EIS GmbH v Novoluto GmbH - [2021] APO 1

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
EIS GmbH v Novoluto GmbH [2021] APO 1
Patent Application: 2018203659

Title:Stimulation device having an appendage

Patent Applicant: Novoluto GmbH

Opponent:EIS GmbH

Delegate:R Subbarayan

Decision Date: 5 January 2021

Hearing Date: 13 October 2020 via video conference

Catchwords: PATENTS - section 59 – opposition to the grant of a patent – whether claims limited to sexual stimulation device – novelty – no claims found to lack novelty – inventive step – lack of inventive step not established – lack of support – whether claims broader than is justified by the contribution to the art – some of the claims lack support – clarity – lack of clarity not established – utility – no evidence to establish lack of utility – opposition successful – award of costs

Representation: Counsel for the Applicant: Mr Chris Burgess
Patent attorney for the Applicant: Spruson & Ferguson
Counsel for the Opponent: Mr Ben Fitzpatrick
Patent attorney for the Opponent: Pizzeys Patent and Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018203659

Title:Stimulation Device having an Appendage

Patent Applicant: Novoluto GmbH
Date of Decision: 5 January 2021
DECISION

The opposition succeeds on the ground of section 40(3) as claims 1-4, 6-13, 15-20, 22-27, and 29-30 are not supported by matter disclosed in the specification. None of the other grounds have been made out.
I allow the Applicant an opportunity to propose suitable amendments within 2 months of the date of this decision.
REASONS FOR DECISION

