [6]-[10]).  The Opponent further characterised Mr Streeter’s errors as ‘inconsequential’ (Opponent’s oral submissions at 19:47) and suggested that his ready correction of these errors in the EIR demonstrated that he was a conscientious witness.

10. I consider that Mr Streeter meets the criteria of a person skilled in the art.  He is someone who was actively involved in the development of heated hair styling appliances at the priority date.  That said, his involvement with the technical subject matter of the opposed application does seem to have been indirect and somewhat limited.  I am therefore of the view that while Mr Streeter can provide useful evidence as to CGK and obviousness, the probative value of that evidence is likely to be lesser than that of someone with more extensive and direct experience.  The errors in Mr Streeter’s evidence fortify my view on this.  While I agree with the Opponent that these errors are not significant, they are suggestive of an inattention to detail, if not inexperience with the relevant subject matter.  I am furthermore unpersuaded by the Opponent’s argument that Mr Streeter’s inexperience only serves to bolster their case.  Certainly, one may expect the knowledge of an experienced worker to encompass that of an inexperienced worker, but one would also expect an experienced worker to better understand the context and nuances of that knowledge.

11. The Applicant’s other criticisms of Mr Streeter’s evidence related to its ‘form and focus’ (Applicant’s oral submissions at 18:50) and an alleged failure to acknowledge and explain choices he attributed to the PSA.  On form and focus, the Applicant highlighted several places where Mr Streeter gives evidence of CGK that is clearly focused on the subject matter of the Opposed Application.  They submitted that this focus was suggestive of Mr Streeter being provided with ‘nudges’ (Applicant’s oral submissions at 32:04).  They also put that this issue infected Mr Streeter’s evidence on inventive step to the extent that he did not address alternatives conceded in his own evidence.  The examples the Applicant identified in this context were Mr Streeter’s choice of heater, temperature sensor and heater attachment mechanism.

12. The Opponent rejected any suggestion of ‘hindsight nudges’ as baseless and inappropriate.  They also disagreed that Mr Streeter had not explained the choices he attributed to the PSA.  Rather than being the product of any nudges, the Opponent put that Mr Streeter’s declaration only reflected matters that were relevant to the proceedings.

13. I do not think the Applicant’s suggestion of ‘nudges’ rises to anything more than unhelpful speculation.  It is quite usual for evidence to be curated, and I expect that the identified ‘focus’ of Mr Streeter’s evidence reflects no more an application of this process.  What I do consider to be potentially problematic, however, is the way a similar process of curation or even abridgement seems to have been applied to the record of questions.  By way of example, the only question that Mr Streeter records as having been asked in relation to the CGK is:

    … to discuss the nature of the person or team involved in the development for commercial manufacture of electrically powered, heated appliances for use in hair care as at the Priority Date and the background knowledge available to those people at that date.

14. The scope of this question seems so broad as to be practicably unworkable when asked in isolation.  This is especially so given that Mr Streeter states that he had not already viewed the Opposed Application (Streeter1 at [15]) and was presumably seeking to provide untainted evidence on CGK.  I therefore think it likely that some context is missing.  While I do not have any reason to think that this missing context is suggestive of ‘nudges’, it does reduce the probative value of Mr Streeter’s evidence, given that it seems highly unusual that he would provide specific evidence of direct relevance in answer to a singularly broad question.

15. I am similarly unpersuaded by the Applicant’s submission that Mr Streeter has not explained his choices in relation to inventive step.  In Streeter1, he provides reasons for his choice of heater at [62], the sensor type at [63] and the attachment mechanism at [58].

    Mr Mark Gagiano

16. Mr Mark Gagiano is Director of Operations Asia with the Applicant.  He holds qualifications in industrial design and commerce.  Mr Gagiano has several decades of experience in product design and development.  This includes experience as a consultant in both South Africa and the UK as well experience as an in-house designer and project manager for companies producing consumer electronics.  He reports first ‘working with, and becoming familiar with various heating elements’ in 2008 when he was involved in the design of products including hot plates and water heaters.  He later joined the Applicant, Jemella (better known by its trading name ghd), as director of projects in 2011 (Gagiano1 at [1]-[6]).

17. Mr Gagiano states that his role at ghd has required him to work with suppliers of heating elements and that, at one point, he was ‘the expert’ within ghd on the subject of thick film heaters.  It was at this time that he was involved in development of a hair styling product having three separate heater zones.  This product used thick film heaters and thermistors in each zone.  Mr Gagiano recalls ‘teething problems’ with the calibration of the thermistors and thickness of the ceramic substrate (Gagiano1 at [12]).

18. The Opponent sought to make something of the fact that Mr Gagiano does not hold an engineering qualification.  While accepting that an industrial designer would form part of the relevant team, they characterised the problem to be solved as relating to ‘engineering issues’ such as heat transfer and not ‘design issues’ such as appearance or ergonomics.  It was the Opponent’s submission that I should place no weight on Mr Gagiano’s ‘comments on Mr Streeter’s evidence insofar as issues relating to engineering are concerned’ including evidence, ‘as to what was CGK among engineers at the priority date’ (OS at [25]).

19. The Applicant in turn sought to characterise Mr Gagiano’s experience with the subject matter of the patent as more ‘direct’ than that of Mr Streeter, and his evidence as both more detailed and more accurate.  They also emphasised that it was Mr Gagiano who had identified errors in Mr Streeter’s evidence (AS at [19]-[20]).

20. I do not think it would be appropriate to discount Mr Gagiano’s evidence simply because he does not hold a qualification in engineering.  Mr Gagiano is clearly someone with direct experience and interest in making heated hair styling appliances and it appears that the Opponent accepts he forms part of the notional team.  While I agree that each member of the team will have their own expertise, I do not consider the matters under consideration here to belong so exclusively to the domain of ‘engineering’ such that Mr Gagiano is unable to provide probative evidence.  My first reason for thinking this is that the subject matter of the opposed application and the evidence itself are not of a level that would seem to require specialist technical qualifications.  My second and related reason is that I understand industrial designers to work with engineers on the technical functioning of products.  Certainly, Mr Gagiano’s evidence that he was ‘the expert’ on thick film heaters in a large multi-national corporation supports that he was actively engaged in the functional specification of the relevant products and has suitable experience to give credible evidence on these matters.

    Mr Peter Xu

21. Mr Peter Xu is a technical consultant holding a MSc majoring in mechanical engineering.  Mr Xu has worked for several different electronic component manufacturers globally.  This includes the firm WIK.  WIK is an OEM/ ODM manufacturer of personal hair care and kitchen appliances which has previously been engaged by the Applicant.  Mr Xu was employed by WIK from 2005 until 2020.  He joined as a Deputy Engineering Manager responsible for hair care products before working as a Senior Project/Program Manager responsible for OEM/ ODM hair care product development for the period 2016-2020.

22. Mr Xu’s declaration is relatively brief, and he does not directly answer Mr Streeter’s evidence.  The Opponent submitted that this was reason to doubt the reliability of his evidence.  I disagree.  The evidence which a party chooses to adduce from an expert is their own prerogative and mere speculation on their choices is no more than unhelpful.

23. The Opponent also submitted that there were reasons to think that Mr Xu’s evidence may be atypical by reason of the particular price point to which he had been exposed. I agree that there is some merit to this observation, and I will discuss this in greater detail when I come to consider the CGK.

