Eleven Lighting Pty Limited v Interium Pty Ltd
[2003] APO 10
•24 February 2003
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Patent: No. 720265 in the name of Eleven Lighting Pty Limited
Title: Improvements in Illuminated Display Systems
Action: Opposition under s 59 by Interium Pty Ltd
Decision: Issued 24 February 2003.
Abstract
Opposition upheld. The opponent succeeded on the grounds of novelty, inventive step and compliance with s 40. Ground of manner of manufacture not established.
The application was refused, and costs were awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 720265 by Eleven Lighting Pty Limited and opposition under Section 59 of the Patents Act 1990 by Interium Pty Ltd.
BACKGROUND
Patent application 720265 in the name of Eleven Lighting Pty Limited (hereinafter referred to as Eleven Lighting) was filed on 26 September 1997 and derives priority from provisional application PO2608 filed on 26 September 1996. The patent application was advertised accepted on 25 May 2000.
Interium Pty Ltd (hereinafter referred to as Interium) filed notice of opposition on 25 August 2000 followed by a Statement of Grounds and Particulars on 24 November 2000. The opponent’s evidence in support was completed on 27 August 2001. On the same date Interium also filed a request to amend the Statement of Grounds and Particulars under regulation 5.9, and this was allowed on 20 September 2001.
Eleven Lighting was due to serve its evidence in answer by 27 November 2001. After several extensions of time, this was served on 8 July 2002. The evidentiary stage was completed by the filing of evidence in reply on 20 August 2002.
The matter was set down for a hearing on 21 November 2002. The opponent was represented by Mr Allen Evans, patent attorney of the firm Watermark, Melbourne, assisted by Mr Matt Pini, also of that firm. The applicant was represented by Mr Fraser Old, patent attorney of the firm Hodgkinson Old McInnes, Sydney. Also present at the hearing was Mr Gregory Pobke, Managing Director of Eleven Lighting, and his associate, Mr Steve Millar.
THE SPECIFICATION
The specification begins by stating that:
"The present invention relates to display systems and more particularly relates to an illuminated display system which utilises a matrix of half tone arrays."
The invention described in the specification relates to an edge-lit display assembly. It consists of a transparent sheet of material, such as acrylic, and a light source positioned along an edge of the panel. Light enters the panel along this edge and is transmitted from the front and rear surfaces of the panel. By virtue of a half tone array which is applied to only one surface of the panel, it is possible to control the intensity of the emitted light. The paragraphs bridging pages 1 and 2 of the specification describe the invention as follows:
“The inventor has found that it is possible to dramatically increase the light intensity emanating from a sign or the like by using a particular form of matrix applied on one surface of a sheet of material which forms the sign compared with the light intensity emanating from an identical sized sheet having a dot matrix applied to both of two opposite sides of the sheet. This means that the sign can be produced more cheaply and with less material whilst at the same time the light intensity is increased by at least 50% in comparison to a sheet forming a sign of substantially like size with a dot matrix pattern applied to two opposing surfaces of the sheet.
It is an object of the invention to provide an illuminated sign wherein the sign comprises a sheet of transparent material such as glass or perspex which when a half tone array is applied to one surface and in the presence of a light source emits lights at a greater intensity in comparison to that which would be emitted by a sign of the same or substantially the same size with a dot matrix applied to at least two surfaces of the sheet”
This is then followed by two “consistory statements”, which are identical to claims 1 and 2 respectively. The first consistory statement introduces the requirement that the intensity of light issuing from the display particularly in the region remote from the light source is “at least fifty per cent more than the light which issues by comparison from a display of substantially the same dimensions”. The second consistory statement is less specific, and refers to a region free of half tones “thereby increasing the intensity of light issuing from the display in the region remote from the free region compared to that which would issue from the same region were a dot matrix array used”. Both consistory statements include the features of a light source, a panel, a half tone array applied to one side of the panel, and a region free of the half tone array.
