Francis Richard Forrest v Corex Plastics (Australia) Pty Ltd
[1999] APO 9
•12 February 1999
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 672407 in the name of Francis Richard Forrest
Title: Display Devices
Action: Opposition under s.59 by Corex Plastics (Australia) Pty Ltd
Decision: Issued .
Abstract
Omnibus claim found to lack clarity because two separate inventions appeared in the specification.
Evidence by opponent's witnesses was contradictory on what was part of the common general knowledge.
Lack of inventive step not established because no evidence was supplied on what constitutes a mechanical equivalent or workshop improvement.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 672407 by Francis Richard Forrest and s.59 opposition by Corex Plastics (Australia) Pty Ltd
BACKGROUND
Patent application 672407 was filed on 1 July 1993 by Francis Richard Forrest and was associated with provisional application PL3287 which was filed on 2 July 1992. Patent application 672407 was advertised accepted on 3 October 1996.
Corex Plastics (Australia) Pty Ltd (hereinafter Corex) filed a notice of opposition on 3 January 1997 and subsequently served its statement of grounds and particulars on 3 April 1997. Evidence in support was completed by 3 October 1997. The applicant did not serve any evidence in answer.
The matter was heard in Canberra on 23 November 1998. The applicant was not represented at the hearing. Mr Alfred Tatlock, patent attorney of A Tatlock & Associates, Melbourne, provided written submissions on behalf of the applicant prior to the hearing. Corex was represented at the hearing by Mr Peter Smith, patent attorney of Carter Smith & Beadle, Melbourne.
THE SPECIFICATION
The specification indicates that the invention relates to display devices and, in particular, to display devices having moving components.
The specification explains that the invention is particularly applicable to display devices which are made out of Corflute, which is a trade mark for a product consisting of an extruded plastic sheet having two spaced face members and parallel divisions which divide the area of the sheet into a number of parallel cells. However, corrugated cardboard may be used instead.
Prior art signs for indicating the price of particular articles have included the use of the well known numeral 8 seven segment configuration where the correct number is formed by blanking out the unwanted segments.
The major disadvantage with such signs is that the blanking of the unwanted segments has to be done with a permanent marker. This means that where the price changes, it is generally not possible to re-use the sign. Also it is normally difficult to match the marker with the background of the sign.
A similar sign with the numeral 8 configuration has been used in the past with the seven segments being die cut so that the unwanted segments can be removed. These removed portions can be lost so that price changes cannot readily be displayed by this type of sign.
The specification indicates two objects of the invention or disadvantages of the prior art which the invention overcomes viz. to provide a sign which enables the price to be readily changed and thus give the sign a long term life and to provide a sign which allows certain information on the sign to be readily changed.
A statement of the invention corresponding to claim 1 is provided followed by a number of preferred features of the invention including a display which uses the numeral 8 configuration with seven segments.
The specification also describes a second form of the invention which apparently is intended to achieve the second object of the invention which is to provide a sign which allows information to be readily changed. This second form of the invention is not separately claimed in an independent claim.
Following a detailed description of the preferred options of the invention, there are 11 claims including an omnibus claim. Claim 1 is the only independent claim, apart from the omnibus claim, and reads as follows:
1.A sign formed of a sheet of material from which there is cut out a number of components, which are so located as to be able to be inverted to present their second face, which is contrasting in appearance to the front face, whereby on correct selection of the components, a letter or numeral may be displayed, characterised by the two faces of the sheet of material being spaced by webs of material and a pivotal member passing between the faces both of the body of the sheet material and at least one of the components, the pivotal member being on an axis of symmetry of the said component.
THE STATEMENT OF GROUNDS AND PARTICULARS
The grounds of opposition listed are that the application is not for a manner of manufacture, the claims are not novel and lack an inventive step, the claims are not clear, not fairly based and do not define the invention and the specification does not describe the invention fully.
