Emperor Sports Pty. Limited - [2004] APO 26

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 662655 in the name of EMPEROR SPORTS PTY. LIMITED.

Title: A Device For Use In Sport

Action: Request by the AUSTRALIAN FOOTBALL LEAGUE for the Commissioner to undertake Re-examination under S97.

Decision: Issued 1 October 2004 .
Abstract

Re-examination of patent 662655 was requested by a third party after grant of the patent. The re-examination found the granted claims to lack novelty and an inventive step over the prior art identified by the party. Various proposed amendments filed during the re-examination process also failed to overcome novelty and inventive step issues.
In undertaking re-examination, the standard to be applied during re-examination does not automatically equate to that applied during examination, given the consideration of re-examination under section 97(2) involves the potential revocation (or partial revocation) of a granted patent, rather than acceptance (or refusal) of an application. There are clear distinctions between the two provisions, which need to be considered separately.
Given the application of the device was in the games of Rugby League or Australian Rules football, the hypothetical person skilled in the art was considered to not just be restricted to a player or ex-player, but also include a broader spectrum of people having a sound knowledge of the respective games. As such, it is not unreasonable to expect a person from this group to have searched patent literature to remain informed of events in the field, (following the notion of a diligent searcher).
As a result, one would have reasonably expected the person skilled in the art to have ascertained the prior art documents, being earlier US patent documents. Having read and understood the prior art, the claims (as proposed to be amended) were considered to lack an inventive step over the prior art as there is no inventive ingenuity required to use a device in manner and purpose analogous to its previously known use.
The patent was wholly revoked on the granted claims, and the claims as proposed to be amended were also found to contain grounds for objection under re-examination, if in fact they were allowable under section 102.
There appears to be no support, as required under Subsection 40(2) of the Act, for restricting the claims to material, which may potentially be novel and inventive. Consequently, it is highly unlikely the introduction of such material, if it exists, would be allowable under section 102 of the Patents Act. Nor was there any patentable subject matter available to overcome the existing grounds for objection, thereby causing the patent to be revoked.
PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent No.662655 by EMPEROR SPORTS PTY. LIMITED, and a request by the AUSTRALIAN FOOTBALL LEAGUE for the Commissioner to re-examine the complete specification under S97 of the Patents Act 1990.

BACKGROUND

Emperor Sports Pty. Limited ("Emperor") under its previous name of Oztag Pty. Limited, first filed patent No. 662655 as provisional application PL3261 on 25 June 1992. The associated complete application (48739/93) progressed to be advertised accepted as patent application number 662655 on 7 September 1995, with the patent being subsequently granted in the usual manner.
On 10 September 2003 the Australian Football League ("AFL") under Regulation 9.2, requested a re-examination of the complete specification. Re-examination of the specification was undertaken. Three adverse reports were issued (the last on 3 May 2004) and leave sought by the patentee to propose various amendments to the granted claims throughout the re-examination process. Leave to amend was however not granted and as such the specification still includes the originally granted claims, without a successful resolution of the novelty and inventive step issues raised in the re-examination reports. Furthermore on 18 May 2004, the last statement of proposed amendments was filed, including the claim set upon which submissions at the hearing were based.
To resolve these issues, the matter was set down for a hearing in Canberra on 16 June 2004. Mr. Robert Wulff, patent attorney, of Griffith Hack, Sydney, represented Emperor via telephone.
THE REQUEST FOR RE-EXAMINATION
A request for re-examination of the complete specification may be made under Regulation 9(2), which has the following conditions:
"Request for re-examination of complete specification
(1) For subsections 97 (2) and 101G (1) of the Act, a request for re-examination of a complete specification must be in the approved form.
(2) A request must identify the documents on which an assertion is based that the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim, is not novel, and:
(a) for a standard patent — does not involve an inventive step; or
(b) for an innovation patent — does not involve an innovative step.
(2A) A request must state the relevance of each of the documents mentioned in subregulation (2)."
The relevant portions of the Request submitted by the AFL read:
"Australian Football League asserts that the invention so far as claimed in claims 1 to 27 (all of the claims) is not novel; and does not involve an inventive step when compared with the prior art base as it existed immediately before the priority dates of those claims.
Details of the documents upon which I/we rely, including date and place of publication, and the relevance of each of those documents, are provided below.
US Patent 2,846,224 published 5 August 1958, United States of America
US Patent 2,966,356 published 27 December 1960, United States of America
US Patent 2,986,396 published 30 May 1961, United States of America
US Patent 3,063,718 published 13 November 1962, United States of America
US Patent 3,251,109 published 17 May 1966, United States of America
US Patent 3,579,745 published 25 May 1971, United States of America
US Patent 4,304,403 published 8 December 1981, United States of America
US Patent 4,651,989 published 24 March 1987, United States of America
Statutory Declaration of Perry Haddock, dated 8 September 1993, filed in support of the application which resulted in patent 662655."
The relevance of each of these documents was discussed in the ensuing pages. I will not comment on these here, but address these discussions as need later in my decision.
THE SPECIFICATION
The specification states the present invention relates to a device for use in sport and in particular, to a device that includes one or more removable indicia. The removal of said indicia indicates a certain result has occurred. The invention is described in terms of its use in a modified game of Rugby League football.
The specification identifies that many types of sports involve an opponent making some sort of physical play at an attacker. E.g. in some ball carrying sports, an opponent must bring an attacker to the ground or make some sort of tag or impart some contact on the ball carrier to halt their progress.
The specification notes that variations of such sports have been developed to remove or reduce physical contact, thereby encouraging greater participation in the sport. It also recognises that alternative ways of halting the progress of an attacker have been developed. The most common of these is where the opponent touches the attacker with one or both hands, the sensation of touch being received by the attacker causing a halt to the attacker’s progress. This is exemplified in games like modified Rugby League football, known as “touch football”.
In such a game it is often very difficult to ascertain whether or not an attacker has been touched, and it relies on the honesty of the players involved. The device of the invention is said to provide a rapid and clear means of signalling the progress of a user of the device and whether the game should be stopped due to a “touch”.
In its preferred form the device includes a belt means worn by the user, whereby the, or each indicium is removably attached to the belt means. Otherwise the, or each indicium can be removably attached to shorts, trousers, a belt, a shirt, a top or a guernsey of the user. It is preferable the indicium is a tag of material. Preferably, the indicium is removably attached using a Velcro® system.
The specification also points out that having a pair of indicium strips mounted to trousers or a belt is advantageous when playing games similar to Rugby League football or Australian Rules football. This is because the strips are mounted in a similar region to that which a person would focus when tackling a user in these games. Thus the strip system may be a coaching aid for players.
The specification also provides a consistory statement mirroring the wording of claim 1. The granted claims read as follows:
1.A device for use in sport, including one or more indicia, the or each indicium being adapted for removable attachment to a user’s garment, such that in use and when attached to a user’s garment, the removal of the, each, or one or more further indicia indicates a predetermined result.
2.A device as claimed in claim 1 wherein the or each indicium is adapted for removal by hand.