The specification ends with ten claims that define the invention in somewhat different terms to those used on pages 1 and 2 under the heading “The Invention”. These are as follows:
1.An illuminated display assembly comprising; a transparent sheet of material such as an acrylic comprising;
at least one surface forming at least one edge of the sheet and first and second outer surfaces, separated by said at least one surface,
a light source which delivers light via said at least one edge surface through and along the plane of the sheet and intermediate the outer surfaces;
wherein, one or both of said outer surfaces has applied thereto at least one half tone translucent array arranged so as to distribute the light from said light source across said at least one or both surfaces of the sheet wherein said at least one half tone array covers a substantial part of the entire first or second surfaces with the remainder of the surface free of said array or arrays thereby increasing the intensity of light issuing from the display particularly in the region remote from the light source to at least fifty per cent more than the light which issues by comparison from a display of like or substantially the same dimensions incorporating a dot matrix.
2.An illuminated display system comprising; a transparent sheet of material such as an acrylic, including first and second outer surfaces;
a light source which delivers light along the plane of the sheet and between the outer surfaces via an edge surface of the sheet;
wherein, one of said outer surfaces has at least one half tone translucent array arranged on said surface so as to distribute the light across said first or second surfaces of the sheet;
wherein said at least one half tone array covers a part of the entire surface of said first or second outer surfaces with the remaining part including a region free of half tones thereby increasing the intensity of light issuing from the display in the region remote from the free region compared to that which would issue from the same region were a dot matrix array used.
3.An illuminated display assembly according to claims 1 or 2 wherein as the intensity of light from said light source decreases as distance from the light source increases the density of the half tone array/s increase/s to maximise refraction of light remote from said light source.
4.An illuminated display assembly according to claim 3 wherein the density of the half tone matrix array/s are 10% to 50% density over the surface area of the sheet increasing to 100% density at the furthest distance from the light source.
5.An illuminated display assembly according to claim 4 wherein a half tone array is applied to a part of one surface of the sheet of material such that a region of that surface proximate the light source is free of said half tone array.
6.An illuminated display assembly according to claim 5 wherein at least one surface of said sheet is overlaid with panels bearing a figure, word message or symbol.
7.An illuminated display assembly according to claim 6 further comprising a support structure including a recess for receiving and supporting said sheet material.
8.An illuminated display assembly according to claim 7 wherein the support structure further comprises a junction for termination of a power supply and connection of said power supply to the light source.
9.An illuminated display assembly according to claim 8 wherein the light source is located in a recess in said support structure such that the light emanates from the light source about midway along the edge of said sheet which is retained by said structure.
10.An illuminated display sign according to claim 9 wherein the half tone array is randomly distributed over the outer surface of said sheet.
It is apparent from claims 1 and 2 that the placement of the half tone array has not been limited to only one side of the transparent sheet. When queried at the hearing, the applicant conceded that the feature of a half tone array when applied to only one side of the sheet was essential, and that they were willing to amend the specification to reflect this. I therefore find that claims 1 and 2 are not fairly based.
10. Further confusion regarding the inventive concept arises from the specification itself, which contains several inconsistencies. In particular, the specification makes some assertions that tend to imply that the particular form or pattern of the half tone array is an important element of the invention (see, for example, page 4, line 8 which refers to a "unique matrix of half tone translucent arrays"). However, I note that the specification fails to define, either expressly or implicitly, the exact nature of the half tone array. The specification as a whole also places little emphasis on the feature in question, and the claims are wholly silent on the pattern of the half tone array. I therefore conclude that the exact nature of the half tone array is not essential to the invention. If my analysis is incorrect, then the application must be found invalid for want of sufficiency.
11. In summary, the specification teaches that the invention consists of the combination of a light source, a light transmitting panel, the placement of a half tone array on one side of the light transmitting panel, and ensuring that a gap, or region free of the array, remains. I note that these features appear in both independent claims.
12. Interium expressed concerns that the specification fails to provide the "best method" of performance, primarily due to the inconsistencies present within the specification. Though I have some sympathy for the opponent’s view that the application is poorly drafted, I must reject the contention that the best method of performance has not been described. I have already concluded that the invention involves a combination of features, and that the specification adequately defines this. Furthermore, there is no evidence before me to suggest that a person skilled in the art would have any difficulty in carrying out the invention. Accordingly, I am unable to conclude that the specification is insufficient, and find that the specification does provide the best method of performance.
EVIDENCE
13. The evidence in support from Interium consists of:
A statutory declaration by Michael Timothy Seymour Royle, a consultant to Interium Pty Ltd since May 2000. Mr Royle states that his “areas of expertise lie in edge lighting systems, such as for EXIT and Emergency Lighting including directional and information signage, as well as fire and security systems”. Appended to the declaration is a selection of patent and non-patent literature on which the opponent’s case relies. These exhibits are referred to as MTSR-1 to MTSR-15.