Particulars are provided in support of each of the grounds and I will refer to these as appropriate in the body of my decision. However, I note that in support of the ground of lack of novelty, the particulars refer to 4 patent specifications and one product catalogue. The particulars also refer to examples of prior use in support of the ground of lack of novelty.
EVIDENCE
The evidence in support consists of four statutory declarations. Three of those declarations have been made by people who are either currently employed by or were employed by a company called Concept Plastics Pty Ltd. They are Judy Lewis, Jeffery Alfred Ray, and Frank Joseph Prince. The fourth declarant is Dianne Barker who indicates that she is managing director of Concept Displays Pty Ltd. The Barker declaration includes one exhibit.
The declaration by Jeffery Alfred Ray is accompanied by exhibits JAR-1 to JAR-8.
On the face of it, neither Concept Plastics Pty Ltd nor Concept Displays Pty Ltd has any connection with the opponent Corex.
As I indicated previously, no evidence in answer was served.
SUBMISSIONS
Mr Smith for the opponent provided oral submissions at the hearing while Mr Tatlock for the applicant relied on written submissions filed before the hearing.
I will refer to these submissions where appropriate in the body of my decision.
DECISION
Section 40 issues
A number of matters were raised in relation to s.40 in the particulars and/or at the hearing. I think it is fair to say that a number of these issues are of a minor nature and I do not propose to consider them further.
The opponent has pointed out that the specification includes an alternative or second form of the invention which I referred to in considering the specification above. On this basis, Mr Smith argued that the specification is either unclear or the claims do not define the invention because they do not define this second form of the invention. Mr Tatlock submitted that a specification can include other material as long as it describes the invention and the claims define that invention. I agree with Mr Tatlock. The claims do not have to define the various different embodiments or even separate inventions that may be included in the body of a specification. All the applicant is required to do is ensure that the invention is fully described and that the claims define that invention. The applicant has done this. I am of the opinion that claims 1 to 10 are not invalid merely because of the second form of the invention described.
However, I have difficulty in interpreting claim 11, the omnibus claim. Claim 11 refers to a "sign substantially as hereinbefore described with reference to the accompanying drawings". In this respect, it is worded as omnibus claims normally are in patent specifications. It does not refer to a sign defined in any of claims 1 to 10. Therefore, I do not agree with Mr Tatlock's submissions that the omnibus claim defines a sign that must be generally that as claimed in the other claims of the specification and that it should not be read to be broader than the forms of the other claims.
There are a number of decided cases which deal with the interpretation of omnibus claims. For example, in Witty v. Turbon Engineering Co. Pty. Ltd., (1961) AOJP 2760, it was held that an omnibus claim containing the phrase "substantially as described in the specification with reference to the accompanying drawings" did not restrict the claim to the full representation shown in the drawings but only restricted it to the essential features of the invention as shown. It is clear from decided cases such as this, that omnibus claims, worded as the present claim 11 is, should be interpreted by determining the essential features of the described invention as they are particularised in the drawings. There is no suggestion that such omnibus claims should be interpreted in the light of other claims.
In the present case, there are two quite distinct inventions defined. The second type of sign is concerned with the use of spaced slits to locate a strip containing relevant information which can subsequently be replaced by another strip of information.
As a result, I am unable to determine which version of the sign is included within claim 11 and I thus find that claim 11 contravenes section 40 in that it is not clear.
I note here that, if I am wrong in determining that claim 11 is not clear, there is no evidence or submissions relating to the second form of the sign before me. However, to the extent that claim 11 defines the second form of the sign, I would have grave doubts as to its novelty.
Some of the other issues raised by the opponent under this ground of opposition and my comments in relation to them are:
There is an insufficient description of how to form letters as opposed to numerals.
The description and more particularly the drawings clearly describe the best method of performance of the sign in relation to numerals. The opponent has not provided any evidence that a person skilled in the art would not also be able to know how to form letters. Certainly none of the opponent's declarants have indicated any difficulty with the specification in this respect.
The term "pivotal member" does not match the equivalent feature in the description and therefore the claims do not define the invention.