    Claim Construction and Clarity

    Relevant law

    Claim construction

24. Principles of construction were summarised in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (“Pfizer”) at [247] to [250]. At [249] Pfizer cited the following from Re Décor Corporation Pty Ltd (Formerly Brian Davis and Company Pty Ltd) and Rian Tooling Industries Pty Ltd v Dart Industries Inc (1988) 13 IPR 385:

    1. The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

    2. It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

    3. Nevertheless, in approaching the task of construction, one must read the specification as a whole.

    4. In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

    5. If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

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

    7. In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

    8. The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

    9. Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
    10. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.

25. At [250] Pfizer cited the following from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56:

    “1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).

    2. The Court should avoid too technical or narrow a construction of claims.

    3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.”

26. A further well-established principle is the presumption against redundancy.  By way of example, the Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc [2023] FCAFC 7 recently determined that a limitation present in an appended claim supported the view that the broader independent claim did not itself possess this limitation (see [93]-[94]).

    Clarity

27. Subsection 40(3) of the Act requires that the claims be clear. In BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117 Beach J explained at [705]:

    A valid claim is required to define with sufficient certainty the scope of the monopoly being claimed. Given that a patent is a public instrument, the claim must be defined in such a way that it is not reasonably capable of being misunderstood so that others know the ‘exact boundaries of the area within which they will be trespassers’: Electric & Musical Industries Ld v Lissen Ld (1939) 56 RPC 23 at 39 per Lord Russell of Killowen. A claim will lack clarity if a person skilled in the relevant art cannot ascertain whether what he proposes to do falls within the claim’s ambit.

28. Where it is impossible to ascertain the scope of invention the claims should be found to lack clarity (see Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 12), however, ‘any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed’ (Welch Perrin and Co Pty Ltd v Worrel (1961) 106 CLR 588).

1. As was cited from Blanco White, Patents for Inventions (5th ed) at 4-701 with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 and Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890:

   Certainly a claim is not invalid merely because it might have been better drafted, nor merely because the patentee puts forward a construction that the court is not prepared to adopt; nor merely because it is capable of more than one construction, even though it be difficult to decide which is the right one.

   Submissions and consideration

2. The parties made only brief submissions on construction.  The Opponent questioned the scope of several phrases appearing in Claim 1 (see OS [83]).  Specifically:

   a)   ‘one above the other’

   b)   ‘integral temperature sensor’

   c)   ‘the substrate’

3. The Opponent argued that it was unclear how the scope of the above phrases extended beyond the limitations provided by dependent claims 2, 6 and 7 respectively.  Though their submissions seemed more directed towards establishing a lack of support, I still find it useful to consider these phrases in the context of clarity.  In doing so, I first note that the presumption against redundancy is exactly that, a presumption.  As was stated in David Kahn Inc v Conway Stewart & Co Ltd (1974) RPC 279, ‘There is no absolute or invariable rule that different claims should be construed as of different scope. The prima facie presumption that this is so can bend to other considerations if they are weighty enough.’ In what follows, all references to Macquarie Dictionary point to its online edition as reviewed on 16 June 2024.

   ‘one above the other’

4. On phrase a), the Opponent submitted that it was unclear what additional configurations are within the scope of ‘one above the other’, other than ‘planar parallel layers’ as defined by dependent Claim 2.  The Applicant responded that the phrase should be given its plain meaning which was simply to define that the two tracks are not in the same horizontal plane.  They further went on to emphasise that embodiments where the two tracks followed the same path (such as depicted in Figure 7) were non-limiting.

1. I do not think the scope of claim 1 is unclear.  The phrase ‘one above the above’ unambiguously defines the relative position of the two tracks within the thickness of the substrate.  Whereas claim 2 requires these tracks to be formed as planar parallel layers, claim 1 admits other possibilities which may be readily appreciated as a matter of geometry.  Examples include embodiments where a single track is not formed at a constant depth within the substrate nor a constant distance from the other track.  Whether such possibilities are enabled is a separate question.

   ‘integral temperature sensor’

2. On phrase b), the Opponent submitted that it was not clear what fabrication means beyond ‘molecularly bonded’ claimed in claim 6 resulted in an ‘integral temperature sensor’.  The Applicant replied that the term ‘molecularly bonded’ was limited to chemical bonding whereas Claim 1 also encompassed physical bonding such as by thermal paste.  The Opponent disagreed with this reasoning arguing that the specification taught against thermal paste and that all the described embodiments involved co-firing which would necessarily form a chemical bond.

1. The Macquarie Dictionary defines the word ‘integral’ to mean ‘of or relating to a whole; belonging as a part of the whole; constituent or component’.  It is in this sense that I understand Claim 1 to employ the term.  At [69] of his first declaration, Mr Streeter states that he understands the word to mean ‘integrated’ such that the substrate ‘includes’ a temperature sensor.  Mr Gagiano’s evidence does not appear to define the term, but he does describe known glass bead thermistors as being ‘non-integral’.  It is my understanding that such thermistors will often be attached using a thermally conductive paste.

1. In determining the scope of the phrase ‘integral temperature sensor’, it is helpful to consider some additional context provided by Claim 1.  Claim 1 defines the integral temperature sensor to comprise a resistive track and further defines that this track is embedded within the thickness of the substrate which comprises a ceramic material.  The Applicant submitted that the word ‘track’ should be given its plain English meaning which is defined by the Macquarie Dictionary as ‘a path or course made or laid out for some particular purpose’ (AS at [138]).  I consider that the skilled addressee would understand a more precise technical meaning.  The fifth edition of the Oxford Dictionary of Electronics and Electrical Engineering defines the term ‘track’ to mean ‘[a]n interconnecting metal path on an integrated circuit’.  I therefore construe the ‘integral temperature sensor’ comprising a ‘resistive track’ of Claim 1 to define a resistive path placed on and then embedded in the ceramic substrate.  This construction is compatible with the evidence of both Mr Streeter and Mr Gagiano who seem to use the term interchangeable with that of ‘trace’ (see, for example, Streeter1 at [21]-[23] and Table F 1.5; Gagiano1 at [106], [108], [118]).

1. I do not understand the phrase ‘molecularly bonded’ to be a term of art.  The phrase is not defined in the specification and used only in the context of obviating a need for thermal paste.  Mr Streeter states at [69] of his first declaration that the term ‘refers to a form of chemical rather than purely physical bond’.  Mr Gagiano does not seem to discuss the meaning of the term.  I thus accept Mr Streeter’s definition and construe Claim 6 to require primary chemical bonding between the ceramic substrate and the resistive track.

1. I therefore understand Claim 1 to be broader than Claim 6 in that it admits embodiments where there is no primary chemical bonding between the ceramic substrate and the resistive track.  Contrary to the Applicant’s submissions, I do not think Claim 1 encompasses arrangements where the temperature sensor is ‘physically bonded’ by thermal paste or mechanical means.  This is because I do not understand electronic ‘tracks’ to have structural integrity separate from the substrate on which they are laid such that they may be joined to that substrate by thermal paste or mechanical means.  I also accept the Applicant’s submissions that the elimination of a need for thermal paste is one of the benefits of the invention.  I instead construe Claim 1 to extend to arrangements where the track is adhered to the substrate simply due to surface roughness or secondary bonding such as Van der Waals forces.