BACKGROUND

Application 2018203659 in the name of Novoluto GmbH (the Applicant) was filed on 24 May 2018 as a divisional application of AU 2015386680 (the Parent). It claims an earliest priority date of 13 March 2015. Following examination, it was advertised as having been accepted on 14 February 2019. A notice of opposition to the grant of the patent was filed by EIS GmbH (the Opponent) on 14 May 2019. Following the filing of evidence by both parties, the matter was heard on 13 October 2020.
On 11 May 2020, the applicant filed a request to amend the patent request of the present application. The effect of the amendment is to convert the present application to an application for a patent of addition of granted Australian patent 2014323661. This amendment has not yet been allowed. As such, nothing turns on this amendment, and I will not comment any further.
The Parent was also subject to opposition by EIS GmbH and the decision of that opposition was recently issued on 2 October 2020[1] (the Parent Decision). While the claims of the present application are quite different to that of the Parent, the descriptions of these two applications, apart from the consistory statements, are generally very similar. Although not binding on me, I would have to have strong reasons to depart from the delegate’s findings on similar issues in the Parent Decision.
[1] EIS GmbH v Novoluto GmbH [2020] APO 44
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars lists the grounds of opposition as those relating to novelty, inventive step, disclosure, support, clarity, manner of manufacture and utility. However, at the hearing the Opponent did not press the ground of manner of manufacture.
ONUS AND STANDARD OF PROOF
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). 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 the Raising the Bar Act. The present application was filed after 15 April 2013.
The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), 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. Nevertheless, it remains the case that, in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue.
EVIDENCE
Evidence in support from the Opponent comprises:
·Declaration of Florian Witt dated 28 October 2019 with exhibits FW-1 to FW-3 (Witt #1)
·Declaration of Florian Witt dated 29 October 2019 with exhibits FW-21 (Witt #2)
·Declaration of Florian Witt dated 30 October 2018 with exhibits FW-31 (Witt #3)
Evidence in answer from the Applicant comprises:
·Declaration of Debby Herbenick dated 11 February 2020 with exhibits DH-1 to DH-2 (Herbenick)
Evidence in reply from the Opponent comprises:
·Declaration of Florian Witt dated 8 April 2020 (Witt #4)
Mr Witt has a Degree in Mechanical Engineering and since 2013 has been working as Head of Engineering at Indeed Innovation GmbH, a company involved in product design and development for clients in a multitude of industries. He has stated in his résumé (exhibit FW-3) that, in this role, he has had involvement in the sexual products industry and this includes conceptualizing and developing new technologies for use in sexual stimulation devices, consulting with sexuality scientists and testers to develop, evaluate, and optimise sexual stimulation technologies and analysing and reverse engineering of sexual stimulation devices of clients’ competitor’s devices.
Dr Herbenick has over 20 years of experience in the field of stimulation devices and sexual health. She has a PhD in Health Behaviour including human sexuality and since 2017 has been a Professor in the Department of Applied Health Science at Indiana University. She is also a certified sexuality educator and has researched and published a number of articles on human sexuality and vaginal health including some on genital vibration for sexual function and enhancement. She has also participated in the design process of vaginal dilators as well as clitoral and vulvar stimulators.
It is clear from their respective résumés that Dr Herbenick would have a better understanding of what sexual stimulation devices were known in the art and features thereof due to her extensive research and exposure to such devices. I suspect her involvement in design would have allowed her some understanding of the technical features included in stimulation devices; however, I do not consider this to compare to the technical knowledge of, for example, an engineer with experience in design. Mr Witt clearly possesses such technical knowledge due to qualifications and his direct involvement in the design and manufacture of various devices; however, it is clear that he has had far less exposure to various stimulation devices. In light of this, when determining what formed part of the common general knowledge, I consider it appropriate to use
Dr Herbenick’s evidence on stimulation devices and the features thereof. On the other hand, to the extent that technical knowledge is required, for example in terms of understanding the mechanism within stimulation devices and how they work, the opinions of Mr Witt should be preferred.
SPECIFICATION
The present invention relates to a stimulation device for use on erogenous zones, in particular the clitoris and also having an appendage in the form of a dildo.
The specification states that a variety of stimulation aids are known, such as dildos for insertion into the human body and other vibrators that apply a stimulus to a particular area of the skin such as the clitoris by direct contact. It then notes that clitoral stimulators that work by direct contact have several drawbacks.
“Direct stimulation of the clitoris, for example using a clitoral massage vibrator, is frequently problematic. The clitoris is usually a woman's most sensitive erogenous zone. The entire clitoris is highly innervated, making it particularly touch-sensitive and responsive to sexual stimuli. In this context, the clitoral glans, in which the nerve cords of the two crura meet, should be emphasized in particular. Thus, on the one hand frequent application of a clitoral massage vibrator for direct stimulation leads to habituation effects or conditioning of the stimulated erogenous zone, while on the other the first applications of such a device may require certain practice or familiarization. Moreover, indirect stimulation of the female erogenous zones may be insufficient, or it may be desired to intensity the stimulation effect”.[2]
[2] Specification page 1, lines 15-23
The specification then notes that stimulators such as vacuum pumps that act indirectly on the erogenous zone are also known in the prior art.
“For indirect stimulation of erogenous zones, and particularly the clitoris, conventional vacuum devices are used to stimulate the erogenous zones of the person concerned without directly contacting the main area to be stimulated. Thus, for example, vacuum pumps for the primary or secondary female sexual organs are known, which usually have a suction cup for placing on the appropriate area and a hand pump. The negative pressure exerted by this type of device on the clitoris, for example, generates a negative pressure in the clitoris itself which is usually below the systolic blood pressure. This difference in pressure results in an enlargement of the clitoris and/or stimulates the blood flow in the affected area. This vascular clitoral engorgement serves both to promote desire by increasing sensitivity and for visual and tactile manipulation. The improved blood circulation also results in an increased secretion of vaginal moisture, which makes the stimulation more pleasurable. However, the manual operation of the hand pump is often onerous or irksome. In addition, the long-term or uninterrupted application of negative pressure with this device category too may result in habituation effects, which limit the effectiveness of the device in the long term.
Electrically driven vacuum pumps are also increasingly used instead of a manually operated vacuum pump. As an example of this, WO 2006/058291 A2 discloses a device for sexual therapy, wherein the arrangement comprises a tubular suction chamber for the clitoris, an electrical vacuum source (vacuum pump) and a plurality of air flow openings. Operation of the vacuum pump generates an ongoing air flow or air exchange in the chamber, in the area of the clitoris”.[3]
[3] Specification page 2, line 10 – page 3, line 1
The specification then notes that electrically driven vacuum pumps also have various problems relating to complexity, ease of use, risk of injury, hygiene and stimulation intensity.
“This has the disadvantageous effect of drawing off by suction the vaginal moisture, which is increased as a result of the negative pressure, thus having a drying effect on the stimulated skin parts. Likewise, the drawn-off moist air results in contamination of the fluidically downstream vacuum arrangement, for example the vacuum pump. Such arrangements with vacuum pumps may thus be problematic from the point of view of hygiene, as vacuum pumps and the associated valves or ventilation components often have dead spaces and/or are difficult to clean. Furthermore, the device serves to treat the blood vessels in the clitoris and not to provide stimulation up to sexual climax”.[4]
“Another disadvantage of some of the previously described vacuum devices is,
firstly, that the negative pressure has to be limited by means of a control valve or a vacuum pump and, secondly, that the negative pressure is supposed to be relieved by means of manually opening a release valve before the suction cup is detached from the skin. Should one of the valves have a technical defect and/or the user operate the device incorrectly, there is a risk of injury in certain circumstances”.[5]
“Moreover, indirect stimulation of the female erogenous zones may be insufficient, or it may be desired to intensity (sic) the stimulation effect”.[6]
[4] Specification page 3, lines 1-10
[5] Specification page 4, lines 1-6
[6] Specification page 1, lines 23-24
The specification provides the following statement in relation to the object of the present invention.
“Thus, in view of the problems mentioned above, the object of the invention is
[7] Specification page 4, lines 8-10
to provide a stimulation device that has a simple construction, is easy and safe to use, and has a pronounced stimulation effect”.[7]
This object is then stated to be “achieved by the stimulation device as claimed in claim 1”.[8]
[8] Specification page 4, lines 12-13
This is then followed by a consistory statement of what the description refers to as a pressure field generating arrangement.
“According to the invention, a pressure field generating arrangement of the stimulation device has at least one first chamber and at least one second chamber having at least one opening for placing on a body part or on the erogenous zone and at least one connection element that connects the first chamber to the second chamber”.[9]
[9] Specification page 4, lines 16-20
The specification then describes certain preferred embodiments of the invention with reference to figures 1-14 of which figures 2-6 are reproduced below:
Fig. 3 shows a portable stimulation device 1 according to the invention. It has an elongated ergonomic housing 8 that can be held in one hand and is made of a plastics material such as polycarbonate. One end of the housing is shaped in the form of a dildo 140.
A pressure field generating arrangement 2 is located within the housing. In one embodiment as seen in figure 3, the pressure field generating arrangement has a first chamber 3 in the interior of stimulation device 1, a second chamber 4 with an opening for placing on a body part 11 to be stimulated, and a connection element 5 that connects the first chamber 3 to the second chamber 4. The first chamber is formed of a flexible material like rubber and the second chamber is also formed of flexible skin-friendly material like rubber or silicone.
A drive unit comprising an electric motor 6, shaft 61 and cam 62 is provided within the housing to repeatedly cause a wall 31 of the first chamber to deflect in opposite directions.
In use, the open end of the of second chamber is placed on the body part such as the clitoris 12 and the drive unit is operated to cause deflections of the wall 31 of the first chamber. This causes the volume of the first chamber 3 to alternately increase and decrease. As the first and second chambers are interconnected by the connection element, in order to equalize the difference in pressure created between the chambers 3 and 4, transfer of air takes place between these chambers.
When the volume of the first chamber increases air flows from the second chamber 4 through the connection element into the first chamber 3 creating a decreased pressure in the second chamber. As the open end of the second chamber is sealing engaged with the skin surrounding the clitoris, the clitoris is subjected to the decreased pressure in the second chamber, leading to increase blood flow in the clitoral area.
Conversely, when the volume of the first chamber decreases, air flows from the first chamber through the connection element into the second chamber creating an increased pressure in the second chamber. The configuration of the opening and/or the connection element is such that air flowing into the second chamber is directed to impinge on the clitoris thereby massaging it.
Thus the clitoris is subjected to alternating positive and negative pressures by the movement of air between the first and second chambers thereby providing a stimulating effect on the clitoris without any direct contact with any part of the stimulating device.
The specification then describes other embodiments of the invention, all of which comprise a pressure field arrangement having first and second chambers, the differences from the first embodiment mainly residing in the construction and arrangement of the connection element and/or the second chamber.
While the preferred embodiments described relate to the stimulation of the clitoris, the specification notes that the stimulation device “can be applied to all body parts or erogenous zones (such as the inside of the thighs, lumbar region, nape of the neck, nipples, etc.) which can be stimulated by means of medium- or air-pressure massage and/or negative pressure”.[10]
[10] Specification page 18, lines 1-3
The specification ends with 30 claims and are reproduced in full in Annexure A. Claims 1, 12, 17 and 26 are independent claims and are as follows:
1. A stimulation device, comprising:
a chamber having a flexible wall portion;
a drive unit in physical communication with the flexible wall portion so as to cause deflections of the flexible wall portion in opposing directions, thereby resulting in a changing volume of the chamber,
the changing volume of the chamber resulting in modulated positive and negative pressures with respect to a reference pressure;
an opening for applying the modulated positive and negative pressures to a body part; a control device for controlling the drive unit; and an appendage, wherein the appendage is a dildo configured to be inserted into a vagina.
12. A method comprising:
causing deflections of a flexible wall portion of a chamber of a stimulation device in opposing directions, thereby resulting in a changing volume of the chamber,
the changing volume of the chamber resulting in modulated positive and negative pressures with respect to a reference pressure; and
applying the modulated positive and negative pressures to a body part through an opening, wherein the stimulation device is positioned by a user for applying the modulated positive and negative pressures using an appendage of the stimulation device, wherein the appendage is a dildo configured to be inserted into a vagina.
17. A stimulation device, comprising:
a pressure field generator having a flexible wall portion;
a drive unit in physical communication with the flexible wall portion so as to cause deflections of the flexible wall portion in opposing directions, thereby resulting in a changing volume of the pressure field generator,
the changing volume of the pressure field generator resulting in modulated positive and negative pressures with respect to a reference pressure;
an opening for applying the modulated positive and negative pressures to a body part;
a control device for controlling the drive unit; and
an appendage, wherein the appendage is a dildo configured to be inserted into a vagina.
26. A method comprising:
causing deflections of a flexible wall portion of a pressure field generator of a stimulation device in opposing directions, thereby resulting in a changing volume of the pressure field generator,
the changing volume of the pressure field generator resulting in modulated positive and negative pressures with respect to a reference pressure; and
applying the modulated positive and negative pressures to a body part through an opening, wherein the stimulation device is positioned by a user for applying the modulated positive and negative pressures using an appendage of the stimulation device, wherein the appendage is a dildo configured to be inserted into a vagina.
CLAIM CONSTRUCTION AND CLARITY
The approach to the construction of claims was summarised by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”