A statutory declaration by John Ashall, Technical Director of Prismex Technologies Pty Ltd, of which Interium Pty Ltd is the trading company. Mr Ashall is the inventor of Australian patent 647834, which is directed towards a two-sided illuminated display sign, and which forms part of the admitted prior art of the patent in suit.
The applicant's evidence in answer consists of:
A statutory declaration by Gregory Arthur Pobke, who has been the Managing Director of Eleven Lighting for the past 2 years. Accompanying the declaration are two exhibits (GAP-1 and GAP-2) of measurements conducted on Eleven Lighting's "STARFIRE 38" sign, which appears to be based on the same technology as that of the patent in suit.
The evidence in reply consists of a further declaration by Mr Royle.
DECISION
Fair basis on the provisional
14. The opponent alleges that the claims are not fairly based on the provisional specification or the complete specification as originally filed.
15. Arguments that the claims of the accepted specification are not fairly based on the specification as originally filed are in my view without merit, as no amendments occurred during the course of examination. It follows that if no amendments were proposed and allowed between filing of the complete specification (or more correctly, entry into the national phase in this instance) and acceptance, then any concerns about fair basis between the complete specification as accepted and the complete specification as originally filed are moot. In any case, s 40 only requires that the claims be fairly based on the matter described in the specification. There is no requirement under s 40 that the claims be fairly based on the specification as filed.
16. With regard to the opponent's concern that the claims are not fairly based on the provisional specification, it has been recognised that a complete specification may contain some development over the provisional document and still be fairly based. However, this development should not amount to a different invention (see CCOM Pty Ltd v Jiejing Pty Ltd (1994) 28 IPR 481 at 501).
17. It is clear from the provisional specification that the invention comprises a display in which the light intensity is increased by at least 50% over a similarly sized display. I consider that the provisional specification discloses in broad terms the display described in the complete specification. Though there are minor differences in the language used to describe the invention, the authorities have acknowledged that some generality of expression in a provisional specification should be accepted. In my view there is no significant difference between the claims of the accepted specification and the disclosure in the associated provisional specification. The claims are therefore fairly based on the disclosure in the associated provisional specification, and consequently are entitled to a priority date of the date of filing of that document.
18. As a result, I find that all of the claims are entitled to claim priority from provisional application PO2608 with a priority date of 26 September 1996.
Clarity
19. The opponent has drawn attention to several matters under this heading. In my opinion, some of these objections are relatively minor, and easily resolved. Thus I will limit my consideration to the more substantial objections. Interium began by alleging that:
“The claims are of indeterminate scope because there is no real and reasonably clear disclosure of where exactly on the display the fifty per cent increase of light occurs."
20. I note that at several points within the specification it is stated that the light should be evenly distributed across the panel. In my view, this clearly suggests that the fifty per cent increase should occur at least over that part of the panel which is externally visible. Consequently, I consider this allegation to be without merit. However, I believe the claims are of indeterminate scope for a more fundamental reason. Claim 1 is quite unusual, in as much as the desired result is not an absolute, but a relative measure between the alleged invention and any similar prior art device of like or substantially the same dimensions. Essentially, this claim seeks to define the monopoly by reference to a device whose properties are almost entirely unknown. Consequently, I believe that this claim is of indeterminate scope. It verges on the utterly meaningless.
21. I also consider the phrase "….incorporating a dot matrix." used in claim 1 to be unclear. The terms “dot matrix” and “half tone array” appear to be used interchangeably in the art, and the specification fails to define any distinction between the two. If the distinction is important, it is incumbent on the applicant to appropriately define this in their specification. This has not been done, and it is not clear what limitation the comparison between a half tone array and a dot matrix places on claim 1. Claim 2 also suffers in this fashion, relying on the phrase "….were a dot matrix array used.", and is also of indeterminate scope.
22. Interium also proffered the view that claim 10, which is directed to an "illuminated display sign", is not clear in its appendancy to claim 9, which is directed to a "illuminated display assembly". This was not disputed by the applicant, and I agree with the opponent that claim 10 is unclear.