   ‘the substrate’

1. On phrase c), the Opponent submitted that it was not clear if Claim 1 was broader than the limitation provided by Claim 6 whereby the substrate is formed by the ‘constituent ceramic layers [being] fired together’.  The Applicant responded that this issue ‘goes nowhere’.  I agree; it seems clear that Claim 1 should be read to encompass arrangements where the constituent layers are not fired together.

   What is the scope of the phrase ‘hair styling appliance’?

2. I asked the Applicant several questions at the hearing on how I should construe the preamble ‘hair styling appliance’.  They submitted that the phrase should be read in light of the specification to define hair styling appliances having a handle not inclusive of hair dryers.  Their reasoning for this was that the specification does not mention hair dryers, and that Claim 23 limits the invention to a curling tong, a curling wand, a hot iron brush, and a hair straightener.  The Opponent disagreed with this reasoning, arguing that the limitation provided by Claim 23 instead necessitated that Claim 1 was broader in scope.  In the Opponent’s submission, that the preamble defined ‘any imaginable hairstyling appliance that includes a heater with the features’.

3. I see no reason to read any specific limitations into the preamble ‘hair styling appliance’.  The phrase is clear on a plain reading and drawing limitations from the specification would amount to a gloss.  The Macquarie Dictionary defines an appliance to be ‘an instrument, apparatus, or device, especially one operated by electricity and designed for household use’.  Styling is defined as ‘to make conform to a specific style’, where the word style itself is defined as ‘a particular kind, sort, or type, as with reference to form, appearance, or character’.  Any device for changing the appearance of hair and which has the claimed heater would thus seem to fall within the scope of the claims.  To my mind this would include hair dryers of both the handheld and standing varieties.

   Inventive Step

   Relevant law

4. Sub-paragraph 18(1)b(ii) of the Act requires that an invention, so far as claimed in any claim, involve an inventive step. The statutory basis for an inventive step is found at s7(2) and s7(3) of the Act:

   (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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

5. The explanatory memorandum provided for s 7 of Raising the Bar states:

   While a skilled person is essentially deemed to be aware of and to have carefully read the publically available information, the inventive step tests are otherwise applied in the context of what the skilled person would have known and done before the priority date of the claims in question. The tests will therefore continue to take account of factors such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development.

6. The High Court has endorsed the test for obviousness given by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 (“Wellcome Foundation”) at [45] on several occasions:

   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 [see AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 at [15] (“AstraZeneca”); Aktiebolaget Hässle v Alphapharm Pty Limited [2002] HCA 59, [50] (“Alphapharm”)].

7. The meaning of ‘routine’ was discussed in Alphapharm at [50]-[53]. The High Court drew on the language of Wellcome Foundation at [35] to ask whether experimentation leading to the claimed invention was part of the inventive step claimed or was ‘of a routine character’ to be tried ‘as a matter of course’. This approach was stated to have an ‘affinity’ with the modified ‘Cripps question’ posed by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd (1970) RPC 157 at 187:

   Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of [the existing compound], directly be led as a matter of course to try [the claimed  inventive step ] in the expectation that it might well produce a useful alternative to or better drug than [the existing compound]? (see also AstraZeneca at [15], Alphapharm at [54])

8. The person skilled in the art must have a reasonable expectation of success (see Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73 at [71]). This is to be distinguished from steps which they would consider ‘obvious to try’ (Alphapharm at [76]). Certainty of outcome is, however, not required, and multiple pathways may be obvious (Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2 at [99] and [93]; AstraZeneca at [115]).

1. A ‘scintilla of invention’ will support an inventive step, but there must be some difficulty overcome or some barrier crossed (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 at [52] and [65] (“Lockwood”); R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at [39]).

1. The question of obviousness is not to be addressed by asking whether each integer or step is obvious.  The question is rather whether the combination of integers as a whole is obvious in the requisite sense (Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (Liability) [2022] FCA 1585 at [237]; Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. (1980) 144 CLR 253 at [12] (“Minnesota Mining”); also Alphapharm at [119]

1. In many cases, it will be appropriate to adopt a ‘problem and solution’ approach.  This involves first identifying the problem to which a claimed invention is directed and then applying the test of Wellcome Foundation at [45]. While the problem and solution approach can help in avoiding ex post facto analysis, the High Court has warned that it may be unfair to the inventor of a ‘simple solution’ (Lockwood at [65]). As stated in Alphapharm at [38]:

   [N]ot all inventions are to be classified as successful solutions to a problem which had presented a ‘long‑felt want’; (iii) to the contrary, inventions which are an advance of contemporary expectations and thus reveal an ‘unfelt want’ may well involve an inventive step; and (iv) in cases falling within (iii), experiments and research would throw no light on the quality of what was claimed as an inventive step

2. And in Garford Pty Ltd v DYWIDAG Systems International Pty Ltd [2015] FCAFC 6 at [43]:

   It follows that even though a problem and situation approach may point to an invention being obvious, other factors may tell against that conclusion such as where the claimed invention is shown to have overcome a known problem or difficulty which others in the art had not thought to solve.  [it seems likely that the court intended ‘problem and solution’ but, in either case, their honours’ intention seems clear]

3. Where the problem and solution approach is employed, the problem must be formulated using only information that is available to the person skilled in the art as either common general knowledge or information available under section 7(3) as per AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [203]:

   If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.

4. The Opponent’s written submissions drew my attention to case law dealing with the role of commercial considerations in determining obviousness.  They quote Middleton J in Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552  (“Damorgold”)at [382]:

   The Court does not look at the commercial motives or the cost inhibitors or advantages in determining whether or not it was obvious to take a particular step in developing a product.

5. The above is, however, tempered by the remainder of the paragraph:

   However, as Sedley LJ observed in Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 at [87]-[88], the skilled addressee is not to be expelled from the real world; nor is the Court in its appreciation of what a skilled addressee would do as potentially worthwhile when considering the issue of obviousness. The mindset of the skilled addressee must be affected by their awareness of a commercial or social need, and the commercial and social background known to the skilled addressee cannot be excluded from a consideration by the Court on the issue of obviousness.

6. Dyson Appliances Ltd v Hoover Ltd [2002] RPC 22 (“Dyson”) at [87]-[88] was also cited with approval by the High Court in Lockwood in stating:

   Common general knowledge has negative as well as positive aspects.  Practical and technical issues can affect the means by which a concept may be implemented in respect of an already known vendible product, and scepticism can inhibit recognition of the utility of applying a concept or idea to a known set of integers.

7. The High Court further referred to Hallen Company v Brabantia (UK) Ltd [1989] RPC 307 at [327] which Sedley LJ took as a starting point for his analysis in Dyson, citing this:

   By ‘obvious modifications’ are meant that which technically or practically would be obvious to the unimaginative skilled addressee in the art. He does not and should not have to look further and consider whether the step he is taking is obvious or not for commercial reasons. The prize for a good commercial decision or idea is a head start on the competition and not a monopoly for twenty years.

8. Sedley LJ then went on to state at [87] of Dyson:

   Accepting this unreservedly, it remains the case that the perceived limits of technical practicability are a matter of mindset, and that mindset is characteristically affected by awareness of need, of which commercial potential is both a function and an index.

   The common general knowledge

9. The CGK was defined by Aickin J in Minnesota Mining at [115]:

The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.