I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
The requirement for clarity is understood to be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). While it is certainly possible to apply an overly meticulous, semantic analysis and come up with words or short phrases which are, strictly speaking, not perfect, I note it was said in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81]:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”.
Stimulation Device and Body Part
Each of the independent claims is directed to a stimulation device without any further qualification as to what kind of stimulation it is. Also each of the independent claims defines that the modulated positive and negative pressures can be applied to a body part without any further qualification as to which body part or parts it is intended for.
The Opponent submitted that it is clear from the language of the claims that the independent claims should be construed as not being limited to sexual stimulation devices as the specifically clearly states that “the principle according to the invention of the combined direct and indirect stimulation may also be applied to other body parts, or the erogenous zones thereof”.
The Applicant accepted that while the claims do not specifically limit the stimulation device as being a sexual stimulation device and the body part as being an erogenous body part, the fact that the device is defined as having an appendage in the form of a dildo, clearly limits the device as being a device for sexual stimulation and the term body part as being a part that can be sexually stimulated simultaneously with the vagina.
I am inclined to agree with the Applicant in this regard. The specific reference to the appendage being a dildo for insertion into the vagina, clearly imports a sexual stimulation character to the device. This is also the construction that the skilled addressee would give when the claims are read in the context of the specification as a whole and adopting a common sense approach to claim construction. I do not consider that as adding gloss from the description.
As the device is for sexual stimulation and has a dildo appendage, it logically follows that the body part defined in the claim is a body part which constitutes an erogenous zone that can be simultaneously stimulated with stimulation of the vagina by the dildo. While this would generally be the genital area such as the clitoris as in the preferred embodiments, I see no reason why it cannot be other erogenous zones in proximity to the vagina such as the inner thighs or the lumbar region both of which are explicitly mentioned in the specification or even the navel.
The term ‘reference pressure’
Each of the independent claims defines that the variation in volume of the first chamber/pressure field generator results in modulated positive and negative pressures with respect to a reference pressure.
Both parties had differing views on how the term ‘reference pressure’ should be construed. The Applicant submitted that I should adopt the same approach as the delegate in the Parent Decision, where the delegate held at [44]:
… it is clear from the specification as a whole that, whatever reference pressure is used, a “negative pressure” is one which results in suction action at the present application site. The same reasoning applies to “positive pressure”; this is a pressure that results in a blowing action (i.e. some force is applied) at the application site. While it is difficult to see how the reference pressure could be something other than the prevailing atmospheric pressure at the location of use, the appropriate focus is on the action at the application site.
The Opponent who admittedly did not have the benefit of the delegates finding in the Parent Decision when they filed their submissions, has submitted that ‘reference pressure’ is not to be read down as meaning atmospheric pressure and that “Properly construed, ‘reference pressure’ in the claims encompasses any pressure differential depending on the selection of a reference pressure between the differential pressures”.[11]
[11] Opponent’s written submissions at [72]
In my view, the construction suggested by the Opponent is not a sensible or meaningful one, as what they were suggesting is that as long as there was a pressure differential, one could choose any arbitrary pressure between these differential pressures as the reference pressure and that would then lead to modulated positive and negative pressures with respect to that reference pressure. In my view that is an absurd construction.
At the hearing the Opponent did not provide further reasons as to why the construction adopted by the delegate was not correct and I personally can see no reason to not adopt the construction of the delegate in the Parent Decision.
Another way of construing the term reference pressure that still accords with the construction of the delegate in the Parent Decision is to construe it as referring to the ambient pressure of the fluid in which the device is operated. In most situations this would be the atmospheric pressure as noted in the specification and the delegate in the Parent Decision, but in situations where the device is used in other media such as water within a bathtub, the reference pressure would be the pressure of the water at the site of application of the device. A negative pressure with reference to the ambient pressure would lead to a suction action at the application site and a positive pressure with reference to the ambient pressure would lead to a force or pressure being applied to the application site.
Other Clarity Issues
The Opponent submitted appended claims 2, 13 and 18 do not differ in scope between their respective independent claims since the appendage acts as both a handle and a dildo and claiming one use or the other does not alter the scope of the claim.
The Applicant submitted that these dependent claims require a dildo appendage that is suitable for holding the device and not every dildo appendage will be suitable for use as a handle to hold a sexual stimulation device and hence further defining the dildo appendage as being also a handle limits the scope of the independent claims.
I agree with the Applicant on this point. It is clear that a handle and a dildo have different functions and would require different constructional features. Therefore, further defining the appendage as having a handle function is a narrowing of the main claim.
I can see no other potential lack of clarity issues in the claims that cannot be readily resolved. The claims do not suffer from lack of clarity.
NOVELTY
The general test for lack of novelty is the reverse infringement test enunciated by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
In The General Tire & Rubber Company v.Firestone Tyre and Rubber Company Limited and Others [1972] RPC 457 at 485-6; (1971) 1A IPR 121 (General Tire), it was stated by the Court of Appeal:
If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. … if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain
clear and unmistakeable directions to do what the patentee claims to have invented: Flour Oxidizing Co. Ltd. v. Carr & Co. Ltd. ((1908) 25 R.P.C. 428 at 457, line 34,
approved in B.T.H. Co. Ltd. v. Metropolitan Vickers Electrical Co. Ltd. (1928) 45
R.P.C. 1 at 24, line 1). A signpost, however clear, upon the road to the patentee's
invention will not suffice. The prior inventor must be clearly shown to have planted
his flag at the precise destination before the patentee.
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
"Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure which involves a determination about whether a prior document has ‘planted the flag’ as opposed to having provided merely ‘a signpost, however clear, upon the road’ or, perhaps, something less that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step".
The Opponent relied on a single document in support of their contention that the claimed invention is not novel.
D1 (US 5725473)
D1 is titled “Sexual Aid” and discloses a sexual stimulation device that can simultaneously stimulate the vagina, clitoris, nipples and anus. While it describes a number of embodiments of the invention, the Opponent relied on the disclosure of the second embodiment as an anticipation of claim 1. This embodiment is shown in figure 3 that is reproduced below and described in column 5 lines 28-41:
As can be seen in this figure, the device includes a drive arrangement comprising a motor 18, a connecting rod 36 and oscillating arm 26 that impart a reciprocating arcuate motion to a dildo 50 that is adapted to be inserted into the vagina. The dildo may include vibration means for imparting vibration thereto.
The device further includes a first stimulator 154 for stimulating the clitoris. It includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva including the clitoris. The suction cup member is in communication with a bellows 160 which is alternately compressed and expanded by the oscillating arm simultaneously with the reciprocating motion of the dildo. This compression and expansion of the bellows is stated to “cyclically introduce a vacuum in the volume defined by the suction cup member 156 and the portion of the vulva received therein” and thereby stimulate the clitoris.
The device also includes two additional suction cup members 58 that are also in fluid communication with the bellows and can sealingly receive the user's nipples in order to provide cyclical vacuum to the nipples to stimulate them.
Although not relevant to the alleged anticipation of the claimed invention, the device also includes a second stimulator below the dildo that can also reciprocate in an arcuate path and engage the user’s anus.
It is therefore clear that this embodiment discloses all the physical features of claim 1, including a chamber having a flexible wall portion; a drive unit in physical communication with the flexible wall portion so as to cause deflections of the flexible wall portion in opposing directions, thereby resulting in a changing volume of the chamber, an opening for placing on the clitoris/vulva; a control device for controlling the drive unit; and an appendage in the form of a dildo configured to be inserted into a vagina. All this is not in dispute.
The parties however have differing views on whether the compression and expansion of the bellows cyclically applies both positive and negative pressures on the clitoris.
The Applicant has submitted that while D1 discloses the cyclical application of negative pressure, it does not disclose the cyclical application of positive pressure as well as required by the claimed invention. They highlighted the fact that D1 refers to the feature 156 as a suction cup member and that there is no explicit teaching of the bellows applying a positive pressure within the suction cup member. They also argued that D1 could not even contemplate the application of a positive pressure as this would force the suction cup member away from the vagina and make the device unworkable as noted by Dr Herbenick:
“D1 discloses vibration (direct stimulation) and/or suction (indirect stimulation with negative pressure) to be applied to the clitoris. However, it does not disclose applying modulating positive and negative pressures relative to reference/atmospheric pressure to the clitoris. D1 does not disclose modulating positive and negative pressures at all, let alone for stimulation of the clitoris.
The description and drawings (especially lines 28-41, column 5 and Figure 3; see below) of D1 do not suggest to me that the suction cup (156) would be used to apply a positive pressure to the clitoris as the suction cup is said to form a seal over the glans clitoris in order to apply a ‘cyclic vacuum’ to the clitoris. D1 clearly states that the suction cup ‘conformingly and sealingly’ receives the upper portion of the vulva. Thus, it cannot possibly apply a positive pressure (even momentarily) as that would lead to the suction seal being broken, resulting in the suction cup (156) no longer ‘sealingly’ receiving the body part (upper portion of vulva), and resulting in the suction cups 58 falling off the nipples.
This is further apparent with the suction cup members 58 to be applied to the user’s nipples, which would fall off the nipples if positive pressure is applied”.[12]
[12] Herbenick at [50]-[52]
The Opponent accepted that there is no explicit disclosure of the application of cyclical positive pressures but argued that it is inherent that the compression of the bellows would also lead to cyclical positive pressures in the suction cup member as opined by Mr Witt:
“Although document D1 only explicitly describes periodical negative pressures, it is inherent in the operating principle of a bellows that the compression and expansion of the bellows results in cyclical positive and negative pressures. This is clear to me from the description, especially due to the fact that no valves are described or shown in the document that would permit a restriction to just one of a positive or negative pressure. Therefore, in my opinion all the features of claim 1 are clearly shown in document D1”.[13]
“…When bellows are operated, they inherently generate negative pressure with respect to ambient pressure during expansion and positive pressure with respect to ambient during compression. If bellows are intended to create a unidirectional airflow or exclusively negative or positive pressure, they are combined with a set of at least two antiparallel check valves to create a pump. In D1 however, no mention of valves is made, either in the description or in the drawings. To the contrary, p. 5 line 45 states the suction cup members 58 to be ‘in fluid communication with the bellows 160 via flexible conduit 64.’ Furthermore, in Fig. 3 the bellows are shown to have only one opening, which prohibits a pump arrangement with unidirectional airflow. If this one opening is in contact with a body part, it directly follows that the momentary pressure inside the bellows arrangement is applied to the body part, including the positive pressures present during compression of the bellows…”[14]
[13] Witt #3 at [7]
[14] Witt #4 at [10]
I accept that the lack of reference to any valves in the bellows would suggest that what is contemplated in D1 is a simple bellows arrangement with the bellows in direct communication with the suction cup via the flexible conduit 162. With such an arrangement if the neutral state of the bellows is typically a position between its fully compressed state and fully expanded state, clearly expansion and compression would generate both negative and positive pressures within the suction cup.
However as noted by the authorities, the prior art document must provide clear and unmistakeable directions to do what the claimed invention does and, in my view, this is where the disclosure of D1 falls short. The only teaching in D1 is that the device provides cyclical vacuum to the suction cups 156 and 158. There is not even a hint or suggestion that between successive vacuum actions the bellows would provide some positive pressures to massage the clitoris and nipples. I also note that patent specifications are not required to provide every technical detail required to perform the invention. Given that clitoris suction devices including manual compressible ball type devices generate only negative pressures through the use of check valves[15], it is quite possible that despite the lack of explicit reference to the presence of check valves in D1, the skilled addressee would understand that the device of D1 includes such check valves to provide just the cyclical suction that is typical of suction devices.
[15] Herbenick at [26]
Furthermore while there is no explicit disclosure in D1 to this effect, it is also possible that the skilled addressee would construe that the bellows of D1 would always be in a fully compressed state when it is turned on, which I consider could be possible by suitable arrangement of the bellows drive mechanism. With such an arrangement, the expansion and contraction of the bellows is only likely to vary the pressure within the suction cup between negative and atmospheric pressures even in the absence of check valves.
Consequently while the disclosure of D1 comes very close to what is defined in the claimed invention in terms of the physical features, I cannot be satisfied that the teaching of D1 has clearly planted the flag at the precise destination (General Tire supra) in terms of how it functions by generating both negative and positive pressures. The claimed invention is therefore novel, and this ground of opposition fails.
INVENTIVE STEP
The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of 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.