23. In summary, I find that claims 1, 2 are unclear due to their indeterminate scope, while claim 10 is unclear due to an incorrect appendancy.
Novelty
24. The law regarding novelty has been extensively reviewed in judgments by the Federal Court of Australia in recent years. These judgments indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
25. It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel - Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.
26. At the hearing the applicant submitted that several items of prior art should be disregarded for the purpose of novelty as they were directed to lighting for liquid crystal displays and not advertising signs. I am not persuaded by this argument, as all but one of the claims of the present case are directed to either "An illuminated display assembly…." or "An illuminated display system…." (I have already found that Claim 10 is unclear in its reference to “An illuminated display sign”). In my view, lighting systems for LCDs are but one example of an illuminated display assembly or system. Had the claims been restricted to "A display sign….", or a similar example, I would be more inclined to accept this argument.
I will discuss each of the alleged citations presented at the hearing in turn.
United States Patent Specification 5363294 (Yamamoto et al.), 8 November 1994 (referred to as either MTSR‑3 or the Nissha patent)
27. The Nissha patent discloses a "surface light source device" comprising a light guiding plate with a light source located at one end of the plate, and an edge reflection layer provided at the opposite end of the plate. A diffusion/transmission section is provided on one side of the plate, and is described in the following terms at column 3, lines 49 to 58:
"….the ratio of the dot area to the area of the light diffusion/transmission section (i.e. the light diffusion/transmission section density) gradually increases with an increase in distance from the light source end of the light guiding plate to a position at which the surface emission luminance of the light guiding plate is lowest and is constant in a region from the position to an end edge reflection layer end of the light guiding plate."
28. The applicant questioned the relevance of this citation, suggesting that the presence of the edge reflection layer indicated that an altogether different class of device was being discussed. I am not convinced that I should reject the citation merely on the grounds that an additional feature is referred to. In any case, the document clearly states at column 6, lines 20 to 34 that the light diffusion/transmission section can be altered to compensate for "….no end edge reflection layer". The argument appears to be moot.
29. It is not readily apparent if the citation discloses a region free of an array. The opponent contends that Figures 1 and 3 shows some gap between the edge of the plate and the area where printing of the half tone array begins. There is no reason why a drawing alone should not be capable of disclosing an invention (see C Van der Lely NV v Bamfords Ltd [1963] RPC 61), and Mr Royle has deposed that:
"The drawing of Figure 3 of the Nissha patent does show the region closest to the light source as being free of any of the stripes 13….".
30. Rebutting the implication that this was the same as a region free of half tones, the applicant suggested that the "alleged gap….was no more than the citation attempting to illustrate a density of 0%".
31. I note that there is no discussion in the citation of the "gap" shown by the figures, and no reference is made to a region free of half tone arrays. Nor did Interium provide evidence as to what Figures 1 and 3 would have disclosed to a person skilled in the art at its publication date. The level of evidence before me is insufficient to conclude that a region free of half tones has been disclosed. I accept the applicant's submission that there has been no recital of the feature in question.
In light of this finding, I have come to the conclusion that the citation does not deprive the claims of novelty.
United States Patent Specification 4715137 (Scheve), 29 December 1987 (referred to as MTSR‑4)
32. The citation discloses an illuminated display sign which includes a light source, a light-transmitting member, and an image which “may include half-tones” on one face of the member (refer to Figures 1 and 2, and column 2, line 58). The image is comprised of light transmitting particles which result in the image appearing brighter than the rest of the light transmitting member. The figures explicitly show that the light-transmitting member possesses regions free of halftones.
33. Interium conceded that the document did not specifically disclose a 50% improvement over a similarly sized display as required by claim 1, but insisted that this result is inherent in the construction of Scheve. This is a reference to the decision in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, [1972] RPC 457 at 485-486:
".…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."
34. I am not convinced that the skilled addressee, in implementing Scheve, would inevitably produce something that is within the scope of claim 1. Whilst it may be possible that the objective of 50% could be met, the citation does not provide clear and unmistakable directions ensuring that it would be met. Nor is there any evidence from Mr Royle to suggest such a result would be obtained. It follows that claim 1 is novel in light of this disclosure.
However, I do believe claim 2 is anticipated, as it is inevitable that a region free of half tones will increase “….the intensity of light….” in a region remote from the free region.