1. The CGK is not limited to that which a PSA will have memorised but also includes material which he or she would refer to as a matter of course.  Examples include standard textbooks and reference materials as well as field specific journals (ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [1999] FCA 345 at [112]). Information does not, however, become CGK merely because it is broadly circulated in the art. It must also be generally accepted and assimilated by the relevant community (Alphapharm at [31], [175]). This is unlikely to be the case where that information has not been used (Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315 at [100] quoting from Protection of Industrial Designs by T A Blanco White (5th ed) at par 4-207).

   Known heater types

2. The parties agreed that several heater technologies were known in the art:

   ·Wire heaters (including nichrome wire heaters)

   ·Positive Temperature Co-efficient (“PTC”) elements

   ·Thick-film heaters

   ·Metal Ceramic Heaters (“MCH”)

3. The parties also agreed that each of these heater types were understood to have certain characteristics and advantages.  Mr Gagiano states at [32]-[33] of his declaration that nichrome wire heaters are the ‘oldest and most traditional technology’ and that he would consider their use in a hair styling product (other than a hair dryer) ‘a little unusual’.  Mr Streeter agrees with this at [4] of his EIR while Mr Xu states at [20] that this was ‘a very common type of heater particularly for hair curlers and straighteners’.

1. On PTC heaters, Mr Gagiano states that ‘[t]he main feature of these heaters is that they self-regulate their temperature’ but that their ‘‘response to load’ is poor making [them] unsuitable for the premium hair appliance market’ (Gagiano1 [29]-[31]).  He further states that ‘[s]ome of the cheaper end of the market do still use PTC heaters. This is because … they are simple to implement and therefore also cheaper’.  Mr Streeter agrees with these statements at [4] of his EIR.

1. Mr Xu explains a further limitation of PTC heaters is that self-regulation will only occur for ‘a single predetermined operative temperature’ (Xu at [13]).  He states that this limitation may be overcome by control circuitry including a temperature sensor.  One approach described by Mr Gagiano is to specify the PTC heater with a high operating temperature which is then down regulated by circuitry including a thermistor having a negative thermal coefficient.  Mr Gagiano states that this arrangement ‘gives the advantage of quicker ramping up to the operative temperature while still allowing a cheaper PTC heater to be used’ (Gagiano1 at [31]).

1. Thick-film heaters were only discussed at any length by Mr Gagiano (see Gagiano1 [21]).  He describes these devices as being formed by ‘screen printing a conductive material onto an electrically insulating substrate such as a glass frit or a ceramic base’.  He further states that ghd has used this technology (presumably commercially) but difficulties in avoiding substrate cracking led to the development work underlying the opposed application.  Mr Streeter acknowledges this evidence at [4] of his EIR, which the Applicant sought to characterise as his first reference to this type of heater technology (AS at [49]).  Mr Streeter does, however, state at [24] of his evidence in support that ‘[a] trace can be placed on top of a ceramic substrate’.  Mr Xu does not explicitly mention thick films heaters.

1. The final heater type which the parties identified to be CGK was MCHs.  Mr Gagiano describes MCHs and their use in hair styling appliances at [22]-[23] of his declaration:

Metal Ceramic Heaters (MCH) is a generic term used by manufacturers in China / Asia describing ceramic (alumina) heaters that have a printed heater element embedded within the ceramic. The majority of the MCH heaters I had come across by 2017 used a tungsten based conductive paste/ink as the heating element. In the case of a flat styler type heater, the heater track is printed on one side of an alumina sheet (green state) and then sandwiched by another alumina sheet, so that the track is fully contained between the two alumina sheets (both sheets in the green state). The assembly is then trimmed to size, and then sintered to solidify the alumina ceramic.

These heaters had been around for some time even in 2017. Unil Electronics Corp., was probably the first manufacturer to start using MCH heaters for hair styling products in the late 90’s and early 00’s. The original ghd stylers were produced by Unil. From what I understand, Unil also produce hair styling products for two of the other market leaders - Cloud 9 and Chi using the MCH heaters. They have also introduced their own brand of hair styler, Glampalm.

1. Mr Xu’s evidence differed on whether MCHs were CGK.  At [19] he states a belief that the CGK was ‘against using this sort of heater’ at the priority date as ‘ways to combat [cracking] were not well researched’.  Mr Xu also identified the relatively high price of MCHs as a barrier to their adoption.  He went on to state that there were ‘quite a few companies with a significant market presence in 2017’ and that he was personally very familiar with offerings from Braun, Revlon, Conair and BaByliss.  It was Mr Xu’s recollection that, as of 2017, all these companies ‘only used PTC and electrical heating wire heaters’ due to ‘the possibility of heater crack…and [MCH] costs’.

1. Mr Streeter agreed that MCHs are relatively expensive but suggested that Mr Xu was ignoring ‘the emerging market for hair care appliances, where consumers demand more upmarket products with higher costs’ (Streeter2 at [34]).  He further stated that ‘the problem of cracking due to repeated heat cycles was less of a concern as at the priority date due to heater suppliers matching the thermal expansion properties of the trace(s) and other surrounding components to the ceramic material’.  The Applicant characterised this statement as ‘problematic’ due to Mr Streeter’s apparent lack of ‘direct experience’ with MCHs at the priority date (AS at [48(b)]).

1. On balance, I am satisfied that MCHs were CGK at the priority date and that the PSA would have understood these heaters to be useful in the context of hair styling appliances.  As much is stated by Mr Streeter at [36] of Streeter1 and explicitly agreed to by Mr Gagiano at [43] of Gagiano1.  It is further corroborated by the ‘tear down’ of the T3 Body Weaver documented as exhibit MG-3.  This tear down is based on a commercial sample acquired by ghd in the period of 2013-2014 and reveals the use of MCHs.  Mr Gagiano states that ‘[t]here is nothing particularly special about [this product], and I agree that [it was] typical to those out there on the marketplace’ (Gagiano1 at [41]).  He further identifies two other ‘market leaders’, Cloud 9 and Chi who used MCH heaters (Gagiano1 at [23]).  That ghd obtained a sample of the T3 product suggests that the PSA would be aware of MCH use in hair styling appliances.  Congruently, the 2013 Kyocera and 2015 Innovacera MCH product brochures (exhibits RS-6 and RS-2) suggest that MCHs for hair stylers could be readily obtained at the priority date.

1. As I alluded to earlier, I think that Mr Xu’s evidence on whether MCHs were CGK is likely atypical.  While he seems to have had a more direct exposure to the technology of the invention, his exposure to the marketplace, and particularly to higher end products, appears to have been narrower than what is usual for a person with an interest in the design, development, and manufacture of heated hair styling appliances.  The Applicant appears to agree with this viewpoint, stating at [6] of their Reg 5.23(2)(c) submissions that ‘Jemella does not dispute that metal ceramic heaters (MCH) were known at the priority date and that MCH were used in some hair styling appliances at the priority date’.

Thermal control in MCHs

1. Having agreed on what heater types were known, the primary contention between parties was whether it was known to embed resistance temperature devices (‘RTD’) in MCHs.  At [24] of his declaration, Mr Gagiano explained that MCHs may use the heater track resistance to regulate temperature.  He went on to state, ‘[h]owever, for better performance other MCH heaters require a dedicated temperature control circuit’ and that ‘[t]he usual way this is achieved is by using feedback from an independent thermistor’.  Mr Gagiano further identified thermocouples and IR sensors as possible alternatives to a thermistor though he described IR sensors as being a ‘theoretical’ methodology due to these sensors being ‘expensive and bulky’.