The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“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.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 (Alphapharm) at [51] - [53] also approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the reformulated Cripps question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Alphapharm the High Court stated at [41]:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Problem to be Solved
As discussed earlier, the specification identifies a number of drawbacks with prior art sexual stimulation devices including the following:
·Direct stimulation devices can lead to habituation effects or conditioning of the stimulated erogenous zone.
·Indirect stimulation by vacuum/suction pumps can lead to drying effect on the skin.
·Hygiene issues due to contamination of the vacuum/suction pump components by bodily fluids.
·Need for manually opening a release valve to remove the suction cup.
·Risk of injury due to incorrect operation of electrically operated vacuum/suction pumps.
·Indirect stimulation of the female erogenous zones may be insufficient in terms of the intensity.
The Opponent submitted that the problem addressed by the Application was:
“… reducing the complexity of the arrangements generating negative pressure or positive pressure in stimulation devices and, as a result, increase the hygiene of the device. The Opposed Application also identifies the habituation effects that occur as a result of long-term, continuous or frequently recurring application of negative pressures as a problem to be addressed”[16]
[16] Opponent’s written submissions at [149].
The Applicant submitted that the specification identifies issues, not with the manner in which a particular device is constructed, but with the type of stimulation effect provided. They submitted that the problems of the prior art are related to the problems associated with the stimulatory effect caused by using one method, such as failure to provide stimulation up to climax or drying caused by the negative pressure of indirect stimulation methods or habituation from direct stimulation and that the claimed invention seeks to overcome these problems.
Clearly there is not much difference in the problems identified by the parties, and they accord with the problems that I have noted. I am therefore satisfied that the claimed invention seeks to provide a sexual stimulation device that addresses the problems in relation to habituation, drying of skin, hygiene and intensity of stimulation.
Common General Knowledge (CGK)
What constitutes CGK was summarised by Emmett J in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc [1999] FCA 345; 45 IPR 577 at [112]:
“The common general knowledge is the technical background to the hypothetical skilled worker in the relevant art. It is not limited to material which might be memorised and retained at the front of the skilled worker’s mind but also includes material in the field in which he is working which he knows exists and to which he would refer as a matter of course. It might, for example, include:
Standard texts and handbooks;
  Standard English dictionaries;
  Technical dictionaries relevant to the field;
  Magazines and other publications specific to the field.”
The authorities have noted that what is the CGK in the art needs to be established by evidence. For example, it was stated in Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163 at [104]:
“it is necessary to establish common general knowledge by appropriate evidence. Evidence that consists of generalised and sweeping statements of opinion or recollection, unsupported by secondary material such as text books, trade journals and technical publications, should be treated with caution and given little weight.”
It is clear from the evidence of Mr Witt and Dr Herbenick that the following were CGK in the art of sexual stimulation devices at the priority date:
a)Stimulation devices were basically of two types, namely devices to be inserted into bodily orifices and devices to be placed on external parts of the body.
b)Sexual stimulation devices that incorporated a vibrating feature, i.e. vibrators.
c)The use of personal body massagers as external genital massagers.
d)Stimulation devices for simultaneous stimulation of the external genital area including the clitoris and the vagina. An example is the dual action rabbit vibrator that has an arm for clitoral stimulation as well as an arm for vaginal insertion and stimulation.
e)Suction type stimulation devices that use suction to stimulate the clitoris. A popular suction device uses a compressible ball which is manually pressed to create suction alone and does not generate a positive pressure through the use of check valves.
f)The use of electro-mechanical technology to create vibration in stimulation toys.
g)The use of physiologically inert materials such as silicone and materials with gel textures for the external surface of stimulators.
Mr Witt has also opined that sexual stimulation devices which use alternating positive and negative pressure to stimulate erogenous zones (pressure wave massagers) were also CGK in the art at the priority date and he refers to the Womanizer W100 and its availability before the priority date to support his contention.
However, this has been disputed by Dr Herbenick, who has stated that she was not aware of the Womanizer W100 before the priority date nor of any other sexual stimulation device that uses modulated positive and negative pressures.
“However, I was not aware of any sexual stimulation devices that applied modulated positive and negative pressures to a body part prior to March 2015. Further, to my knowledge, I do not recall anyone in my field of expertise describing any sexual stimulation devices that applied modulated positive and negative pressures to a body part prior to March 2015”.[17]
[17] Herbenick at [78]
As will be clear from my discussion of the Womanizer product and exhibits D11 and D12 later in this decision, I am not satisfied that the opponent has clearly established when the Womanizer W100 product became available in the market or how it operates in terms of stimulating the clitoris. Furthermore, just because a product is available for purchase, does not make it CGK in the art. This is even more so when the product has come into the market only a short time before the priority date. As I have noted earlier, in relation to what sexual stimulation devices were well known in the art before the priority date, I would prefer the evidence of Dr Herbenick who has significantly more relevant experience in the fields of sexual health and sexual stimulation devices for women. Based on the evidence I cannot be satisfied that pressure wave massagers for sexual stimulation that apply modulated positive and negative pressure were CGK at the priority date.
Inventive Step in light of CGK alone
The Opponent submitted that a person skilled in the art (PSA) would be directly led as a matter of course when solving the problems outlined in the Application to construct devices that fall within the scope of the claims. They allege that, in addressing the identified problems, a PSA would take a classic rabbit vibrator and replace the direct stimulation of the clitoris with the well-known pressure wave sexual stimulation.
As discussed above, I do not consider pressure wave sexual stimulation devices that apply modulating positive and negative pressures were part of the CGK before the priority date of the claims. It follows that it would not have been obvious to arrive at the claimed invention using CGK alone.
D2 (US 2013/0012769) and CGK
D2 is titled “Female Stimulation Device” and discloses a device for delivering pulsating positive air pressure to the clitoris and other regions of the female genital region. It does not disclose applying both positive and negative pressures in the manner that I have construed these terms and it also does not disclose an appendage in the form of a dildo.
The Opponent submitted that pressure wave massage technology for sexual stimulation was very well known at the priority date and that the addition of a pressure wave generator in D2 is a simple product development. They also submitted that the inclusion of a dildo appendage would also have been a matter of routine as clitoral stimulators with a dildo appendage were CGK in the art.
As I have found that pressure wave massagers for sexual stimulation were not part of the CGK at the priority date, I have no basis to find that the PSA would have as a matter of routine substituted the pulsating positive pressure arrangement of D2 with the pressure wave technology as suggested by Mr Witt..
The claimed invention does not lack an inventive step over D2 and the CGK.
The Womanizer W100 (D11; D12) and CGK
Documents D11 and D12 relate to the Applicant’s own clitoral stimulator device called ‘The Womanizer 100’. The Opponent submitted that the present invention is basically the Womanizer device with a dildo appendage.
Although the Opponent’s written submissions seemed to suggest that D11 and D12 are prior publications that disclose the features of the Womanizer, at the hearing they conceded that neither document discloses all of the features of the pressure field generator of the claimed invention, and that they rely on these documents as evidence of prior use of the Womanizer.
The concept of information being made “publicly available” through the doing of an act was considered in Insta Image Pty Ltd v K DKanopy Australia Pty Ltd [2008] FCAFC 139; 78 IPR 20. The Full Court identified the relevant principles at [124], chiefly being that the information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it. In this respect it is immaterial whether or not the claimed invention has become known to many people or a few people: availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality. Furthermore, the information made publicly available must have constituted an enabling disclosure of the features of the claimed invention.