The meaning would be clear to a skilled addressee which components are to move and which members form an axle around which the components can pivot. The opponent's declarants do not comment on this.
The feature, "wire" rods, is not explicitly mentioned in the application as originally filed.
I am not sure what the opponent is arguing in relation to this matter. The specification in its present form refers to wire rods and the claims which define this feature are fairly based on the specification.
The term "inverted" in the claims is not clear. It should be "rotated" or "reversed".
While Mr Smith is not necessarily a person skilled in the art, I think the fact that he was able to suggest the correct terms if, indeed, "inverted" is not the correct term would lead me to believe that a person skilled in the art would also be able to interpret "inverted" in the same way. I do not believe that the claims offend against section 40 in this respect.
There were a number of other issues raised in relation to the dependent claims which I do not propose to list.
However, I note that claims 6 and 7 contradict one another as it does not appear possible for the rod to be bent back into the same channel and an adjacent channel at the same time. I have no doubt that the person skilled in the art would also be able to appreciate this contradiction and thus would be able to determine the scope of each of these claims.
In summary, I have found that claim 11 is not clear as to which of the described inventions it is defining.
Novelty
Mr Smith argued that claim 1 at least is not novel in the light of Australian patent specification 35671/84 in the name of John Chapman.
The Chapman specification discloses a display sign including a sign board and changeable numerals consisting of seven segment figure 8 devices. The board has cut-out holes but the components are not made from the same sheet. Each segment has an axle which goes through the rotatable segment but not through the main board. The sign requires the use of inturned flanges from the sign board to hold the axle. While there is no specific disclosure or suggestion of using a sheet of material with two faces separated by a web, the sign is equipped with a backing board which is closed after the numerals are arranged to display the relevant price. This backing board ensures that the numerals are retained in their proper position.
It is generally accepted that the test for novelty is the reverse infringement test as set out by Aickin J in Meyers Taylor v Vicarr Industries (1977) CLR 228 as follows:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
In Rodi Wienenberger AG v Henry Showell [1969] RPC 367 at page 391, infringement of a claim is said to occur when "each and every one of the essential integers" of that claim have been taken.
Thus in order to decide whether or not claim 1 lacks novelty, I must determine whether or not each and every essential integer of the claim is disclosed in the Chapman specification. As I have indicated earlier, the main difference between the sign in the Chapman specification and the sign of claim 1 is that claim 1 defines a sign formed of a sheet of material whose two faces are spaced by webs with the pivotal member or axle passing between these two faces. While I am not sure that claim 1 adequately defines the Corflute material referred to in the body of the specification, it nevertheless defines a sheet of material and, despite Mr Smith's attempt to do so, it is hard to argue that this is not an essential feature of the claim as this material is a critical part of the described invention. I do not believe that it is possible to argue that the Chapman specification discloses such a sheet of material. The front board and the backing board, to my mind, do not form a sheet of material nor did Mr Smith argue this point.
Therefore, I find that claim 1 is novel the light of the Chapman specification. Claims 2 to 10 are dependent on claim 1 and I find that they also are novel in the light of the Chapman specification.
In relation to the omnibus claim 11, insofar as it is claiming the same invention as claims 1 to 10, I find that it also is novel. Insofar as claim 11 might be claiming the second form of the sign, the Chapman specification does not relate to such a sign. As I previously noted, there has been no submissions or evidence provided in relation to the second form of the sign. However, I have grave doubts about the novelty of a sign which is characterised by a strip of material the ends of which pass through slits in the sign.
Mr Smith also argued that all the claims lack novelty in the light of the Chapman specification if the test for novelty set out in Griffin v Isaacs (1938) 12 ALJ 169 is applied. This test is:
"Where variations from a device previously published consist in matters which make no substantial contribution to the working of the thing or involve no ingenuity or inventive step and the merit if any of the two things considered as inventions is the same, it is, I think, impossible to treat the difference as giving novelty."