1. Mr Streeter identified RTDs as a further known alternative for measuring temperature of MCHs (Streeter1 at [32], [33] Streeter2 at [29], [30], [32]).  He explained that RTDs are ‘electrical resistor[s] where the level of resistance changes with the temperature’.  These may be ‘printed in the same way as a resistive trace used to create heat - in any shape desired. ... be designed to measure the temperature across a part or the whole of a surface to be heated.  … There could also be more than one RTD used in an appliance’.  Mr Streeter went on to state that ‘[t]he process of printing traces for the temperature sensing and heating elements and co-firing them in a laminated ceramic structure was known to me [at the priority date]’ and that this provides ‘a single simpler part for manufacturing, for protection of the metallic traces by embedding them in a ceramic monolithic component and to provide electrical insulation’ (Streeter1 at [33]).  Mr Gagiano agreed with this description of RTDs and their advantages ‘as a matter of technology’ but states that ‘no one in either the hair styling industry or the sensor design industry for hair stylers was contemplating the use of such a sensor [at the priority date] … I do not think this was common general knowledge to the skilled addressee of the patent’ (Gagiano1 at [108]).

   Exhibit RS-4 – The ‘Durex brochure’

2. In addition to Mr Streeter’s declaration, the Opponent pointed to three pieces of documentary evidence which they asserted to show that embedded RTDs were CGK.  The first of these was the ‘Durex brochure’ which was filed as exhibit RS-4 and which I have reviewed in detail below.  Briefly, the document advertises AlN heaters for a range of industrial uses.  Reference is made to an ‘[i]ntegrated RTD sensor for optimum heater temperature control’.

1. Mr Streeter stated in his EIS that Durex ‘was a well known international supplier of ceramic heating technology’ whom he was very familiar with at the priority date due to his work with Dyson.  He explains that he ‘regularly considered supplier catalogues and brochures in [his] role at Dyson including those from Durex’ and that exhibit RS-4 provides ‘[a]n example of a laminated, co-fired or co-sintered ceramic heater that includes an RTD temperature sensor’ (Streeter1 at [47]).  Mr Streeter references exhibit RS-4 in support of his assertion that ‘the combined structural features [of the heater in the claims] were known and in common use prior to the Priority Date’.

1. Mr Gagiano states that he ‘believe[d] that [he] would be aware of the players in the marketplace on a worldwide basis and I had never heard of Durex Industries’.  His expectation is that ‘the brochure would not be of much real interest to the engineer in the field’ as the advertised heaters ‘would be cost prohibitive in the heater hair appliance industry’.  Mr Gagiano also stated concerns about whether these heaters ‘would be suitable for a hair styler as their power density’ was ‘10 times that typically used’ and incorporating a heater along the lines of the Durex product would likely require ‘a major redesign’.  He further characterises the applications listed by RS-4 as ‘serious high end industrial and/or research and development type applications’ not ‘akin to the hairstyling industry’.  His concluding view is that Durex ‘were not aiming at the consumer product marketplace, that they were not supplying that marketplace and that they were not known in that marketplace’ (Gagiano1 at [53]-[61]).  Mr Xu also states that he had never heard of Durex and that he is ‘confident in stating that this brochure and/or Durex Industries… would not have been within the [CGK]’ (Xu at [25]-[27]).  I do note, however, that I have already found Mr Xu’s knowledge of ‘higher end products’ to be atypical.

1. In reply to Mr Gagiano, Mr Streeter accepts that the heaters shown in the Durex brochure would be ‘unsuitable in [their] advertised state for a hair appliance’.  He disagrees, however, ‘that state of the art technology in the design and manufacture of hair appliances (such as the Durex Industries MCH heater) would not be considered of relevance by a person skilled in the art’.  Mr Streeter goes on to state that ‘[a] person skilled in the art, such as myself and others in my team at Dyson routinely looked to products and components which represented the state of the art (such as the Durex Industries MCH heaters) so as to consider technologies which could be adapted for hair care appliance design projects’.  He further states that, ‘websites and catalogues are only a starting point for further contact with component suppliers’ and that ‘there is no reason why the technology offered by Durex Industries could not be adapted to a larger size and a cheaper price point’ (Streeter2 at [15]-[17]).

1. In submissions, the Opponent emphasised that the Durex brochure was not ‘industry specific’ and instead only provided a ‘starting point’ for ‘further contact’.  They also emphasised that the advertised temperatures and power densities were clearly maximums (Opponent’s oral submissions from 1:19:04).  The Applicant put that the relatively high-power densities of these devices rendered them unsuitable for hair styling appliances which require ‘uniform heating’.  They further submitted that there was no evidence of what work would be involved in adapting these devices for use in a hair styling appliance.  On this point, the Applicant emphasised that that all the applications advertised by RS-4 were ‘industrial and research’ not ‘domestic or personal’ (AS at [56]).

1. I do not think that the Durex brochure provides evidence of RTDs being CGK.  My first reason for thinking this is that I do not consider the Opponent to have established that the Durex brochure is material that the PSA would have knowledge of to refer to as a matter of course.  While Mr Streeter gives evidence that Durex was a well-known supplier of ceramic heaters, neither Mr Gagiano nor Mr Xu have heard of this company.  The products advertised in this brochure are furthermore directed towards very different applications to that of hair styling and, by Mr Streeter’s own admission, unsuited to application in a hair appliance.  On balance, I do not think that this is material that the PSA would consult as a matter of course.  Indeed, Mr Streeter’s evidence that he ‘routinely looked to products and components which represented state of the art (such as the Durex Industries MCH heaters) so as to consider technologies which could be adapted for hair care appliance design products’ (Streeter 12 at [15]) suggests to me that he became aware of Durex as part of non-routine inventive activities.

1. Even if I am wrong in finding that the Durex brochure is not CGK, I do not think its disclosure aids in establishing that RTDs were CGK.  My reason for thinking this is that the brochure characterises ‘traditional’ heater designs as being 2-dimensional and presents the ability to stack layers to ‘actualize a Z-axis thermal solution’ as something noteworthy.  Given that the experts agree this brochure advertises ‘expensive’ and ‘state of the art’ products, I consider it unlikely that a feature that could be considered to be CGK in 2017 would be advertised as a unique selling point only one year previous.

   D1/ Exhibit RS-5 – JP2017117525A and Exhibit RS-10 – JPH09148053A

2. The second document which the Opponent put to provide evidence of RTDs being CGK was exhibit RS-5 read in combination with exhibit RS-10.  Exhibit RS-5 is a Japanese patent specification (JP2017117525A) and was filed on 21 Dec 2015 which is before the priority date of the opposed application.  It was not published until 29 June 2017 which is after the priority date of the opposed application.  The Opponent provided a machine translation of RS-5.

1. RS-5 relates to a layered MCH having an RTD for use in applications including hair irons (RS-5 at [1]).  The background section of this document references RS-10 which is another Japanese patent specification (JPH09148053A).  As translated in the evidence, paragraph [0002] of RS-5 reads ‘As a heater used for hair irons and the like, for example, the ceramic heater described in [RS-10] is known’.