As noted by Yates J in Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31, the relevant question is not whether the product was made publicly available. In applying the notion of “enabling disclosure”, as explained in Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1995] UKHL 14; (1995) 33 IPR 1, neither the mere public availability of a product, nor its use in public, necessarily means that the features of the product have been made publicly available. The evidence must establish that all the features of the device and how it operates could be discerned by external visual inspection or that a customer actually disassembled the product to discern the features of the product.
It is clear that merely offering a product for sale, absent any detailed disclosure in the offer of how the device operates, does not, by itself, establish prior use.
D11 is an article of an interview with two senior executives of epi24, including their CEO Michael Lenke who is also the inventor of the Womanizer and the present invention. This article was published in the ‘Sign Europe Magazine’ in January 2015. In this article, the two executives talk about the success of Womanizer W100 in Europe and their intention to expand into America and Australia. There is no disclosure about the features of the Womanizer device.
D12 is an online article titled “The Womanizer W100 Sex Toy Review” written by Cara Sutra and published on 28 February 2015. In this article she mentions that the device stimulates the clitoris by applying an undulating pulse of suction and that it is available for purchase from the online website ‘kisskiss.ch’. The rest of the article is devoted to the external appearance and controls of the device and her own stimulatory experiences while using the device.
It is very clear that neither D11 nor D12 provides an enabling disclosure of the features of the Womanizer product. They do however strongly suggest that the Womanizer product was on sale before the priority date of the claimed invention.
The Applicant submitted that the Opponent’s case on inventive step based on D11 and D12 fails for two reasons.
1.While they accept that these two articles establish that the Womanizer product was available for sale before the priority date, they rely on the grace period provisions of Regulation 2.3 (read together with regulation 2.2C) as the parent application AU2015386680 was filed within 12 months of the dates of publication of D11 and D12.
2.Neither D11 nor D12 disclose the features of the claimed invention such as the flexible wall and the stimulatory effect of modulated positive and negative pressures.
I accept the Applicant’s submissions on both counts. Without any further evidence on when the Womanizer W100 was first sold, the earliest date that I can confidently give is January 2015, when D11 was published. Although Mr Witt has stated that a Womanizer W100 device was sent to him for analysis before March 2015, he has not provided any specific dates to clearly establish the availability of this product prior to January 2015. While the documents filed in evidence in relation to Womanizer W100 for the opposition of the Parent have not been filed in evidence in the opposition in suit, in the Parent Decision, the delegate found that the earliest date he could ascribe for the first sale of Womanizer W100 was 17 September 2014. Therefore even if I were to rely on this date as the date of first sale of Womanizer W100, this date is well within the 12 month time period before filing of the parent application which would see that sale disregarded under the grace period provisions.
I have already noted that neither D11 nor D12 discloses the operating principles of the Womanizer W100 including whether it applies both negative and positive pressures. While Mr Witt has stated that the Womanizer W100 device was sent to him for analysis and that it is a pressure wave device that uses positive and negative pressures, he has not provided any details of the inner workings of the device including the use of a flexible wall to generate the pressure modulations.
It follows that, on the evidence, the Opponent has not established a prior use of W100 that provides an enabling disclosure of the claimed features of the pressure field generator that would then then enable me to conclude a lack of inventive step on the basis that the only difference is the provision of the dildo appendage. The Opponent’s case here fails.
D4 (CN 2153351) and CGK
D4 is a translation of a Chinese patent document that is titled “A Gas Health Massager”. It discloses a therapeutic device in the form of a massager that uses pulsating air pressure and which is primarily intended for use in stimulating the six meridian points in the human body. The abstract notes that the use of the device “has good curative effect on blood pressure, heart disease, cerebral thrombosis, coronary heart disease, digestive system, nervous system and various pains”. The sole figure of this document is reproduced below:
It has an air bag 2 one end of which is connected to a rubber mouth 1 for application to a body part to be massaged and the other end of which is connected to an electromagnetic drive mechanism (4,5) through a lever 3. The drive mechanism causes reciprocating motion of the air bag wall generating a pulsating air pressure that is used to massage and stimulate the meridian points.
The Applicant argued that there is no clear disclosure of the pressure pulsations including both positive and negative pressures and that it may well be only pulsating positive pressures as opined by Dr Herbenick.[18] However Mr Witt differs and is of the view that this can be inferred.
“As I commented in my last declaration on paragraph 62, the teachings of the document clearly result in pulsating pressures that are negative and positive. This follows directly from the fact that the device as disclosed uses a membrane setup with a drive unit which, from a technical point of view, follows the exact same operating principle and thus produces the exact same effect as the pressure wave massager of the present application”.[19]
[18] Herbenick at [59]
[19] Witt #4 at [13]
While I accept that the use of a membrane that is caused to move in a reciprocating manner and the lack of mention of any check valves would suggest that the device of D4 would generate pulsating negative pressures in addition to pulsating positive pressures, there is no clear disclosure to that effect in D4. As I noted in relation to D1, it is possible that the flexible wall of the air bag only deflects inwardly from its rest or neutral position and this would only vary the pressure at the mouth of the bag between atmospheric and positive pressures. There is insufficient disclosure in D4 that clearly and unmistakeably teaches that the device of D4 produces modulated positive and negative pressures at the body part to which the mouth of the air bag is applied to.
Even if I am wrong on this point and the device of D4 does produce modulated positive and negative pressures as submitted by the Opponent, I still need to be satisfied that it would have been obvious to use the device for sexual stimulation and to provide a dildo appendage.
The Opponent accepted that there is no explicit disclosure in D4 that it can be used to stimulate an erogenous zone, but submitted that “the arrangement described in D-4 is also suitable for stimulation of a body part, including clitoral stimulation, given that the alternating compression and decompression of the airbag (2), which is analogous to the first chamber (3) of the Opposed Application, also generates a pressure field consisting of a pattern of overpressures and negative pressures that is modulated to the normal pressure”.[20]
[20] Opponent’s written submissions at [184]
They rely on the evidence of Mr Witt who has commented on this in Witt #4 at [14] – [15].
14. Further, I strongly disagree that D4 "does not disclose a sexual stimulation device". Practically any device designed to massage human body parts can and may be used for sexual stimulation as well. Ms Herbenick provides sufficient evidence of this "offlabel use" herself at paragraph 18. Even further, in technical development of new sex toys, any technology or device that produces motion patterns or effects suitable for sexual stimulation will be adapted into a sex toy. Examples include the "Stronic" range of sex toys by Fun Factory that were derived from a product designed to rock baby prams and strollers to soothe babies and infants (patented and well known in the market before March 2015), the "Zumio Spirotip" Vibrator that was derived from an electric toothbrush, as well as the "Mystim" range of sex toys that incorporate electrostimulation technology derived from muscular training devices for physical exercise and medical treatment. Directly related to pressure wave massagers, the Philips "Visacare" facial cleansing brush uses pulsating pressure to exfoliate the skin.
15. Moreover, the stimulation of "meridians" does not exclude the genitalia, and,
depending on the detailed philosophy used in Traditional Chinese Medicine (TCM), it specifically includes them. The wholistic nature of TCM certainly includes sexuality and sexual well-being, see e.g. the concept of the "Conception Vessel Meridian". Since D4 discloses a pressure wave massager like the present invention, it is just as suited for safe application to or stimulation of genitals.