3.A device as claimed in claim 1 or claim 2, further including a belt means for wearing by a user, whereby in use the or each indicium is removably attachable to the belt means.

4.A device as claimed in claim 3, wherein the belt means is a belt that is adapted for releasable mounting around a user at or adjacent to the user’s waist.

5.A device as claimed in any one of claims 1 to 4 wherein the or each indicium is adapted for removable attachment to shorts, trousers, a belt or a shirt, top or Guernsey of the user.

6.A device as claimed in any one of claims 1 to 5 wherein the or each indicium is a tag of material.

7.A device as claimed in any one of claims 1 to 6, wherein the adaptation of the or each indicium for removable attachment to a user’s garment is the provision on the indicium and/or the garment of a fastening means.

8.A device as claimed in claim 7 wherein the or each indicium is a strip of material with the fastening means arranged at one end thereof.

9.A device as claimed in claim 8, wherein in use the strip of material is mounted to a user so that the free end hangs downwardly from the one end.

10.A device as claimed in any one of claims 7 to 9 wherein the fastening means is a Velcro® system.

11.A device as claimed in claim 10, wherein the hooks portion of the Velcro® system is attached to the or each indicium and the loops portion of the Velcro® system:
(a)is attached to the garment; or
(b)when the device includes a belt means, is attached to the belt means, or forms a substantial part thereof; or
(c)is of the nature of the garment.
12.A device for use in sport substantially as herein described with reference to the accompanying drawings.

13.A device as defined in any one of the preceding claims for use in a game whereby a user is moving in a certain direction and an opponent to the user removes one or more of the indicia to indicate the predetermined result, which in the game is the provision of a signal that requires the user to stop moving in that direction.

14.A device as claimed in claim 13, wherein in the game, two or more users of the device move individually or collectively in the certain direction and two or more respective opponents to the users, either individually or collectively, remove one or more of the indicia to provide the signal and thereby prevent individual and/or collective further movement of the users in the certain direction.

15.A device as claimed in claim 14 wherein one of the users bears a second indicium, the bearing of which indicated that only this user is the user to whom the action of indicium or indicia removal can be performed in order to provide the signal.

16.A device as claimed in claim 15 wherein the second indicium may be transferred from user to user, whereupon only indicium or indicia removal from that user simultaneously bearing the second indicium will provide the signal.

17.A device as claimed in claim 15 or claim 16 wherein the or each opponent also makes use of the device as defined in any one of claims 1 to 12 and then moves in a direction opposite to the certain direction.

18.A device as claimed in claim 17 wherein when the second indicium is transferred to one or more of the opponents, the opponents become the users and the users then become the opponents.

19.A device as claimed in any one of claims 15 to 18, wherein the bearing of the second indicium past a certain location produces a certain result that can be recorded on a points tallying system.

20.A device as claimed in claim 21 wherein the certain location is a line on a playing surface.

21.A device as claimed in claim 19 or claim 20 wherein two opposing certain locations are provided at opposite ends of the playing surface, one location corresponding to that which one of the users when in possession of the second indicium must pass, and the other location corresponding to that which one of the opponents when in possession of the second indicium must pass, to produce the certain result.

22.A device as claimed in claim 21 wherein the two opposing locations are parallel lines.
23.A device as claimed in any one of claims 15 to 22 wherein the second indicium is a generally spherical or elliptical ball or another object adapted for hand holding by a user.

24.A device as claimed in any one of claims 13 to 23 wherein the signal includes the hand raising of the or each indicium after removal.

25.A device as claimed in any one of claims 13 to 24 wherein two indicia are provided, and in use only one indicium needs to be removed to provide the signal.

26.A device as claimed in any one of claims 13 to 25 wherein the game is modified Rugby League, as herein defined.