1. RS-5 goes on to explain at [0004] that ‘in the ceramic heater described in [RS-10], the heater pattern is provided in the centre of the substrate and the sensor pattern is provided at the end of the substrate.  Therefore, there is a time lag between the temperature rise or fall of the heater pattern and the temperature change being transmitted to the sensor pattern’.  The solution provided by RS-5 is to overlap the heater and sensor traces.

1. RS-10 was filed on 20 November 1995 and published on 6 June 1997.  The document discloses a heater for a soldering iron.  At [82] of his evidence in support, Mr Streeter determined this heater to have all the features of the heater claimed by the opposed application.  Mr Gagiano does not appear to disagree with this assessment but does note that the design requirements of a heater for a soldering iron are quite distinct or even ‘opposite’ from those of a heater for a hairstyling appliance.  Whereas a soldering iron requires heat to be delivered to a point, a hairstyling appliance requires a uniform heat distribution without ‘hotspots’ (Gagiano1 at [133]).  Mr Streeter did not disagree with this assessment but states in his reply that there is ‘no reason why the lamination structure disclosed [by RS-10] could not be applied to a ceramic heater for hair appliances’ (Streeter2 at [30.4]).

1. The Opponent submitted that RS-5 provides evidence of the heater disclosed by RS-10 being CGK.  The Applicant disagreed with this interpretation, suggesting that the translation of RS-5 was unreliable and ambiguous.  In support of their position, the Applicant emphasised that the translation of RS-5 was machine generated and incorporated a disclaimer stating that it was not necessarily ‘intelligible, accurate, complete, reliable or fit for specific purposes’.  They went on to suggest that the RS-5 may use the term ‘known’ to describe the ‘internal knowledge’ of the Applicant (Applicant’s oral submissions at 1:05:12).

1. I do not think RS-5 read in conjunction with RS-10 provides evidence of RTDs being CGK.  This is because I agree with the Applicant that the text on which the Opponent relies is ambiguous.  The plain reading of the translation of RS-5 at [0002] is that the heater of RS-10 is ‘known’ as a heater for ‘hair irons and the like’.  As both Mr Streeter and Mr Gagiano have given evidence that the heater of RS-10 is, in fact, not suitable as a heater for a hair iron, a plain reading of RS-5 at [0002] does not seem viable.  A better reading would instead seem to be that RS-10 is ‘known’ in the sense that it is a publicly available document.  In drawing this conclusion, I note that I am disinclined to speculate on the reliability of the translation which has been provided by the Opponent.  If the Applicant disagreed with this translation, then it was open to them to provide their own.

1. I also do not think that RS-10 read alone provides evidence of RTDs being CGK.  Certainly, it establishes that RTDs had been disclosed at least two decades before the opposed application, but it in no way establishes that this was knowledge was accepted as stock in trade.

   Exhibit RS-6 – The ‘Kyocera brochure’

2. The third document which the Opponent put to provide evidence of RTDs being CGK was exhibit RS-6.  RS-6 is a product brochure entitled ‘Ceramic Heaters’ from the company Kyocera (title page is reproduced in the copy provided with the SGP).  The Opponent provided evidence in the form of a screenshot from the website ‘yumpu.com’ that this brochure was published in 2013.  RS-6 advertises two heater technologies, alumina, and silicon nitride.  It states that alumina heaters are ‘being used, as an innovative type of heater in such industries as Automotive, Medical and Semiconductor’.   Silicon Nitride heaters are said to have ‘high temperature strength’ and ‘outstanding thermal shock resistance’ (RS-6 page 1).  Three different heater geometries are disclosed, plate, rod, and tube.  A variety of these geometries are shown as being suitable for use in curling irons.

1. Each of the declarants were aware of Kyocera as a supplier to the hairstyling industry (Streeter1 at [48], Gagiano at [25] and Xu at [23]).  Both Mr Streeter and Mr Gagiano had direct dealings with the company and describe it as being ‘well known’ (Streeter1 at [48] and Gagiano at [62]).  Mr Xu, however, seems to imply that he was only aware of the company as they were used in ‘ghd’s stylers’ (Xu at [23]).  This distinction further reinforces my view that Mr Xu’s evidence on CGK and particularly MCHs is atypical of the PSA.

1. Mr Streeter’s evidence on the Kyocera brochure notes that some of the MCHs shown as being suitable for curling irons have ‘at least four wires’.  His interpretation is that ‘[t]hese pairs of wires could represent multiple resistive tracks that the user could configure as heaters, or they could represent various combinations of heaters and RTD temperature sensors’ (Streeter1 at [49]).  Both Mr Gagiano and Mr Xu disagree with this interpretation (Gagiano1 at [26]-[27] and Xu at [24]).  Their evidence is that the PSA would understand the multiple wire pairs to correspond to multiple heaters as explicitly advertised on the third page of RS-6 (numbered as page 88 in the exhibit).  

1. The Opponent submitted that I should find the heaters shown in the Kyocera brochure to be CGK.  They further submitted that I should find these heaters to be capable of being configured with RTDs, though they accepted the fact that this was not explicitly disclosed.  The Applicant disagreed and emphasised the Opponent’s concession that none of the declarants had seen RS-6 before it was presented to them (see OS at [64]).  They further characterised Mr Streeter’s evidence on the disclosure of RTDs as ‘speculation’.

1. I do not think I can find the Kyocera brochure itself to be CGK.  Its promotional nature and generality suggest that it is not the sort of material that the PSA would know and refer to as a matter of course.  I further agree with the Applicant that the fact the declarants had not previously seen this document is telling.  That said, I do think the Kyocera brochure is probative of CGK.  I have already concluded that it provides evidence for the ready availability of suitable MCHs (see [99]).  I further think that, as a well-known supplier of components for heated hair styling appliances, it seems reasonable to expect the PSA to have been aware of these MCHs.  Finally, I expect the capabilities and advantages claimed for these MCHs to reflect what was known and accepted in the art.  I am fortified in this view by the fact that the workers at Kyocera will fall within my definition of the PSA as individuals with an interest in the manufacture of components for heated hair styling appliances.  Indeed, Mr Gagiano gives evidence that the engineers at ghd have worked closely with those at Kyocera to develop bespoke solutions for hairstyling appliances (Gagiano1 at [98]).

1. On balance, I do not think that the PSA would understand the Kyocera brochure to provide disclosure of RTDs.  The construction provided by Mr Gagiano and Mr Xu seems logical and finds basis in the text of the document.  Mr Streeter’s construction seems, by contrast, somewhat speculative.  I further think that it is unlikely that a brochure for a relatively low-cost product would neglect to explicitly advertise a feature which the ‘state of the art’ Durex brochure considered noteworthy some three years later. 

1. Paragraph 18(1)(c) of the Act requires a claimed invention to be ‘useful’. The meaning of ‘useful’ is found in section 7A:

   (1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

   (2) The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

   (3) Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

2. Section 7A was introduced with the Raising the Bar Act.  The explanatory memorandum states:

   The specific, substantial and credible use test is not intended to displace the existing Australian case law on usefulness.  An invention must have both a specific, substantial and credible use that is disclosed in the patent specification and meet the requirements of the existing case law … The intent is that specific, substantial and credible be given the same meaning as is currently given by the US courts and the United States Patent and Trade Mark Office (USPTO).

   Currently, the US courts interpret the terms as follows:

   ·‘specific’ means a use specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’

   ·‘substantial’ means the claimed invention does not require further research to identify or reasonably confirm a ‘real world use’. ‘An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research’.