Mr Smith argued that any differences between the claimed sign and the sign disclosed in Chapman either made no substantial contribution to the working of the sign or involved no ingenuity or inventive step particularly because Corflute material was acknowledged in the present specification as being well-known.
The decisions of the full bench of the Federal Court in Werner v Bailey Aluminium 13 IPR 513, and Nicaro Holdings v Martin Engineering 16 IPR 545, have reviewed the historical development of the law of novelty in Australia. These decisions clearly suggest that the decision of the High Court in Griffin v Isaacs, (1938) 12 ALJ 169, effectively lost its relevance upon the commencement of the 1952 Act in 1954.
However, even if I was to apply this test for novelty, I do not agree that the differences make no substantial contribution to the working of the sign. My reasoning in relation to the application of the reverse infringement test above equally applies here. With respect to whether or not any ingenuity or inventive step is involved, I do not think it follows that, just because a feature of the claim that is not disclosed in the earlier citation is known, the claimed invention then involves no ingenuity. In any case I think this aspect of the test should more appropriately be considered under the ground of lack of inventive step.
At the hearing, Mr Smith did not refer specifically to other material in support of the ground of lack of novelty.
The particulars refer to a number of other patent specifications. I have considered these and find that none of them individually disclose all the essential features of the claims.
The particulars also refer to a catalogue by Ricansa Pty Ltd. A copy of this catalogue forms one of the exhibits of the Ray declaration. It has a date of February 1989. However, there is no evidence before me to suggest when the catalogue was actually publicly available. Mr Ray suggests in his declaration that the products shown in the catalogue were well known to him and would have been well known to other competitors and customers in 1989. This does not establish the publication date of the catalogue but I am prepared to accept, since there is no contrary evidence before me, that the signs disclosed in this catalogue were publicly known before the priority date of the present claims.
The catalogue discloses signs made out of Corflute material. However there is no disclosure of the display of letters or numerals from a plurality of components as required by the present claim 1. Therefore, the Ricansa catalogue does not render the claims not novel.
On the material before me, I find that the ground of lack of novelty has not been established.
Inventive Step
This ground was the ground which was most actively argued by Mr Smith for Corex.
In support of this ground, Mr Smith relied on the Chapman specification and Australian patent specification 34011/89 in the name of Digital Indicators Pty Ltd which is particularised and exhibited to the Ray declaration. Mr Smith argued that either of these specifications considered in conjunction with the common general knowledge in the art clearly showed that the present invention lacks an inventive step.
I note here that the Digital specification discloses an array of modules, each of these rotatable modules having two different coloured faces and being pivoted on vertical portions of a "weldmesh" frame. The modules are used to form numbers and letters by suitable rotation of particular modules. The Digital specification does not refer to a sheet with two faces being spaced by web material nor does it disclose cut-out components which are defined in the present claim 1.
Mr Smith submitted that it was part of the common general knowledge in the art to use Corflute material in the preparation of display signs. Mr Smith also contended that it was common general knowledge in the art to use rods or wires to allow rotation or pivoting of parts of display signs. All that the present invention consists of, according to Mr Smith, is the sign disclosed in either Chapman or Digital with the use of Corflute and rods or wires. Such an arrangement could not be considered to possess an inventive step.
The Patents Act 1990 refers to the requirements for an invention to have an inventive step in sub-sections 7 (2) and (3) as follows:
"(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 and regarded as relevant to work in the relevant art in the patent area."
Thus, I need to consider whether the Chapman and Digital specifications would have been documents that the skilled person could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art. I need also to determine if the particular components referred to by Mr Smith were part of the common general knowledge before the priority date of the present claims. Finally, I will need to determine if the claimed invention would have been obvious to the skilled person.
There is little or no case law in relation to the question of a reasonable expectation that the skilled person could have ascertained a document, understood it and regarded it as relevant. In the present case, the invention concerns display devices having moving components to enable different numbers and letters to be displayed. Both the Chapman and Digital specifications deal with the same subject matter. I think it is a reasonable assumption to make that the skilled person would have been able to find or ascertain these specifications, understand them and would have regarded them as relevant as they also deal with display devices having moving components to enable different numbers and letters to be displayed. Therefore, I believe that the two documents satisfy the last part of sub-section 7(3).