27.A device for use in a game substantially as herein described with reference to the Example and/or in conjunction with the accompanying drawings.
DECSION
The relevant legislation covering re-examination is set out in Section 97 and reads as follows:
"Re-examination of complete specifications
…(2) Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re-examine the complete specification."
Clearly, as the patent has been granted, and a request for re-examination filed by the AFL, the Commissioner must re-examine the specification. In undertaking re-examination, Section 98 requires the following of the Commissioner:
"(1) On re-examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:
(a) is not novel; and
(b) does not involve an inventive step.
(2) For the purposes of subsection (1), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area)."
[Note: see also section 7.]
The relevant prior art
As listed in the request for re-examination, the relevant prior art comprises:
(a)    US Patent 2,846,224 published 5 August 1958;
(b)   US Patent 2,966,356 published 27 December 1960;
(c)    US Patent 2,986,396 published 30 May 1961;
(d)   US Patent 3,063,718 published 13 November 1962;
(e)    US Patent 3,251,109 published 17 May 1966;
(f)     US Patent 3,579,745 published 25 May 1971;
(g)    US Patent 4,304,403 published 8 December 1981;
(h)    US Patent 4,651,989 published 24 March 1987; and
(i)   Statutory Declaration of Perry Haddock, dated 8 September 1993.
The statutory declaration of Perry Haddock listed above relates to his publicising and commercialising of the invention after the filing of the provisional application to which the present patent application was associated. This reference does not provide any direct evidence of the details of the subject matter of the patent being disclosed publicly in a document prior to the priority date of the claims. As such, following Section 98(2) I do not believe this reference forms part of the prior art that needs be considered during re-examination.
Relevant Legal Test to be applied
The patentee made submissions in respect of how the law was to be applied under re-examination. Mr. Wulff argued the law to be applied in relation to re-examination is at least the law of novelty and inventive step as it existed in 1993, given the complete specification was filed on 30 September 1993. In particular, Mr Wulff submitted that whilst Item 15 of Schedule 1 of the Patents Amendment Act 2001 repealed sub-section 49(1) of the Patents Act and thus changed the standard of examination, Item 32(2) of Schedule 1 of the Patent Amendment Act makes it clear that Item 15 only applies in relation to the acceptance of applications pending on or after the commencement of the Patent Amendments Act 2001. Consequently Mr Wulff submitted that as the present patent was filed and granted prior to the commencement of the Patent Amendment Act 2000 the standard for examination should be that applied prior to commencement of said Amendments Act.
Furthermore, it was submitted that re-examination is a reconsideration of the examination that was conducted during original examination under Section 49 of the Patents Act 1990. Consequently, it was submitted that the standard to be applied is the same standard that applied at the time when the patent was pending during examination. Accordingly it was submitted that the standard is that “the benefit of the doubt” is to be exercised in the patentees favour, rather than the standard of “balance of convenience”.
I do not agree with the arguments forwarded by the patentee. I do not believe there is a basis for the assertion that re-examination is a reconsideration of the examination that was conducted during original examination. In my mind, whilst there may be some considerations which are common to both, the reporting of re-examination under section 98 is independent to that of examination leading to acceptance under section 49 of the Act. In particular, the consideration of re-examination under section 97(2) involves the potential revocation (or partial revocation) of a granted patent, rather than acceptance (or refusal) of an application. There are clear distinctions between the two provisions such as the constitution of the prior art base and the lawful grounds for objection available, for example. Therefore, I do not believe it follows the standard to be applied during re-examination is automatically the same as that applied during examination.
In addition, in focussing on the standard of proof required, I am guided by Micromass v Varian [2002] APO 31. Here the Hearing Officer in addressing this issue stated at a para 27:
“…There would appear to be only two standards of proof recognised under Australian law (Murray v Murray (1960) ALJR 521, Briginshaw v Bringinshaw (1938) 60 CLR 336) and that applicable in proceedings before the Commissioner clearly is, and has always been, the civil standard sometimes referred to as the “balance of probabilities” or the “preponderance of evidence” rather than the criminal standard...”
Consequently, in adopting Micromass I find in this proceeding before the Commissioner, the standard of proof to be that of the civil standard of “balance of probabilities”. I note this does not reduce any decision squarely down to a comparison of probabilities, but still requires that I am reasonable satisfied that an allegation has been properly made out based on all the relevant factors.
THE GRANTED CLAIMS