   ·an asserted use will be ‘credible’ ‘unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.’ (citations omitted)

3. A summary of relevant case law was provided by the Full Court in Artcraft Urban Group v Streetworx [2016] FCAFC 29 at [119]-[121]:

   It is “no objection” to the validity of an innovation patent granted under the Act that it is “commercially impracticable”. The utility of the patent depends upon whether, by following the teaching of the specification, the result claimed is produced.

   The “basic principle” of inutility is that if an invention “does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention” ... What the invention is “intended” to do is a matter to be gathered from the “title and the whole of the specification”.

   Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee? Further, “everything” that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee. (citations omitted)

4. The promise of the invention is to be found by following the teaching of the specification to see what result is claimed for the invention.  The specification should be construed so as to avoid any discontinuity or asymmetry between the subject matter of the claims and the paragraphs of the specification which contain the promise relevant to those claims (ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46 (“ESCO”) at [299]-[303]).

5. Claims are to be read through the eyes of the skilled addressee seeking success (Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805 at [237], [240], Apotex Pty Ltd v Warner-Lambert Company LLC (No 2) [2016] FCA 1238 at [168]). The skilled addressee may be expected to supply omitted features which form part of the CGK (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651 at [553]) and avoid inutile selections (Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Limited [2010] FCA 108 at [118]). It is, however, not sufficient that a skilled person could avoid inutile embodiments falling within the scope of the claims once properly construed (H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [81]).

6. A claim may have utility even if a promised advantage cannot be achieved in all cases or with the same degree of success (Apotex Pty Ltd v Warner-Lambert Company LLC (No 2) [2016] FCA 1238 at [170]). A failure to attain any one of the elements of the composite promise in any claim defining the invention will, however, render the invention inutile (ESCO at [239]).
   
   

   Submissions and consideration

7. The Opponent presented two attacks on utility.  The first of these was that the claimed invention did not achieve the ‘promise’ of ‘increased speed and efficiency of thermal transfer’.  They sought to support this position by reference to Mr Gagiano’s EIA.  It was the Opponent’s contention that Mr Gagiano did not identify increased speed and efficiency of thermal transfer as an advantage of the embedded temperature sensor and ‘would be expected to have given evidence to that effect’ had the Applicant found that to be the case.  They further put that the feature of a heater mounting surface integrally formed with the external surface of the barrel was essential to achieving this advantage and claims 1-8, 11-18, 21-26 in which this feature was absent therefore lacked utility (OS at [239]-[242]).

8. The Applicant sought to characterise the specification’s reference to increased speed and efficiency of thermal transfer as a ‘desire’ rather than a ‘promise’.  It was their position that the advantages of the improved heater architecture were identified at pp. 9 and 10 of the specification and included the fact that temperature may be sensed over an area and that the need for thermal paste is obviated (AS at [156]).

9. The Opponent further advanced an argument in oral submissions that the claims included embodiments using thermal paste.  I have already found that this outside the scope of the claims and will not deal with this point further.

10. I agree that the Opponent has misidentified the promise of the claimed invention.  As I have quoted from ESCO above, the proper approach is to ‘avoid any discontinuity or asymmetry between the subject matter of the claims and the paragraphs of the specification which contain the promise relevant to those claims’.  Read as a whole, the specification clearly describes two different components.  The first of these is a barrel with integral heater-mounting surface.  It is in the context of this component that increased speed and efficiency of thermal transfer is promised.  The second component is the improved heater architecture which is the subject of the current claims.  The promises made for this component are those identified by the Applicant and which Mr Gagiano states to be achieved by the invention.  I am therefore of the opinion that the Opponent’s first attack on utility fails.

    The Opponent’s second attack was an adjunct to their first in the case that I found method claims 11-20 and 24-26 to have a ‘independent validity’ from the product claims (Opponent’s oral submissions at 2:50:34 onwards).  It was the Opponent’s submission that the method claims lacked a ‘specific use’ because ‘there is no disclosure of any specific step in the method other than make or form the product’.  The Applicant’s response pointed to detailed description of the embodiments and Mr Gagiano’s evidence that implementation of the invention was ‘relatively routine’.

11. I find the Opponent’s submissions on this point difficult to follow.  The claims in question define a ‘method of manufacturing a hair styling appliance’.  They result in the production of a hair styling appliance having the improved heater architecture.  This is a specific, substantial and credible use that will be achieved across the full scope of the claims.

    Conclusion

12. I am not satisfied that the Opponent has established any ground of opposition.  I have not found the claims to lack an inventive step in light of the prior art pressed by the Opponent.  I was similarly unpersuaded by any of the Opponent’s submissions on manner of manufacture, best method, clarity, sufficiency, support and utility.

13. I have, however, found that claims 1-9, 11-19 and 21-26 lack an inventive step in light of Smattech which I consulted under Reg 5.23. I also found all claims excepting 8 and 18 to lack support after invoking s 60(3). I am therefore satisfied grounds of opposition to the grant of the standard patent exist.

14. I give the Applicant two (2) months from the date of this decision to propose suitable amendments or to advise the Commissioner that it relies upon amendments already proposed as overcoming the defects identified in this decision.  If relying on already proposed amendments, the Applicant should clearly identify which amendments are relied upon.

    Costs

15. Both parties submitted that the other should bear costs.  The Applicant further submitted that these costs should extend to cover the Opponent’s amendments to their SGP and Reg 5.23 request.

16. It is the usual that costs follow the event.  In this case, however, the Applicant amended their specification following the filing of the EIS.  The effect of those amendments was to narrow the claims to hair styling appliances.  This limitation served to better differentiate the claims from the prior art and it seems reasonable to infer that they were made in response to the grounds of opposition raised by the Opponent.  I am therefore of the view that the Opponent was successful up to the incorporation of amendments on 30 November 2022.  As a consequence, I award costs against the Patentee according to Schedule 8 of the Regulations up to the date the amendments were allowed.

17. The Opponent has not been successful in pressing any of the grounds of this Opposition. I have, however, made findings on inventive step and section 40. I am therefore of the view that it is reasonable that the parties bear their own costs from the day the amendments were allowed.

Xavier Gisz

Delegate of the Commissioner of Patents

Appendix A – Claims as amended 30 November 2022

1. A hair styling appliance comprising a heater element, wherein the heater element comprises a substrate having a conductive track for generating heat upon application of an electrical current thereto, and an integral temperature sensor that comprises a resistive track, the resistance of which changes with temperature; wherein the conductive track, and the resistive track of the temperature sensor, are both embedded, one above the other, within the thickness of the substrate; and wherein the substrate comprises a ceramic material.

2. The hair styling appliance according to claim 1, wherein the conductive track, and the resistive track of the temperature sensor, are formed as planar parallel layers embedded within the substrate.

3. The hair styling appliance according to claim 1 or claim 2, further comprising: a current drive unit operable to supply electrical current to the conductive track of the heater element; a resistance sensing unit operable to generate a signal representative of, or dependent on, the resistance of the resistive track of the temperature sensor; and a control unit to which the current drive unit and the resistance sensing unit are both connected, the control unit being configured to: cause the current drive unit to supply electrical current to the conductive track of the heater element; receive and process the signal generated by the resistance sensing unit, to determine the temperature of the heater element; and in turn adjust the electrical current supplied to the conductive track of the heater element to regulate the temperature of the heater element, such that the heater element reaches and maintains a desired temperature.