Claim 3 stipulates that the density of the half tone array/s increases as the intensity of light from the light source decreases. The citation appears to be silent on this issue, and in the absence of any compelling evidence I must conclude that claim 3 is not anticipated. Accordingly, claims 4 to 10, which depend from claim 3, must also be found novel.
Australian Patent Specification 686481 (CANON KABUSHIKI KAISHA), 11 July 1996 (referred to as MTSR‑5)
35. The citation discloses an illumination device suitable for illuminating a liquid crystal panel. It comprises a light guide with a linear light source located at one end, and a side reflection plate provided at the opposite end of the light guide. The light guide may be a transparent sheet member, such as an acrylic resin plate. A luminance distribution adjusting means is provided on one side of the light guide, and is described in the following terms at column 3, lines 4 to 12:
"….the above-mentioned luminance distribution adjusting means may preferably be constituted as a reflection pattern comprising a large number of dots causing random reflection of light incident thereto from the linear light source. Alternatively, the luminance distribution adjusting means may be constituted as a mesh pattern causing random reflection of light incident thereto from the linear light source."
It is clear that the purpose of the pattern is to ensure a uniform luminance distribution.
However, there is no disclosure, either in the body of the specification or the appended figures, of a region free of this pattern. In light of this finding, I have come to the conclusion that the citation does not deprive the claims of novelty.
United States Patent Specification 5283968 (Williams), 8 February 1994 (referred to as MTSR‑6 or the JSB patent)
36. This invention relates to an edge-lit display panel which is printed with a half tone array on at least part of one surface. The array ensures an even distribution of light from the light source throughout the entire panel. The citation does not disclose the 50% criterion of claim 1, which is not anticipated.
I am satisfied that claim 2 is not novel, as the provision of a region free of dots will increase the intensity of light issuing from the remaining portion of the panel. The specification clearly states that the dots are of uniform size and spacing (see column 2, lines 51 - 52), and there is no discussion regarding an array of increasing density. It follows that claims 3 to 10 are novel.
English Language translation of Japanese Publication No. 04-328206 (ACT Corporation KK), 17 November 1992 (referred to as MTSR‑7 or the ACT patent)
37. The document is directed towards a light guide plate for a transparent decorative illumination or display device. Page 3, lines 23 to 28 states that:
"….the present invention provides for the formation by latescence and the like on one side surface of random reflection processing parts, the proportion of the unit area of the light guide plate that is occupied by such random reflection processing parts increasing proportionally to the square of the distance from the line running along the edge of one side of the guide plate over a specified distance outwards from the edge."
38. Reference to the figures confirms that this passage is describing a half tone array in which the size of the dots increases as distance from the light source increases. Figures 2, 3 and 4 also appear to show a region free of half tones near the light source, though no specific mention of this occurs in the specification. Paragraph 62 of the first Royle declaration characterises this region as "a portion of the surface of the plate that is free of half tone array.". On the basis of the evidence before me I am prepared to accept this. Again, there is no clear disclosure of the 50% criterion stated in claim 1 of the patent in suit.
Accordingly, I find that claims 2 and 3 are not novel in light of the ACT patent.
European Patent Specification 571173 B1 (NOKIA MOBILE PHONES LTD.), 21 July 1999 (referred to as MTSR‑10 or the Nokia patent)
39. As I have already decided that all of the claims are entitled to the earliest priority date of 26 September 1996, I need not consider this document as it was published several years thereafter.
United States Patent Specification 5178447 (Murase et al.), 12 January 1993 (referred to as MTSR‑11 or the Meitaku patent)
40. The citation relates to an edge light panel element for a surface light source device such as liquid crystal display devices, illuminated display devices and illumination signboards. The panel comprises a transparent acrylic substrate which carries a mesh pattern on one side. The mesh size of the pattern continuously varies from 20% to 100% according to the distance away from the side of the edge light panel adjacent the primary light source.
The citation describes part of the surface of the light panel as being free of an array, and specifically refers to this as "….unprinted margins of the panel…." at line 49 of column 4.
I believe that this citation discloses the invention of claims 2 to 5.
Inventive Step
41. According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge, or
(b) common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
42. Considering the latter of these criteria first, I do not think there is any doubt that the various documents which Interium have established as being in the public domain before the priority date of the claims would be ‘understood’ by the person skilled in the art. However, I believe a modicum of uncertainty surrounds whether several of these documents would have been 'ascertained' and ‘regarded as relevant’.