The basis of the request for re-examination made by the AFL, was made on the granted claims as listed above. In the first re-examination report issued on 4 December 2003, the examiner found that granted claims 1-27 lacked novelty and an inventive step over all of the prior art US patents listed above, with the notable exception of US 2846224.
After reviewing the material on file, I agree with the position taken by the examiner for the reasons set out in that re-examination report. The prior art documents indicated, unquestionably disclose a device at least capable of use in sport, the device including one or more indicia being adapted for removable attachment to a users garment. The subsequent conduct of the patentee after that first re-examination report appears to confirm my position. The patentee has not sought to defend the granted set of claims during the re-examination process, rather it has set about proposing several sets of amendments to the claims (on three separate occasions) to overcome the prior art raised.
Consequently, on the basis of the granted claims as they stand, I would revoke the patent under the provisions of section 101 of the Act.
THE CLAIMS AS PROPOSED TO BE AMENDED
During the re-examination process and prior to the hearing, the patentee filed several amendments in a bid to overcome the issues outlined above. Given that the patentees submissions at the hearing are based on proposed amendments including the following claim set, I will address these claims as if they were part of the specification, and with the view of determining whether or not there is patentable subject matter that the patentee may introduce, rather than with the view of revoking this claim set or otherwise. It should be noted that I will not be determining the allowability of these amendments per se, as this is a separate consideration to that of re-examination.
As indicated, the hearing was held on the basis of the last set of proposed amendments filed on 18 May 2004, these amended claims read as follows:
"1.        A device when used in the game of Rugby League or Australian Rules football, the device including one or more indicia, the or each indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia takes the place of a tackle in the game.
2.        A device when used in the game as claimed in claim 1 wherein the or each indicium is adapted for removal by hand.
3.        A device when used in the game as claimed in claim 1 or claim 2, further including a belt means for wearing by a user, whereby in use the or each indicium is removably attachable to the belt means.
4.        A device when used in the game as claimed in claim 3, where in the belt means is a belt that is adapted for releasable mounting around a user at or adjacent to the user's waist.
5.        A device when used in the game as claimed in any one of the preceding claims wherein the or each indicium is adapted for removable attachment to shouts, trousers, a belt or a short, top or guernsey of the user.
6.        A device when used in the game as claimed in any one of the preceding claims wherein the or each indicium is a tag of material.
7.        A device when used in the game as claimed in any one of the preceding claims, wherein the adaptation of the or each indicium for removable attachment to a users garment is the provision on the indicium and/or the garment of a fastening means.
8.        A device when used in the game as claimed in claim 7 wherein the or each indicium is a strip of material with the fastening means arranged at one end thereof.
9.        A device when used in the game as claimed in claim 8, wherein in use the strip of material is mounted to a user so that the free end hangs downwardly from the one end.
10.      A device when used in the game as claimed in any one of claims 7 to 9 wherein the fastening means is a Velcro® system.
11.      A device when used in the game as claimed in claim 10, wherein the hooks portion of the Velcro® system is attached to the or each indicium and the loops portion of the Velcro system:
(a)       is attached to the garment; or
(b)       when the device includes a belt means, is attached to the belt means, or forms a substantial part thereof; or
(c)       is of the nature of the garment.
12.      A device when used in the game as defined in any one of the preceding claims wherein in the game, when the tackle is made by the removal of the one or more indicia, the user of the device is required to stop.
13.      A device when used in the game as claimed in any one of the preceding claims, wherein in the game each player constitutes a user of the device such that each user makes use of a respective device.
14.      A device when used in the game as claimed in claim 13 wherein in the game, when one of the users bears a football, that bearing indicates that only this user is the user to whom the action of indicium or indicia removal is to be performed in order make the tackle.
15.      A device when used in the game as claimed in any one of the preceding claims wherein, after removal the or each indicium, the remover raises by hand the or each removed indicium.
16.      A device when used in the game as claimed in any one of preceding claims wherein two indica are provided, and in use only one indicium needs to be removed to make the tackle.
17.      A device when used in a game substantially as herein described with reference to the Example and/or in conjunction with the accompanying drawings.
18.      A device as claimed in any one of claims 1 to 11 or 17 when used in modified Rugby league, as herein defined.
19.      A method of playing Rugby League employing a device as defined in any one of claims 1 to 11 or 17, the method comprising the step of replacing a tackle in the game of Rugby league with an action that requires the removal of one or more of the indicia from a user's garment, being that user in possession of a ball.
20.      A method as claimed in claim 19 wherein the action further includes the step of hand raising the one or more indicia after removal from the user's garment.
21.      A method as claimed in claim 19 or 20 that is substantially a herein described with reference to the Example and/or the accompanying drawings.
22.      A method of playing Australian Rules football employing a device as defined in any one of claims 1 to 11 or 17, the method comprising the step of replacing a tackle in the game of Australian Rules football with an action that requires the removal of one or more of the indicia from a user's garment, being that user in possession of a ball.
23.      A method as claimed in claim 22 wherein the action further includes the step of hand raising the one or more indicia after removal from the user's garment."
NOVELTY
The Law
It is well established that the basic test for anticipation is the " reverse infringement test" as stated by Aiken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) 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."
Infringement of a claim occurs where "each and every one of the essential integers" of that claim have been taken, Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391.
A more recent statement in relation to novelty is given in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517:
"It is well accepted that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notionally skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. What ever is essential to the invention must be read out of or gleaned from the prior publications."
Essential Features
I now find it appropriate to construe the claimed invention (as proposed to be amended) and determine the essential features of the invention before assessing the claims against the prior art. In establishing the essential features I am directed by the following passage in Catnic Components v Hill & Smith [1982] RPC 183:
"A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential."
Initially concentrating on claim 1, which I have notionally re-written as follows:
A device when used in the game of Rugby League or Australian Rules football, including:
a) one or more indicia, adapted for removable attachment to a user's garment,
b) such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia takes the place of a tackle in the game.
I believe this claim may lend itself to two interpretations depending on the limitations afforded by the words “when used” in the claim.
In the first interpretation, the claim may be defining a pseudo method claim given that the term “when used” has the effect of limiting the scope of the claim to the particular application, that being the actual playing of the respective games of Rugby League or Australian Rules football, to the exclusion of all other games, notably such as “touch football” or other “modified” ball games for example. Such a construction of the term “when used” was accepted in the obiter of the High Court in Wellcome v Commissioner of Patents, 30 ALR 510 and the same opinion expressed in Bernard Joos' Application, (1972) AOJP 3429. In short, using the device specifically in the games of Rugby League or Australian Rules football is essential in this interpretation.