4. The hair styling appliance according to claim 3, further comprising a user interface coupled to the control unit and operable to enable a user to specify the temperature to be attained by the heater element.

5. The hair styling appliance according to any one of the preceding claims, wherein the conductive track and the resistive track of the temperature sensor extend over an area of the substrate; and wherein the resistive track of the temperature sensor is arranged to provide temperature sensing over said area of the substrate.

6. The hair styling appliance according to any one of the preceding claims, wherein, within the heater element, the temperature sensor is molecularly bonded to the substrate.

7. The hair styling appliance according to any one of the preceding claims, wherein the substrate is formed of constituent ceramic layers fired together.

8. The hair styling appliance according to any one of claims 1 to 7, having an external surface via which heat from the heater element is transferred to a user’s hair, in contact with the external surface, in use.

9. The hair styling appliance according to any one of claims 1 to 7, further comprising a barrel, the barrel comprising an external surface and a heater mounting surface inside the barrel, wherein the heater-mounting surface is integrally formed with the external surface; wherein the heater element is mounted on the heater-mounting surface.

10. The hair styling appliance according to claim 9, wherein the barrel further comprises an inner surface, and wherein the hair styling appliance further comprises a spring clip inserted within the barrel, between the inner surface and the heater element, such that the spring clip provides a force for securing the heater element against the heater-mounting surface.

11. A method of manufacturing a hair styling appliance, the method comprising: forming a heater element for the hair styling appliance by forming, in a substrate, a conductive track for generating heat upon application of an electrical current thereto, and an integral temperature sensor that comprises a resistive track, the resistance of which changes with temperature; wherein the conductive track, and the resistive track of the temperature sensor, are both embedded, one above the other, within the thickness of the substrate; and wherein the substrate comprises a ceramic material; and wherein the method further comprises incorporating the heater element into the hair styling appliance.

12. The method according to claim 11, wherein the conductive track, and the resistive track of the temperature sensor, are formed as planar parallel layers embedded within the substrate.

13. The method according to claim 11 or claim 12, further comprising incorporating, into the hair styling appliance: a current drive unit operable to supply electrical current to the conductive track of the heater element; a resistance sensing unit operable to generate a signal representative of, or dependent on, the resistance of the resistive track of the temperature sensor; and a control unit to which the current drive unit and the resistance sensing unit are both connected, the control unit being configured to: cause the current drive unit to supply electrical current to the conductive track of the heater element; receive and process the signal generated by the resistance sensing unit, to determine the temperature of the heater element; and in turn adjust the electrical current supplied to the conductive track of the heater element to regulate the temperature of the heater element, such that the heater element reaches and maintains a desired temperature.

14. The method according to claim 13, further comprising incorporating, into the hair styling appliance: a user interface coupled to the control unit and operable to enable a user to specify the temperature to be attained by the heater element.

15. The method according to any one of claims 11 to 14, wherein the conductive track and the resistive track of the temperature sensor extend over an area of the substrate; and wherein the resistive track of the temperature sensor is arranged to provide temperature sensing over said area of the substrate.

16. The method according to any one of claims 11 to 15, wherein, when forming the heater element, the temperature sensor is molecularly bonded to the substrate.

17. The method according to any one of claims 11 to 16, wherein, when forming 10 the heater element, the conductive track is deposited on a first ceramic layer, the resistive track of the temperature sensor is deposited on a second ceramic layer, the second ceramic layer is placed on top of the first ceramic layer, a third ceramic layer is placed on top of the second ceramic layer, and the first, second and third ceramic layers are fired together to form the substrate.

18. The method according to any one of claims 11 to 17, wherein the hair styling appliance has an external surface via which heat from the heater element is transferred to a user’s hair, in contact with the external surface, in use.

19. The method according to any one of claims 11 to 17, wherein the hair styling apparatus comprises a barrel, the barrel comprising an external surface and a heater-mounting surface inside the barrel, wherein the heater-mounting surface is integrally formed with the external surface; and wherein the method further comprises mounting the heater element on the heater-mounting surface.

20. The method according to claim 19, wherein the barrel further comprises an inner surface, and wherein the method further comprises inserting a spring clip within the barrel, between the inner surface and the heater element, such that the spring clip provides a force for securing the heater element against the heatermounting surface.

21. A hair styling appliance comprising a heater element, wherein the heater element comprises a substrate having a conductive track for generating heat upon application of an electrical current thereto, and an integral temperature sensor that comprises a resistive track, the resistance of which changes with temperature; wherein the conductive track, and the resistive track of the temperature sensor, are both embedded, one above the other, within the thickness of the substrate; wherein the substrate comprises a ceramic material; and wherein the hair styling appliance further comprises: a current drive unit operable to supply electrical current to the conductive track of the heater element; a resistance sensing unit operable to generate a signal representative of, or dependent on, the resistance of the resistive track of the temperature sensor; and a control unit to which the current drive unit and the resistance sensing unit are both connected, the control unit being configured to: cause the current drive unit to supply electrical current to the conductive track of the heater element; receive and process the signal generated by the resistance sensing unit, to determine the temperature of the heater element; and in turn adjust the electrical current supplied to the conductive track of the heater element to regulate the temperature of the heater element, such that the heater element reaches and maintains a desired temperature.

22. The hair styling appliance according to claim 21, wherein the conductive track and the resistive track of the temperature sensor extend over an area of the substrate; and wherein the resistive track of the temperature sensor is arranged to provide temperature sensing over said area of the substrate.

23. The hair styling appliance according to any one of claims 1 to 8 or 21 or 22, being selected from a group comprising: a curling tong, a curling wand, a hot iron brush, and a hair straightener.

24. A method of manufacturing a hair styling appliance, the method comprising: forming a heater element for the hair styling appliance by: forming, in a substrate, a conductive track for generating heat upon application of an electrical current thereto, and an integral temperature sensor that comprises a resistive track, the resistance of which changes with temperature; wherein the conductive track, and the resistive track of the temperature sensor, are both embedded, one above the other, within the thickness of the substrate; and wherein the substrate comprises a ceramic material; wherein the method further comprises incorporating the heater element into the hair styling appliance; and wherein the method further comprises incorporating, into the hair styling appliance: a current drive unit operable to supply electrical current to the conductive track of the heater element; a resistance sensing unit operable to generate a signal representative of, or dependent on, the resistance of the resistive track of the temperature sensor; and a control unit to which the current drive unit and the resistance sensing unit are both connected, the control unit being configured to: cause the current drive unit to supply electrical current to the conductive track of the heater element; 25 receive and process the signal generated by the resistance sensing unit, to determine the temperature of the heater element; and in turn adjust the electrical current supplied to the conductive track of the heater element to regulate the temperature of the heater element, 30 such that the heater element reaches and maintains a desired temperature.

25. The method according to claim 24, wherein the conductive track and the resistive track of the temperature sensor extend over an area of the substrate; and wherein the resistive track of the temperature sensor is arranged to provide temperature sensing over said area of the substrate.

26. The method according to any one of claims 11 to 18 or 24 or 25, wherein the hair styling appliance is selected from a group comprising: a curling tong, a curling wand, a hot iron brush, and a hair straightener.