With respect to determining the common general knowledge in this matter, I am guided by the judgement of Aickin J. in Minnesota Mining and Manufacturing Company v. Beiersdorf (Australia) Limited (1980) 144 CLR 253), in which he 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 in the 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."
In the present opposition, in relation to the use of Corflute for display signs, Mr Smith relied not only on the statutory declarations provided as evidence in support but also the fact that the applicant has referred to Corflute in the specification. I do not think that the reference to a particular material in a specification is sufficient evidence to establish that that material is part of the common general knowledge in the art. All that it establishes is that the material is known to the applicant. I also am not convinced that the fact that the name of a material is a registered trade mark (as Corflute is) establishes that the material itself is part of the common general knowledge in a particular art.
In considering the specification, I believe that the person skilled in the art would be a person skilled in manufacturing signs with moving parts. I do not believe that such a person would be restricted to manufacturing signs out of plastics material.
I now turn to the evidence.
As I have no indication to the contrary and Mr Smith asserts that at least Mr Prince is an independent declarant, I will assume that the four declarants are all independent of the opponent Corex. All declarants have extensive experience in their particular companies. However, it is worth noting that the present invention relates to display signs. Some of the declarants are employed by Concept Plastics Pty Ltd. The question I need to ask therefore is whether such people could be considered to be persons skilled in the display sign manufacturing art. The Ray declaration states that "Concept Plastics is in the business of screen printing and manufacturing display signs". Therefore, I accept that the three declarants Ray, Lewis and Prince to the extent that they were employed in Concept Plastics have had experience with a company which manufactures display signs, at least display signs made out of plastic. I have some reservations about whether these declarants can be considered to be skilled in the more general art of display signs rather than display signs made specifically of plastic material. However in relation to their ability to comment on the extent of the common general knowledge in the art, I believe that they are qualified to do so.
The fourth declarant, Dianne Barker, has been employed in a company which manufactures display signs in general. Although she indicates that for a time she was employed in that company as a salesperson selling signs rather than a person responsible for developing and manufacturing signs, I am prepared to accept that she can be considered to be a person who is skilled in the relevant art and who is qualified to comment on the extent of the common general knowledge in the art before the priority date of the opposed claims.
I will now consider what the declarations disclose.
The Lewis declaration refers to one instance where signs were made by her company using "coreflute". However, there is no specific suggestion in the declaration that this was a well known material used in the art.
The Barker declaration states:
"My company uses the sheet plastic material known as 'Coreflute' which is an extruded plastic sheet material having two closely spaced parallel sheets of plastic and are joined together by a series of parallel webs which form a series of parallel channels running between the two sheets. Coreflute is only one of many substantially identical products in the Australian market-place which has been used extensively by my company at least since 1981 in the manufacture of signage and display products."
The Barker declaration also refers to a particular type of sign manufactured by her company in about 1983 to 1984. The sign was made of Corflute material and included a wire rod passing through a cut-out portion to allow the portion to pivot. As far as I can see, there is no suggestion in the Barker declaration that this sign was part of the common general knowledge. The exhibit to the Barker declaration is a drawing depicting a sign having these features. There is no indication in the declaration of when the drawing was made.
The Prince declaration indicates that Corflute has been used for making signs since at least 1976 by companies which Mr Prince has been involved with. Paragraphs 6 and 7 of the Prince declaration read as follows:
"6.The method of manufacture used by my companys (sic) includes the screen printing of a sheet of Coreflute, followed by the die cutting thereof to produce the required shapes including interference fit apertures in the sheet followed by the insertion of wires through the channel or channels as required. The die cutting may produce a rectangular cut out with an interference fit in the aperture so formed. The rectangular portion would then be mounted in the aperture for pivotal movement on a vertical wire passed through a center channel of the cut out portion and into respective channels of the sheet body above and below the cut out portion.