In addition, the claim is further limited in that indicium is adapted to be removed from the user’s garment as a substitute for a tackle in these games. This limitation does not exclude the removal of the indicium for a different purpose, or in another environment.
A second possible interpretation is one where the claim is purely considered to be a device claim, and the environment in which it is used does not materially affect the characteristics or working of the device, that is, the games of Rugby League or Australian Rules football are inessential to the working of the device itself. This would result in the claim being limited to a device having the features of “one or more indicia, adapted for removable attachment to a user's garment”.
Such an interpretation clearly results in the claim lacking novelty or an inventive step over the prior art US patents, which readily disclose such a device, as was highlighted in the initial re-examination report and again in subsequent re-examination reports.
I would also note in general, I believe the scope of the claims is somewhat unclear, given the definitions of Rugby League and modified Rugby League provided in the specification at page 5. From these definitions it appears the claims relate to a modified version of Rugby League as the method of tackling has been modified, and can no longer be considered to constitute a tackle as prescribed by the International Rugby League Federation. A similar argument follows for the embodiments relating to Australian Rules football, which appear to be defining a modified version of Australian Rules football rather than an “official” version of Australian Rules football.
With the view to seeking patentable subject matter, I shall return to the initial interpretation of the claim for the remaining considerations.
The primary submission made by Emperor with regard to novelty is that none of the cited references disclose “A device when used in a game of Rugby League or Australian Rules football” as defined in claim 1, and hence fail the reverse infringement test.
In reviewing the citations listed above, I agree with the submission that the essential feature of the device when used in the game of Rugby League or Australian Rules football is not disclosed in these documents. Therefore I consider claims 1-16, 18-23 novel over the prior art.
Omnibus claim 17
I note that claim 17 takes the form of an omnibus claim. Additionally, this claim is not specifically limited to a device when used in a game of Rugby League or Australian Rules football, unlike claim 1. The specification describes the device and accompanying drawings in much broader terms, and the Example (at page 8) describes a modified version of Rugby League, “touch football”, as distinct from Rugby League. In reading the Example and description accompanying the drawings I find the essential features of the claim to be:
A device when used in a ball carrying game.
a) The device including one or more indicia, being adapted to be removably attached to a user’s garment,
b) where the removal of one or more indicium takes the place of a tackle in that game.
Therefore, claim 17 being an omnibus claim limited to the essential features of the described invention, lacks novelty when compared with the listed citations above. Each of these citations disclose a device for a ball carrying sport, whereby the device includes one or more indicia being adapted to be removably attached to the users garment, the removal of the indicium taking the place of a tackle in that game. The claim therefore fails the reverse infringement test and lacks novelty.
INVENTIVE STEP
Section 7(2) provides a definition of inventive step for the purposes of the Patents Act.
"(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a) prior art information made publicly available in a single document or through doing a single act; and
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
[The prior art base is defined in Schedule 1 of the Act.]
It is clear that inventive step is a matter that is presumed, unless it is demonstrated that the invention is obvious. The assessment of obviousness can be made against the common general knowledge alone, or the common general knowledge together with a document (or act) of the type covered by section 7(3). Section 7(3) documents must satisfy several requirements: the document must be publicly available inside or outside Australia (see the definition of "prior art base"); and the document would have reasonably been expected to have been ascertained, understood and regarded as relevant.
Aickin J set out the following test for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"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."
This test was recently affirmed by the High Court in Aktiebolaget Hassle v Alphapharm Pty Limited [2002] HCA 59 (12 December 2002).
What is the problem to be solved?
The specification states that in many ball carrying sports an opponent must bring the ball carrier (attacker) to ground, or tag, or impart some other contact on the attacker in order to halt their progress. Such contact can cause injury or have a greater inherent risk of injury. This has lead to many variations of ball sports where contact has been reduced or removed, and alternative ways of halting the progress of an attacker found.
The specification states the most common way of halting the progress of an attacker is one whereby the opponent touches with one or two hands the attacker, rather than bringing them to ground. This form of progress halting is said to rely quite often upon the honesty of the players, and, in games adjudicated by referees, judgements must be made by the referee without any physical proof that a touch has in fact occurred, thereby leading to erroneous decisions being made during the game. This is quite clearly seen as undesirable.
Therefore, in reading the specification as a whole, I believe the problem to be solved is one relating to the playing of ball carrying sports. In particular, the problem is how to clearly ascertain whether an attacker has been touched by an opponent or not, which subsequently affects the state of play in the game.
Who is the person skilled in the art?
The person skilled in the art should be identified in the light of the problem that the invention is directed to solving, and not in the light of the claimed solution.
Emperor submitted the person skilled in the art is likely to be somebody that is involved with Rugby League or Australian Rules football, and has a good working knowledge of that particular game. Emperor believed such a person could be a coach, somebody that has played the game, somebody who has an understanding of the rules, tactics and strategies. They submit this could include a referee, a Rugby League or Australian Rules football fan.
Emperor also admitted that the person skilled in the art would have knowledge, (without being intimately involved) in other sports such as American Football, soccer and cricket for example. However, Mr Wulff did make the specific point that the non-inventive hypothetical skilled person in this art was not likely to be an analytical researcher.
Based on the problem to be solved, in my opinion, the notional person skilled in the art would be a person with a good working knowledge of a ball carrying sport, without that sport particularly being limited to Rugby League or Australian Rules football. Given the problem of identifying whether or not someone has been “touched” in a ball carrying game, I would expect a person with at least a good working knowledge of touch football would also be a person skilled in the art. The person may also include someone with a solid understanding of the games of American Football, or soccer for example. It is arguable whether or not participants such as players, coaches and referees could truly be considered as a person skilled in the art. However, for the present purposes, I agree with Emperors’ submission that the person skilled in the art could reasonably include a coach, a referee or umpire, or an ex-player.
Furthermore, I note a person skilled in the art is a skilled, but non-inventive worker in the field. I do not believe a fan, who seems more akin to a consumer, than a worker in the field, would met the definition of a skilled but non-inventive worker, as required of the person skilled in the art.
I would also add that an administrator of such a sport would meet the requirements of a person skilled in the art, given the overarching responsibilities of an administrator include limiting the potential for erroneous decisions in a game, and providing a safe game with reduced chance of injury and therefore generating increased participation.
What is the common general knowledge?