Dr Herbenick on the other hand, is of the view that this device does not “appear to be dimensioned for use on female or male genitals for purposes of sexual stimulation”, “does not disclose any features that would necessarily be suitable or safe for application to or stimulation of the genitals” and “also lacks an appendage that would be suitable for vaginal insertion.[21]
[21] Herbenick at [59]
As discussed earlier, I have construed the stimulation device of the claimed invention to be a device for the sexual stimulation of the erogenous zones.
D4 is for the stimulation of the meridian points in the human body. While Mr Witt has stated that in Chinese traditional medicine, the six meridian points include some in the genital area, there is no such specific reference to genital areas in D4. Furthermore the teaching in D4 as a device for treatment of ailments such as blood pressure, heart disease, cerebral thrombosis, coronary heart disease, digestive system, nervous system and various pains also do not even come close to suggesting such a conclusion. Hence, while the device of D4 may or may not be suitable for use on the genital area, in my view it is primarily intended for use on non-genital areas for non-sexual stimulation.
While I accept that it was known to apply personal massagers on the genital areas for sexual stimulation, that does not mean that every personal massager is suitable for such application. The device must lend itself to such application. There is not sufficient information in relation to the device of D4, particularly in regard to its size, weight, portability and suitability for personal use that would lead a PSA to conclude that it would be suitable for application to the erogenous zones for the purposes of sexual stimulation. The test is whether the PSA would have been directly led to try it. In that regard, in the field of sexual stimulation, as already noted, I prefer the evidence of Dr Herbenick over that of Mr Witt.
Furthermore, without a teaching to be used for sexual stimulation, I can find no basis to conclude that the PSA would have as a matter of routine added a dildo appendage to the device of D4.
The claimed invention does not lack an inventive step over D4 and the CGK.
D7 (WO 2006/063461) and CGK
D7 is titled “Electro-mechanical sexual stimulation device” and discloses a device that can simultaneously stimulate the vagina and clitoris. Figure 3 of D7 is reproduced below.
It comprises a clitoral stimulator pad (4) for direct stimulation of the clitoris and an appendage having an arm and a bulbous teardrop-shaped pad (2) for insertion into the vagina for stimulating the G-spot. The device comprises motors that control pulsating vibrations of the clitoris and G-spot pads.
The Opponent submitted that D7 teaches that “the clitoral pad may or may not have other means for stimulating a human for the purpose of sexual gratification”[22] and hence the replacement of the vibration device with a pressure stimulation device would be entirely routine as pressure wave generators were well-known before the priority date.
[22] D7 at page 8, lines 11-12
Devices for sexual stimulation that use modulated positive and negative pressures were not part of the CGK at the priority date. I can therefore find no basis for including this modulated pressure wave technology in the device of D7. The claimed invention does not lack an inventive step over D7 and the CGK.
D8 (EP 1477149) and CGK
Similar to D7, document D8 also discloses a sexual stimulation device comprising a penetrative shaft for insertion into the vagina and a handle having ribs for direct clitoral stimulation. The device can be operated manually or through an electric motor embedded within the device that allows for pulsed vibration.
For the same reasoning applied to D7, I do not consider that the claimed invention lacks an inventive step over D8 and the CGK.
D7 or D8 combined with D4
In the alternative, the Opponent also submitted that the PSA would readily modify the apparatus taught in prior art documents D7 or D8 to incorporate the pressure wave technology taught in D4 to arrive at the claimed invention.
Both D7 and D8 provide for direct stimulation of the clitoris using vibrating pads or ribs. There is no suggestion to use indirect forms of stimulation such as suction or positive air pressure or both. I have found that there is no clear teaching in D4 that it applies both positive and negative pressures or that it can be used for sexual stimulation. I can therefore find no basis to conclude that the combination of the teachings of D7 or D8 with that of D4 would have led to the claimed invention.
SUPPORT
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. Burley J explored the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (Merck Sharp) (No 3) [2020] FCA 1477 at [546]-[547]
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
What is the technical contribution to the art?
The Applicant submitted that the technical contribution to the art of the claimed invention is the general principle that improved sexual stimulation is achieved by directly stimulating a first erogenous zone on a body part (such as the vagina) through inserting an appendage of a sexual stimulation device into the body, while at the same time, indirectly stimulating a second erogenous zone on a body part (such as the clitoris) by forming and applying modulated negative and positive pressures to the second erogenous zone.
The Applicant also submitted that their view of what is the technical contribution is supported by the findings of the delegate in the Parent Decision where it was held at [167]:
“… While I accept that the specification indicates problems with prior art devices, they cannot be viewed in isolation. It is clear from the Applicant’s submissions that the specification indicates problems with the stimulation methods of the prior art. It is not, as the Opponent submitted, focussed on the device to the extent that the technical contribution can be said to be a particular device. The overarching teaching of the specification is the application of positive and negative pressure cycles for sexual stimulation”.
I agree that the application of modulated negative and positive is indeed a part of the technical contribution to the art of the present application and this is not disputed by the Opponent either.
The Opponent however contends that the technical contribution to the art further includes the features of at least first and second chambers that are in fluid communication via a connection element and a drive unit that varies the volume of the first chamber such that a pressure field of positive and negative pressures is generated via the connection element in the second chamber, this pressure field serving to stimulate the erogenous zone:
“114. As noted above, it is apparent on a fair reading of the specification that the alleged invention must be limited to include the feature of: ‘a pressure field generating arrangement of the stimulation device has at least one first chamber and at least one second chamber having at least one opening for placing on a body part or on the erogenous zone and at least one connection element that connects the first chamber to the second chamber.’”
115. It is notable that both experts agree that the provision of two chambers with a connection element is a critical and essential feature of the invention disclosed in the Opposed Application. As noted, all of the embodiments are directed to a two-chamber apparatus. Further, as noted, the Opposed Application teaches that the provision of two chambers with a connection element is critical to achieving simplicity of manufacture (e.g absence of valves), ease of cleaning and the stimulatory effects.
116. As none of the independent claims require the use of a device having these features they travel well beyond the scope of the disclosure. and fail to correspond to the technical contribution (if any) to the art. Similarly, the dependent claims (apart from claims 5,14,21, and 28) are not supported by the description of the invention.
117. Relatedly, it is also apparent from the disclosure that the claims should also be limited to include a drive unit that varies the volume of the first chamber such that a pressure field is generated via the connection element in the second chamber, this pressure field serving to stimulate the erogenous zone”.[23]
[23] Opponent’s written submissions at [114] – [117]
While as noted by the authorities, where the technical contribution to the art is a principle of general applicability, the claims may be drafted more broadly, it is also necessary to look at the specification to see what it asserts to be the invention and then decide whether it can justify the breadth of the monopoly claimed.
As discussed earlier, the specification notes the problems of known vacuum pumps including complexity, difficulty of use, risk of injury, hygiene and stimulation intensity and that the object of the invention is to provide a stimulation device that has a simple construction, is easy and safe to use, and has a pronounced stimulation effect.
While the specification states that this is achieved by a device according to the claims, it also then states that the pressure field generating arrangement of the present invention has a first chamber and at least one second chamber having at least one opening for placing on an erogenous zone and at least one connection element that connects the first chamber to the second chamber.