7.Such manufacturing methods have been used by myself, my company and my companys (sic) in Australia since 1976 and I am aware that such manufacturing methods have been used generally in Australia by workers engaged in the sign and display manufacturing art as a matter of routine procedures using well known general knowledge and practices since about 1976."
I note that Mr Prince has had extensive experience in the manufacture of signs. Not only has he been part of Concept Plastics but also he has been involved with other sign manufacturing companies before and after his involvement with Concept Plastics. I also note that there are no exhibits to the Prince declaration. There is no documentary evidence supporting the assertions made in paragraphs 6 and 7 above.
The Ray declaration discusses the extent to which Corflute has been used in the sign manufacturing industry in the last 20 years.
Mr Ray draws attention to the fact that Concept Plastics filed a provisional application in 1978 for a cloche made of Corflute with wires passing through the channels of the Corflute to allow the cloche to retain a particular shape. This does not add to the opponent's case because the use of Corflute to make cloches cannot be said to be part of the sign manufacturing art. A couple of other points arise from this, however. It suggests that Concept Plastics is not a company which is exclusively a sign manufacturing company. It also suggests that Mr Ray, who is the inventor of this cloche, is an inventive person which may bring into question his ability to comment on what a non-inventive skilled worker would do. As it turns out, I do not believe that anything turns on either of these points.
The Ray declaration refers to a catalogue produced by a competitor. This is the Ricansa catalogue which I referred to in relation to novelty. Mr Ray argues that this catalogue discloses the use of a steel rod passing through a sign made of Corflute material to allow the sign to rotate. At the conclusion to this reference to the catalogue, Mr Ray says:
"Certainly by July 1992 I would have no doubt that the use of a rod through Coreflute material for shaping, strengthening and/or providing rotation of the Coreflute was widely known in the signage industry in Australia."
I observe that the reference to providing rotation is based on documentary evidence which discloses rotation of the whole of the sign, not specific cut-outs.
The Ray declaration also refers to a particular type of sign manufactured by his company in about 1988. This sign has the same characteristics as that referred to in the Barker declaration. Mr Ray indicates that his company no longer has any records of the sale of this sign due perhaps to the passage of time since the sign was sold. In a similar manner to the Barker declaration, there is no suggestion in the Ray declaration that this sign was part of the common general knowledge in the art. In this respect, I note that Mr Ray, in paragraph 7 of his declaration, refers to the fact that it was well known to have rods or wires inserted in the channels of Corflute material and, in the same paragraph, that it was known to have a cut-out element pivot or rotate on a rod to expose opposite sides. Mr Ray refers to the example he described of a particular sign manufactured in about 1988. I think the significance of the different wording supports my belief that the Ray declaration is not suggesting that the particular characteristics of the sign manufactured in about 1988 were so well known as to be part of the common general knowledge in the art.
In deciding what was part of the common general knowledge before the priority date of the present claims (2 July 1992), I do not have any evidence provided by the applicant so I must consider the uncontested evidence provided by the opponent's declarants.
I am of the opinion that the use of Corflute as a material to manufacture display signs was part of the common general knowledge in the art before the priority date of the present claims. This is the one piece of information that all four declarants agree on.
I note here that the four declarants, in identifying the trade mark of the plastic sheet material, refer to it as "Coreflute" or "coreflute". The present specification identifies the trade mark as "Corflute". A quick search of the Australian Trade Marks Office database reveals registered trade marks for plastic and other sheet material as "Corflute". In this decision, I refer to the material as "Corflute" except where I have quoted from the statutory declarations. I do not believe that anything turns on this conflict in spelling.
I am also convinced that the properties of Corflute material were well known including the ability to use wires or rods to allow the sign made from the Corflute material to pivot. I am of the opinion that these properties were part of the common general knowledge.