A passage from the applicant's submissions at the hearing illustrates this issue:
"Furthermore, in Australia there is no manufacture of LCD's so there is no-one in Australia skilled in this field. Certainly, Messrs Ashall and Royle have no industrial experience relating to LCD's. In short, a person seeking to improve upon Ashall's large display sign would not search for inspiration in the field of tiny LCD's."
43. In Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limitedv Rohm and Haas Company [1997] APO 40, the hearing officer took the approach that a patent dealing with the same technical issues would prima facie have been ascertained. I consider this a sensible approach. Applying it to the documents at hand, I note that nearly all discuss the twin objectives of greater brightness and more even illumination. Though there may be an order of magnitude difference in the size of an LCD when compared to a display sign, the evidence demonstrates that the same principles of optics apply, identical problems occur, and remarkably similar solutions exist. I therefore consider that a person skilled in the art could reasonably have been expected to have ascertained these documents. It follows that the requirement of "regarded as relevant" is not likely to be an issue where a document relates to the same art as the problem to be solved.
44. With regard to the first criterion, a widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:
"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."
45. The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art. Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.
46. At the hearing the opponent made certain allegations as to the common general knowledge in the art, and though I have some doubts as to the degree of reliability that ought to be placed on this evidence due to the lack of independent corroboration, I am unaware of anything tending to suggest the common general knowledge is otherwise. The applicant did not seriously or effectively challenge any of these allegations. Under the circumstances I think I must accept that the following salient features were common general knowledge:
the provision of a single light source adjacent one edge of a panel;
applying a half tone array to one or both sides of a panel by etching, printing etc.;
the application of a half tone array diffuses the light resulting in increased illumination;
half tone arrays may comprise dots of various sizes, shapes and patterns;
increasing the density of the array increases diffusion;
conversely, decreasing the density of the array decreases diffusion;
increasing the density away from the light source in order to achieve even illumination.
47. However, Interium have not provided sufficient evidence as to what a non-inventive person skilled in the art would do with this information, so I will turn to the prior art to assess inventive step.
48. Each of the Scheve, Williams, ACT and Meitaku citations disclose a light source, panel, half tone array and various means for achieving increased or more even brightness. From these citations, the skilled addressee would recognise that these features could be combined in such a manner as to result in a sign with increased brightness. However, I note that none of the citations specifically disclose a display sign which is 50% brighter than a sign of comparable size. On this issue, Interium submitted that:
"There is nothing in the specification indicating that this 50% parameter is based on anything inventive in the specification, it's just a parameter picked out of the air because some measurements in the specification, some measurements which I submit we can't place much reliance on, show a 50% improvement over some prior art."
49. Interium then directed my attention to the decision of Laddie J in Raychem Corp.'s Patents [1998] RPC 31 at pages 46 - 47, in which it was held that the presence of meaningless and arbitrary parameters is not sufficient to amount to an inventive step:
"The selection of a group of compositions by reference to an essentially arbitrary parameter having little technical significance did not involve any inventive step. Although it might not be obvious, in the common use of that word, to limit a claim by reference to some particular meaningless and arbitrary parameter, that had nothing to do with patentability. Patents were not given for skill in inventing technically meaningless parameters."
50. I consider this approach appropriate in this instance. Even though the present case may be distinguished from Raychem (supra) by the use of relative, rather than absolute parameters in claim 1, I see no reason why similar logic should not apply. It is not suggested, either by the specification or evidence, that anything turns on the parameter of 50%. The specification does not teach how to predictably make any display meeting the limit of being 50% brighter than a display of similar dimensions. The selection of 50%, as opposed to the 31% or 100% achieved in other measurements, is essentially arbitrary. It is a parameter likely to be exhibited by many devices, and in these circumstances is insufficient to confer inventiveness.
Accordingly, I find that claim 1 is obvious in light of each of the Scheve, Williams, ACT and Meitaku patents.
51. Having determined that claims 2 to 5 are not novel by virtue of the disclosure in the Meitaku patent, I also find that these claims lack an inventive step in light of this citation. Of the remaining claims, Interium stated that these features were well known and in some instances merely reflect standard practice in the art. Claims 6 to 9 all define matter relating to the physical construction of the display. In my view the features added by these claims would be well known to those skilled in the art and there is nothing in the subject matter of these claims which would render them inventive. Claim 10 stipulates that the half tone array is randomly distributed, but based on the applicant's own assertions at the hearing that such arrays are "well known" I am satisfied that such an arrangement is within the common general knowledge of a skilled person, and not inventive.