All of the described preferred embodiments of the invention comprise first and second chambers with a connection element in accordance with the definition of the pressure field generating arrangement.
As noted by the Opponent, there are a number of passages in the description that highlight the importance of this dual chamber arrangement.
This embodiment according to the invention, of chambers in fluidic communication via at least one connection element, allows simple generation of a pressure field in the second chamber by changing the volume in the first chamber, this pressure field being temporarily directed at the area of skin to be stimulated.[24]
[24] Page 4, lines 22-25
The massaging effect is generated by the kinetic energy of the medium flowing out of the first chamber through the connection element against the surface of the area of skin to be stimulated.[25]
[25] Page 5, lines 29-31
The orientation of the at least one connection element towards the area of skin to be stimulated allows the pressure field to work directly, the pressure field being decisively affected by the configuration of the at least one connection element and the at least one opening from the connection element into the second chamber, and is thus adjustable depending on the application of the stimulation device.[26]
Furthermore, the stimulation device according to the invention has a drive unit that varies the volume of the first chamber such that a pressure field is generated via the connection element in the second chamber, this pressure field serving to stimulate the erogenous zone, and a control device that activates the drive unit.[27]
The principle of the invention means that the medium transported between the chambers is limited in volume to the maximum volume of the first chamber. Moreover, the transported volume can be further limited, as a result of its construction, by the maximum possible change in volume brought about by the drive unit.[28]
The compression of the chamber 3 causes a positive pressure in the chamber 3, which is equalized by a medium or air flow through the connection element 5 in the direction of the second chamber 4. This flow of medium is now preferably directed, by the orientation of the opening 51 and/or of the connection element 5, towards the body part 11 to be stimulated, in particular towards the glans of the clitoris 12. The indirect (pressure) massage according to the invention occurs as a result of the medium flowing onto the body part 11. The size of the opening 51 is in this case dimensioned such that it is small enough in relation to the volume displaced in the first chamber 3 to sufficiently accelerate the medium for a perceptible massaging effect.[29]
The advantage of the arrangement shown in Figures 4 to 6 is that it is unproblematic from the point of view of hygiene (because dead spaces are avoided, for example) and is simple to manufacture. For example, no valves or further openings in or on the first chamber 3 are required.[30]
The shape of the second chamber 4 can thus be fundamentally adjusted to the anatomy of the erogenous zone to be stimulated. The shape of the chamber 4 in Fig. 12 a) is, for example, adjusted to the round shape of the breast, while the shape of chamber 4 in Fig. 12 c) is better suited to the shape of the female vulva. Furthermore, the shape of the second chamber 4 also determines how pronounced the pressure field according to the invention is. The size of the second chamber 4 in relation to the volume displaced from the first chamber 3 thus determines the level of the achievable negative or positive pressure. Furthermore, the proximity of the opening 51 of the connection element 5 to the area of skin to be stimulated can also be used to determine the intensity of the massaging effect according to the invention on said area of skin.[31]
[26] Page 6, lines 25 – 29
[27] Page 8, lines 12-15
[28] Page 8, lines 17-21
[29] Page 19, line 26 – page 20, line 5
[30] Page 20, lines 15-18
[31] Page 24 lines 7-17
In my view, it is clear that the concept of first and second chambers in fluid communication with each other is at the heart of the invention. This allows variations in volume of the first chamber to cause exchange of fluid between the first and second chambers providing both the suction and the massaging effects on the erogenous zone. Having the separate second chamber also allows the second chamber to be configured to suit the erogenous zone that it is to be applied to and to adjust the massaging effect of the air flowing into the second chamber. It also addresses the hygiene issue. Both Mr Witt[32] and Dr Herbenick also understand the invention as comprising a dual chamber arrangement. Dr Herbenick has stated:
“I understand that, as described on page 4, lines 22 – 26, the invention includes:
‘a pressure field generating arrangement of the stimulation device [that] has at
least one first chamber and at least one second chamber having at least one
opening for placing on a body part or on the erogenous zone and at least one
connection element that connects the first chamber to the second chamber’”.[33]
[32] Witt #2 at [27]
[33] Herbenick at [34]
More tellingly, as noted by the Opponent there is not a single hint or suggestion in the entire specification that the invention would work or could be performed with only the first chamber. Even when it talks of various possible modifications to the invention it only talks about different constructions of each of the first and second chambers and the possibility of having more than two chambers:
“In addition to the embodiments that have been explained, the invention allows for further constructional principles. For example, different arrangements or constructions of the first chamber 3 may be combined as desired with different embodiments of the second chamber 5 or the connection element 5. For example, the first chamber 3 having the drive in Figures 10 can be combined with the second chamber in Fig. 12 f).
Although only one first chamber 3 is shown in all embodiments, two or more first chambers 3 may also be provided, which are then driven accordingly simultaneously or with a time delay such that their volume is changed in order to build up a pressure field according to the invention”.[34]
[34] Page 27, lines 5-15
In my view, the technical contribution to the art as disclosed in the specification is a pressure field generator with two chambers that is able to provide modulated negative and positive pressures to a body part. The dual chamber is central to the invention. The scope of each of the independent claims clearly includes an arrangement that may only have the first chamber without any second chamber in fluid communication with the first chamber. There is no enabling disclosure of a single chamber pressure field generator. I am therefore of the view that all of the independent claims exceed the technical contribution provided by the disclosure of the specification. These claims are therefore not supported. Furthermore, apart from dependent claims 5, 14, 21 and 28, none of the other dependent claims also include this limitation. I therefore find that claims 1-4, 6-13, 15-20, 22-27, and 29-30 do not comply with s40(3) of the Act as these claims are not supported by matter disclosed in the specification.
While the Opponent also submitted that the control device that activates the drive unit is also an essential feature of the invention and should be included in each of the independent claims, I am not convinced. The critical feature of the inventive concept is the deflections of the flexible wall of the first chamber leading to variations in the volume of the first chamber that are then transmitted to the second chamber and not the drive unit or the control device that activates the drive unit. The specification clearly describes various drive units that can be used. The claims do not lack support on this account.
DISCLOSURE
Section 40(2)(a) of the Act requires that that the specification must “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”.
The Opponent submitted that all of the teaching in the specification is to a two chambered stimulation device and consequently does not provide an enabling disclosure of a stimulation device or method as claimed that uses a single chamber.
While I accept that there is no teaching in the specification of a stimulation device that uses only a single chamber and consequently some of the claims are not supported, I am not convinced that the skilled addressee would not be able to produce a stimulation device that uses a single chamber. This is a question of fact that is best established through evidence from people skilled in the art. Neither Mr Witt nor Dr Herbenick have provided any evidence in relation to this issue.
I am therefore not satisfied, on the balance of probabilities, that the specification does not disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a PSA. This ground of the opposition has not been made out.
UTILITY
The Opponent submitted that as the claims are not limited to having two chambers or a connecting element which the opposed application asserts results in improved hygiene and ease of manufacture (through the absence of valves), each of the independent claims lacks utility.