The notion of what is common general knowledge has been clearly set out in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292 where Aiken J stated:
“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...and it must be treated as being used by an individual as a general body of knowledge.”
It is clearly undisputable that modified version of the games such as Rugby League, Australian Rules football and soccer existed at the priority date of the claimed invention. These modified games are primarily focussed on encouraging children, or older adults, “masters”, to participate safely, or are a training drill variation of a game. These modified games include reduced body contact versions as well as the “touch” versions described earlier.
During the re-examination process to date, Emperor has made submissions that Australian Rules football has never had a “touch” version of its game. Whilst there is no evidence to confirm or refute this submission, it is well known to me, and I believe widely known, that a modified version of Australian Football known as “Masters” Australian Rules Football has existed since 1980. This game includes a national standardised set of modified rules designed to reduce the risks of injury.
Similarly, one would expect the notional person skilled in the art, as part of their common general knowledge to be aware of the game of American football, as was admitted by the applicant. However, there is no evidence before me to suggest that the game of “Flag Football” (a modified version of American football) was in fact common general knowledge to the person skilled in the art, in Australia, at the priority date in question.
Would the person skilled in the art have ascertained, understood and regarded the documents as relevant?
The fundamental point of contention during the re-examination procedure, (leading to this hearing) is whether or not the hypothetical person skilled in the art could have been reasonably expected to have ascertained the prior art documents under consideration.
Under section 7(3) it follows that if the requirement of “could…be reasonably expected to have ascertained” is not established as a matter of fact, an objection to lack of inventive step cannot be taken.
The term “ascertained” has been given judicial consideration, particularly in recent decisions in the Federal and High Courts. These are: Dyno Nobel Asia Pacific Ltd v Orica Australia Ltd [1999] FCA 1369; Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 (23 May 2002); E.I Dupont de Nemours and Co. v Imperial Chemical Industries PLC [2002] FCA 230; and Lockwood Security Products Pty Ltd v Doric Products [2003] FCAFC 29.
From these Court decisions, Emperor concluded the following:
“In each case, the determination of whether the person skilled in the art (PSA) would have “ascertained” a document was held to be a question of fact which involves assessing the approach of the PSA in the particular filed of the invention. In other words, the test requires an establishment of what PSA’s in that field normally do. In this regard, the court will have regard to whether, when a PSA has a problem to solve, they search the patent literature as a matter of course.”
Emperor argues the person skilled in the field of touch football, let alone Rugby League or Australian Rules football would not routinely conduct literature searches, and, in particular, patent literature searches. Consequently, the person skilled in the art would not have identified the relevant art now being relied upon. Therefore, it is submitted the inventive step objections taken during re-examination are erroneous.
In other words, Emperor has concluded from these Court decisions that, in deciding whether an invention is obvious in light of a patent document, the first step is to make a finding whether or not the person skilled in the art would search patent literature sources to ascertain said document.
In reviewing these decisions, I disagree with the particular conclusion drawn by Emperor that “the court will have regard to whether they, (the person skilled in the art, my addition) search the patent literature as a matter of course”. I do not believe these decisions voice such a step. For example, in Dyno Nobel (supra), it was found that the person skilled in that particular art would have the found the relevant prior art information because as part of their work they would be expected to keep up to date with relevant patent material, without first questioning whether or not patent literature was searched, (see paras 191-195).
The hypothetical person skilled in the art identified by Emperor (and myself) covers a broad spectrum of members, ranging from coaches to administrators and the like. The question to be asked then, is whether someone from this group could be reasonably expected to ascertain the relevant patent literature?
Mr Wulff submitted that it was not common place for the person skilled in the art of touch football (let alone Rugby League or Australian Rules Football) to conduct any literature searches (let alone patent searches) to find out what others in the field were doing. He added that “the inventor, Mr Haddock would simply go out and observe what others in the field were doing”.
In addressing this question, I would observe the person skilled in the art is a hypothetical person rather than an inventor per se. Whilst I have sympathy for the fact that the inventor may not have considered searching patent literature to remain informed, I do not believe there is any evidence to suggest the person skilled in the art would only be limited to merely observing what others in the field are doing. It would not be unreasonable to expect the person skilled in the art to regularly maintain or update their knowledge through trade magazines and the like. I believe it is also reasonable to expect that the notional person skilled in the art, drawn from the group identified, would have searched patent literature to remain informed of events in the field, (following the notion of a diligent searcher from Dyno Nobel (supra)). Furthermore, there is nothing before me to suggest that a person skilled in the art drawn from the group including coaches, referees, and administrators, would not be diligent in searching patent literature as a means of keeping up to date in the field.
Having established it is reasonable for the skilled person to conduct literature searches as a means of remaining informed, it follows that person could reasonably have been expected to ascertain the cited prior art documents.
All bar one of the cited documents (citation (c) US Pat 2986396) disclose of a device for use in a ball carrying sport, that being a modified version of American football. These documents each address the problem of identifying whether or not the ball carrier has been touched by an opponent. Generally speaking, it should be considered that a document dealing with the same technical issues would have been ascertained. (See Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited [1997] APO 40).
Moreover, following Rohm (supra), the requirements of “having understood and regarded as relevant” are not likely to be an issue where a document relates to the same art as the problem. Therefore, I find that a person skilled in the art would have in fact ascertained, understood and regarded as relevant the cited patent documents listed above, with the exception of citation (c).
Looking at US Patent 2986396, this discloses a different type of game, whereby a flag is attached to the belt of one player who is then pursued by other players who try to snatch the flag and run to a goal area. In my opinion, this document does not fall into the ball carrying sports art outlined above. Whilst it may have been ascertained and understood by the person skilled in the art, I do not believe it would be regarded as particularly relevant. To do so would be to apply ex post facto analysis after recognising the physical integers disclosed may be applicable to the present invention without any regard to the problem being solved.
Would the claimed invention lack an inventive step in the light of common general knowledge alone?
This body of common general knowledge as identified earlier, clearly omits essential elements of the result achieved by the inventor when solving the problem that confronted him. The games considered within the common general knowledge of the person skilled in the art, still require the honesty of the players involved to indicate a “touch” or continue to have major elements of body contact. Consequently, I find that the claimed invention would not have naturally suggested itself to a skilled worker equipped with common general knowledge alone, and hence I believe it is inventive over the common general knowledge in the art, when that knowledge is considered separately.
Is there an inventive step in the light of the cited prior art?
In reviewing each of the remaining US Patent citations, I find that each was published well before the priority date of the claimed invention, the latest being published on 24 March 1987. The publication dates have not been disputed.
Claim 1
I will deal first with claim 1 (with its first interpretation as discussed earlier) and the disclosures made in US Patents 2846224, 2966356, 3063718, 4304403 and 4651989 respectively.
US ‘224 discloses a device being a belt having a plurality of streamers depending from the belt, wherein players or tacklers try to grab the streamers so that they can pull the belt from the player to indicate the player has been successfully tackled.
Each of US ‘356 and ‘718 clearly discloses a belt device to be worn by a player playing flag football or touch football (referring to a modified version of American football). The user of the belt is clearly shown in the figures as the ball carrier in each. Also described in common, are a plurality of detachably secured flags, attached to the belt arrangement worn by the user, these are removed or “deflagged” by a player or opponent pursuing the wearer of the belt in order to indicate a successful tackle or “completion of effort” during the playing of the game.