In summary, I consider that the invention of claim 1 is not inventive in light of each of the Scheve, Williams, ACT and Meitaku patents. I have also found that claims 2 to 10 do not possess an inventive step based on the Meitaku patent and common general knowledge.
Manner of Manufacture
52. The second ground of opposition relied upon by the opponent concerns the patentability of the invention under s 18(1)(a) of the Patents Act 1990. In their submissions, Interium alleged that the invention as claimed in any claim was not a manner of manufacture. The opponent suggested that the invention was a mere collocation, involved the mere use of a known device and lacked inventive merit.
Collocation
53. The opponent contended that the claimed invention was a mere collocation of known integers, and that there was no disclosure in the specification of a synergistic effect or patentable combination. The difference between a collocation and combination was set out in British Celanese Ltd. v Courtaulds Ltd., 52 RPC 171 at pages 193-194, where it was said:
"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."
54. In my view the allegation that the invention is directed to a mere collocation is without foundation. The specification is directed to an illuminated display assembly, which, prima facie, appears to be a proper combination of known integers. The intensity of the light issuing from the display clearly depends on such matters as the strength of the light source, the properties of the transparent sheet and the pattern of the half-tone array. In other words, the function of the display sign is entirely dependent on some working inter-relation between each of the integers. To me this suggests that the claimed invention is directed to a true combination.
55. Furthermore, no real evidence was presented by the opponent to support the proposition that there was no working interrelationship between the integers. I am also aware that many patents have previously been granted for similar devices, (including the opponent's own Prismex sign AU 647834), and consider that the present invention has no less "synergism" than the prior art products.
56. I am therefore of the view that the claimed invention is directed to more than a mere collocation of integers.
Mere use of a known device
57. Interium stated that the disclosure in the specification of the half tone array was no more than a mere use of a known device. Irrespective of whether the half tone array is well known or not, I find this line of argument rather unconvincing, as many worthy inventions comprise integers that are already known. I do not construe the claims to be a mere use of the half-tone array since, inter alia, there are other significant features in the claims.
Lacked inventive merit
58. The opponent asserted that the claimed invention is not a patentable invention according to s 18(1)(a) because the claimed invention is not, on the face of the specification, a proper subject for a letters patent.
59. In the decision of the High Court in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd, 32 IPR 449 (which was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the majority of the High Court concluded that "newness" was imported into sec 18(1)(a) to the extent that that s 18(1)(a) should be interpreted as retaining the threshold requirement of "an invention" as excluding from a "patentable invention" any claimed process, method or use which was not, on the face of the specification, a proper subject of letters patent according to traditional principles.
60. I am satisfied that this ground is not made out. To me the very existence of other patents for similar devices indicates that patentable subject matter may be present. The specification refers to some prior art, observes its disadvantages, and sets out objects for the invention which are directed at overcoming those disadvantages. Whilst individual features may be well known, there is nothing on the face of the specification that suggests that the combination claimed is not new. In my view the question of whether such subject matter is new is best dealt with under the headings of novelty and inventive step.
I find that the opponent has failed to establish that the claimed invention does not constitute a manner of manufacture.
CONCLUSION
61. I have found that claims 1 2, and 10 are unclear. Claims 1 and 2 were also not fairly based, as they have not been limited to a half tone array on only one side of a transparent sheet of material. However, I have determined that the application is for a manner of manufacture, and that the specification does provide the best method of performance.
I have found that the invention defined by claims 2 to 5 is clearly not novel in the light of the documents considered, and that the claims as a whole lack an inventive step. Furthermore, I am unable to identify any patentable subject matter disclosed in the specification that could form the basis of a valid claim.
Therefore I refuse the application.
COSTS
62. Costs normally follow the event and I see no reason to depart from this practice in this case. The opponent has been successful in their opposition and consequently I award costs against the applicant Eleven Lighting.
R. W. J. Finzi
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Hodgkinson Old McInnes, Sydney
Patent attorneys for the opponent: Watermark, Melbourne
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