However, it is less clear cut whether or not it was part of the common general knowledge to manufacture signs from Corflute material having cut-outs which could pivot on a wire in one of the Corflute channels to display one or the other of the cut-out faces. Three of the declarants (Ms Lewis, Ms Barker and Mr Ray) all refer to signs with such features but, significantly, they do not specifically assert that such signs were part of the common general knowledge. This is contrary to the assertion in the Prince declaration that such signs were routine and well known in the art. However, as I have noted earlier, there is no documentary evidence to support this assertion by Mr Prince, a point made by Mr Tatlock in his written submissions.
There is a complete absence of documentary evidence in relation to this type of sign. (I do not consider that the drawing forming the exhibit to the Barker declaration provides any supporting evidence.) Taking this into account and the fact that three of the four declarants do not specifically identify this type of sign as being part of the common general knowledge, I believe that I must come to the conclusion that, on the evidence before me, it has not been established that this type of sign was part of the common general knowledge in the art.
Although none of the declarants deal with the issue of seven segment figure 8 displays, I believe that such displays are and were, at the priority date of the present claims, well known in many arts. I agree with Mr Smith that such displays would have been part of the common general knowledge in the art.
Having determined what the common general knowledge in the art was, I now need to determine if the claimed invention would have been obvious to the skilled person in the light of either the Chapman or Digital specifications.
In this respect, I note the following question posed in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331:
"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"
The relevant problem solved by the presently claimed invention would appear to be to provide a sign which enables the price to be readily changed thus giving the sign a "good long term life".
Faced with such a problem, I am sure that the skilled person would consider that the Chapman specification would completely solve the problem. I think the same also applies to the Digital specification. On the face of it that is the end of the matter. The skilled person would not need to proceed any further because the problem was solved. However, I need to determine if the skilled person would consider the differences between the claimed invention and the Chapman and Digital signs were mere workshop improvements or mechanical equivalents.
In relation to workshop improvements, Lockhart J. discussed the matter in Werner RD & Co v Bailey Aluminium Products Pty Ltd, (1989) 85 ALR 679 at page 698:
"Workshop improvement' is a convenient expression to encompass a mechanical improvement to an invention disclosed in a prior specification which involves no inventive quality or ingenuity."
The Ray declaration, in referring to the Chapman and Digital specifications, indicates that Corflute was well known and that signs having cut-outs and rods or wires to allow the cut-outs to pivot were known. The Ray declaration does not indicate that the person skilled in the art would have considered these features to be mechanical equivalents or workshop improvements of the features disclosed in the Chapman and Digital signs.
The Lewis and Barker declarations do not provide any further assistance on this matter. The Prince declaration does make assertions about what would be routine to a person skilled in the art. However, as I have indicated above, this is not supported by the other declarants. Therefore I am unable to say that, on the evidence before me, the skilled person would consider the differences between the Chapman and Digital specifications and the claimed invention as mere mechanical equivalents or workshop improvements.
Thus, on the evidence before me, I am unable to conclude that the claims lack an inventive step in the light of the Chapman and Digital specifications.
Although Mr Smith did not pursue an argument of lack of inventive step based on the prior public act of using the signs referred to in the declarations, I note that there is no evidence before me to suggest that a person skilled in the art would have routinely adapted those signs to incorporate seven segment figure 8 display arrangements.
I find that the ground of lack of inventive step has not been made out.
MANNER OF MANUFACTURE
Mr Smith did not actively pursue this ground. I am of the opinion that the claimed invention is a manner of manufacture.
CONCLUSION
I have found that the opponent has been unsuccessful in all grounds of its opposition save for one defect in relation to lack of compliance with section 40.
As I believe this lack of compliance with section 40 can be easily overcome, I allow the applicant 60 days from the date of this decision to propose amendments to my satisfaction which overcome this defect.
COSTS
Costs in these matters normally follow the event. As the opponent has only been successful in establishing one small part of its ground of non-compliance with section 40, I do not consider that it has been successful in this opposition. Therefore, I award costs against the opponent, Corex Plastics (Aust) Pty Ltd.
R Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : A Tatlock & Associates
Patent attorneys for the opponent : Carter Smith & Beadle
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