US ‘403 and US ‘989 whilst not explicitly disclosing a ball carrier wearing the device, do discuss a touch football version of American Football, and explicitly incorporate the disclosure of US 2966356 amongst others by reference. US ‘989 further clearly refers to imposing a correct tackle approach to the removal of a flag. Each of these three patents are to the same patentee, P C Wilson, and the later two are variations and improvements on the original belt of US patent number 2966356.
Now turning to remaining prior art documents, US patent numbers 3251109 and 3579745. Both of these also are in the name of P C Wilson and are further improvements to the earlier US patent 2966356. As such, the disclosures made in these documents also do not specifically describe a ball carrier wearing the device, nor the removal of the indicium replacing a tackle. The disclosures are more related to the technical nature of the improvements rather than the specifics of how the device is to be used. However, both documents describe the application of the belt to the game of flag or American touch football, and describe the removal of a flag using a pulling force (in one case a constant, in the other a variable force) provided by a player in the context of the game.
Hence the “physical elements” of the cited devices match that of the invention as claimed in claim 1. However there remains a difference between the invention of claim 1 and the citations. This difference resides in the application of the claimed device to the game of Rugby League or Australian Rules Football rather than to the American game of flag football or American “touch football”.
As claim 1 allows the device to be used in either Rugby League or Australian Rules football, I will consider each application in turn when assessing the inventiveness of the claim. I note also that the games of Rugby League (and its modified version) and Australian Rules football are clearly distinguishable in terms of how and where on a person a tackle may be made, what constitutes a tackle under the rules of each game, and the effect a tackle has on the playing of the respective games.
In respect of the claimed invention when used in Rugby League, I do not believe the difference to be inventive. Applying the respective apparatus of each of the above US patents to Rugby League I believe would at once suggest itself to the person skilled in the art when faced with solving the problem of whether or not the ball carrying player has been touched. There is no practical difficulty to overcome, or inventive ingenuity required to adopt the respective devices of these citations to the claimed Rugby League application of the device. This application is in manner and purpose analogous to the known use. (Much like there would be no practical difficulties in using shin guards which are labelled as soccer shin guards, in the games of Rugby League or Australian Rules for example). The claimed invention is merely attempting to restrict a known device to a particular application without any additional inventive merit required to do so. Hence, given the limitation of its use to the game of Rugby League, I find claim 1 lacks an inventive step when compared with the above listed US patents.
In considering the alternative monopoly sought in using the device in a game of Australian Rules football, I do not believe it is appropriate for me to decide whether or not the claim, when limited in its use to Australian Rules football, is inventive or otherwise. I do not believe there is any merit in making such a decision, since in my opinion it is highly likely that any amendment to limit the claim in this way would not be allowable. To my mind, there is simply no support for such an embodiment. In particular, in my opinion there is no disclosure in the specification of any official or modified Australian Rules football game in which the removal of the indicia of the device affects the state of the game. While I note the paragraph bridging pages 5 and 5a generically labels a method for a modified game of Australian Rules football, there is no actual disclosure of any rules or game play, (unlike that provided in the description for the Rugby League or touch versions) and that this paragraph merely mimics claim 22. Consequently, I am extremely sceptical that any such amendment as proposed, would, therefore, meet the requirements of section 102. For similar reasons I am not going to determine the inventiveness of claims 22 and 23.
In reviewing the material on file, I note this issue of the allowability of embodiments reflecting the use of the device in Australian Rules football should not be of any surprise to the patentee as the issue of lack of support in the specification for such an embodiment was raised by the examiner in the first re-examination report issued on 4 December 2003.
In addition, whilst not specifically determining the novelty or inventiveness of the Australian Rules football embodiment, I note that page 2 of the specification sets out that it is common general knowledge in many types of sports to reduce or eliminate physical contact through alternative ways of halting the progress of an attacker. Having already ascertained the US patent documents, my comments made earlier in paragraph 83, apply equally to Australian Rules football as they do to Rugby League. That is, in my opinion, there is no practical difficulty to overcome, or inventive ingenuity required to adopt the respective devices of these citations to an Australian Rules football application of the device.
As a result of my findings above, I will limit my review of the remaining claims to those embodiments in which the use of the device is restricted to the game of Rugby League. In reviewing these claims, I find that claims 2-9 also lack an inventive step. The features introduced by these claims relate to physical elements, rather than the application of the device. (For example claim 2 requires the indicium be adapted for removal by hand, and claim 3 requires a belt means with the indicium removable attached). These features are obvious variations and embodiments which can be directly found in all the listed US patents respectively, with the exception of US ’224 which merely discloses the features of claims 2, 5, and 6.
US patent 3063718, published 13 November 1962 also discloses a hook and loop fastening means analogous to the of the Velcro® system. Therefore, I believe claims 10 and 11 also lack an inventive step. I do note that the location of the hook members and loop members on the respective elements of the device defined in claim 11 are exactly opposite to that disclosed. However I do not believe the swapping around of the hook and loop elements to match the claimed location to be inventive in the context of the problem.
In my opinion, the invention of claims 12-16 lack an inventive step in the light of the above patents when respectively combined with common general knowledge of the person skilled in the art. As stated earlier, a person skilled in the art would include someone with a sound knowledge of touch football (or modified Rugby League). The features added by these claims relate directly to the process and rules to be followed when participating in such games rather than the device per se, and as such, do not to my mind, contribute an inventive step to the invention as claimed.
For example, claim 12 requires that when a tackle is made by the removal of one or more indicia, “the user of the device is required to stop”. This is a direct reflection of the basic rules of touch football whereby the ball carrier, once touched by an opponent, is required to stop, return to the mark and perform a rollball. In any event, US ‘989 discloses the user stopping after having a flag removed. A similar reasoning applies to claim 15.
Claim 13 requires that “each player constitutes a user of the device such that each user makes use of a respective device. It is clearly understood that each player in these games is a potential ball carrier and therefore may be tackled. As a result, it is obvious to my mind that each player would be required to wear such a device in order to effectively address the problem. For similar reasons I believe claim 14 also lacks an inventive step.
The feature added by claim 16 does not confer an inventive step, as it is clearly disclosed in US ‘356, US‘718, US 403 and US ‘989 respectively. Each of these prior art documents describe the removal of one indium (of the two provided) to make the tackle.
Claims 17 and 18 lack an inventive step for similar reasons to those set out for claim 1. I believe the person skilled in the art would as a matter of course apply the matter described in the above US patents as a solution to the problem faced, given they address the same problem of determining whether or not a touch to complete a successful tackle has been made.
Claims 19 and 21 respectively define methods of playing Rugby League or of playing modified Rugby League using the device previously claimed in claims 1 to 11 or 17. These method claims merely define the application of the earlier claimed device, (i.e. identifying, by the removal of indicia if a tackle was successful) with the additional limitation that the user of the device be in possession of a ball. In these games, I believe it is clear to the person skilled in the art that the user, being the ball carrier is the one to whom the tackle is to be made and the one about which the problem revolves. Therefore, it is inherently understood by the person skilled in the art, given the problem, that the method to be applied, can only be to such ball carrying persons as this is where the dispute lies. I note also there is no alternate “user” in the context of the game, as only ball carriers may be tackled. Hence, I believe these claims lack an inventive step.
CONCLUSION