However, I am not convinced. If the claimed invention were to be made having only the first chamber, it would still have no valves and would therefore provide the benefits of improved hygiene and ease of manufacture. Lack of utility is again a question of fact that needs to be established through appropriate evidence and neither expert has provided evidence on this issue.
This ground of opposition has not been made out.
CONCLUSION
The opposition succeeds on the ground of section 40(3) as claims 1-4, 6-13, 15-20, 22-27, and 29-30 are not supported by matter disclosed in the specification. None of the other grounds have been made out.
I consider that these matters can be overcome by amendment. I will allow the Applicant an opportunity to propose suitable amendments within 2 months of the date of this decision.
COSTS
The opposition has been successful. The normal approach is that costs follow the event and I see no reason to depart from this practice. While the Applicant’s written submissions for the hearing were filed late, they have provided reasons for the delay. I also note that the Opponent has indicated that they suffered no prejudice as a result. I therefore see no reason to make any variations to the costs. I award costs, according to Schedule 8, against the Applicant, Novoluto GmbH.
R Subbarayan
Delegate of the Commissioner of Patents
Annexure A
1. A stimulation device, comprising:
a chamber having a flexible wall portion;
a drive unit in physical communication with the flexible wall portion so as to cause deflections of the flexible wall portion in opposing directions, thereby resulting in a changing volume of the chamber,
the changing volume of the chamber resulting in modulated positive and negative pressures with respect to a reference pressure;
an opening for applying the modulated positive and negative pressures to a body part;
a control device for controlling the drive unit; and
an appendage, wherein the appendage is a dildo configured to be inserted into a vagina.
2. The stimulation device as recited in claim 1, wherein the appendage is a handle for holding the stimulation device.
3. The stimulation device as recited in claim 1, wherein the opening is further for placing over the body part.
4. The stimulation device as recited in claim 1, wherein the body part is a clitoris.
5. The stimulation device as recited in claim 1, further comprising a second chamber.
6. The stimulation device as recited in claim 1, wherein the flexible wall portion is integral with the chamber.
7. The stimulation device as recited in claim 1, wherein the flexible wall portion comprises silicone.
8. The stimulation device as recited in claim 1, wherein the stimulation device has no valves.
9. The stimulation device as recited in claim 1, wherein the stimulation device is a portable hand-held device.
10. The stimulation device as recited in claim 1, wherein the stimulation device is battery powered.
11. The stimulation device as recited in claim 1, further comprising: a water resistant housing comprising acrylonitrile butadiene styrene (ABS).
12. A method comprising:
causing deflections of a flexible wall portion of a chamber of a stimulation device in opposing directions, thereby resulting in a changing volume of the chamber, the changing volume of the chamber resulting in modulated positive and negative pressures with respect to a reference pressure; and
applying the modulated positive and negative pressures to a body part through an opening, wherein the stimulation device is positioned by a user for applying the modulated positive and negative pressures using an appendage of the stimulation device, wherein the appendage is a dildo configured to be inserted into a vagina.
13. The method as recited in claim 12, wherein the appendage is a handle for holding the stimulation device.
14. The method as recited in claim 12, wherein the changing volume of the chamber results in the modulated positive and negative pressures in a second chamber.
15. The method as recited in claim 12, wherein the body part is a clitoris and the opening is placed over the clitoris.
16. The method as recited in claim 12, wherein the flexible wall portion is integral with the chamber.
17. A stimulation device, comprising:
a pressure field generator having a flexible wall portion;
a drive unit in physical communication with the flexible wall portion so as to cause deflections of the flexible wall portion in opposing directions, thereby resulting in a changing volume of the pressure field generator,
the changing volume of the pressure field generator resulting in modulated positive and negative pressures with respect to a reference pressure;
an opening for applying the modulated positive and negative pressures to a body part;
a control device for controlling the drive unit; and
an appendage, wherein the appendage is a dildo configured to be inserted into a vagina.
18. The stimulation device as recited in claim 17, wherein the appendage is a handle for holding the stimulation device.
19. The stimulation device as recited in claim 17, wherein the body part is a clitoris and the opening is further for placing over the body part.
20. The stimulation device as recited in claim 17, wherein the body part is a clitoris.
21. The stimulation device as recited in claim 17, wherein the pressure field generator comprises a first chamber and a second chamber.
22. The stimulation device as recited in claim 17, wherein the flexible wall portion is integral with the pressure field generator.
23. The stimulation device as recited in claim 17, wherein the stimulation device has no valves.
24. The stimulation device as recited in claim 17, wherein the stimulation device is a portable hand-held device.
25. The stimulation device as recited in claim 17, wherein the stimulation device is battery powered.
26. A method comprising:
causing deflections of a flexible wall portion of a pressure field generator of a stimulation device in opposing directions, thereby resulting in a changing volume of the pressure field generator,
the changing volume of the pressure field generator resulting in modulated positive and
negative pressures with respect to a reference pressure; and
applying the modulated positive and negative pressures to a body part through an opening, wherein the stimulation device is positioned by a user for applying the modulated positive and negative pressures using an appendage of the stimulation device, wherein the appendage is a dildo configured to be inserted into a vagina.
27. The method as recited in claim 26, wherein the appendage is a handle for holding the stimulation device.
28. The method as recited in claim 26, wherein causing deflections in a flexible wall portion of a pressure field generator in opposing directions comprises:
causing deflections in the flexible wall portion of a first chamber of the pressure field generator, thereby resulting in the modulated positive and negative pressures in a second chamber of the pressure field generator.
29. The method as recited in claim 26, wherein the body part is a clitoris and the opening is placed over the clitoris.
30. The method as recited in claim 26, wherein the flexible wall portion is integral with the pressure field generator.