I do not believe it follows that the standard to be applied during re-examination automatically equates to that applied during examination, given the consideration of re-examination under section 97(2) involves the potential revocation (or partial revocation) of a granted patent, rather than acceptance (or refusal) of an application. There are clear distinctions between the two provisions, which need to be considered separately. This has led me to conclude that in proceedings before the Commissioner the relevant standard of proof required is, the civil standard sometimes referred to as the “balance of probabilities”.
I concur with the assessments made by the examiner during the re-examination of the granted claims in the light of the prior art raised by the AFL. In particular I find that claims 1-27 as granted, lack novelty and an inventive step over the US patent documents listed. I believe that the patentee has been given a reasonable opportunity to amend the specification and to be heard on this matter; therefore I see no reason not to revoke this patent on the basis of the granted claims still containing lawful grounds of objection.
In respect of the proposed amended claim set, I find the claims lack novelty if one is to interpret the use of the device in the game of Rugby League as inessential to the working of the device. However, if this feature is considered essential and limiting, then I find the claims as a whole lack an inventive step over the prior art documents raised as there is no difficulty to overcome, or inventive ingenuity required to directly apply the flag belt devices disclosed in the US patents to the game of Rugby League.
In addressing the issue of inventive step for these proposed amendments, I believe that the person skilled in the art would have been reasonably expected to ascertain the prior art documents raised. In particular, as admitted by the patentee, the hypothetical person skilled in the art would not just be restricted to a single person, but includes a broader spectrum of people having a sound knowledge of the game. As such it is not unreasonable to expect a person from this group to have searched patent literature to remain informed of events in the field, (following the notion of a diligent searcher from Dyno Nobel (supra)).
I also conclude that whilst any amendments attempting to incorporate embodiments limiting the use of the device to the game of Australian Rules football, may possibly have the potential to be novel and inventive, I cannot find any support in the specification for such subject matter as required under Subsection 40(2) of the Act. Therefore, I believe it is extremely unlikely such amendments would be allowable under the conditions set out in section 102 of the Patents Act.

100. In summary, given that the patentee has been unable to remove lawful grounds for objection, namely a lack of novelty and lack of inventive step, despite their best efforts in proposing a variety of amendments, and given that I do not believe there is patentable subject matter in the specification available to the patentee for the purposes of removing any lawful grounds of objection, I am left with no alternative but to wholly revoke this patent in accordance with section 101 of the Patents Act.
Delegate of the Commissioner of Patents
Lars Koch
Patent attorneys for the patentee : Griffith Hack, Sydney