Henry Alexander Folley v Interlego A/S

[1983] APO 49

In the Matter of the Patents Act 1952

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In the Matter of Application No. 499118 for Letters Patent by HENRY ALEXANDER FOLLEY

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In the Matter of Opposition thereto by INTERLEGO A/S.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 499118 by Henry Alexander Folley is for an invention entitled BUILDING ELEMENT.  The application was lodged on 24 March, 1975 accompanied by a provisional specification and was advertised as accepted in the Official Journal of 5 April, 1979.  A Notice of Opposition to the grant of the patent was lodged on 4 October, 1979 by Interlego A/S.
         Hearing of the opposition took place on 3 August, 1983 in Melbourne.  The applicant was represented by Mr. J.P. Winch, patent attorney of the firm of Callinan & Associates, and the opponent was represented by Mr. A.J.F. Ward, patent attorney of the firm of Clement Hack & Co.
         The grounds stated in the Notice of Opposition are those corresponding to sub‑paragraphs (c) to (i) of the Patents Act.  At the hearing, however, it emerged that the opponent intended to rely only on grounds (g), (h) and (i) for its opposition, i.e. obviousness, lack of novelty and non‑compliance with the requirements of section 40 of the Patents Act.
The Specification
         Application No. 499118 concerns a toy building element (hereinafter referred to as the Folley building element) and more particularly is concerned

with those building elements commonly referred to as toy building blocks or toy building bricks.  Such elements are designed so as to be capable of being fixedly and separately assembled one with the other by hand, each element being retained in relation to one or more other elements by means of an interlock mechanism provided by the structural configuration of the respective elements.
         According to the complete specification there are a number of inherent disadvantages in the prior art arrangements.  It asserts:

"There have been a great number of interlocking toy building elements in the past of many varied shapes, designs, purposes, and interlocking mechanisms.  A great number used interlocking mechanisms that were, basically, a force fit.  These elements had the inherent disadvantage that, given material stretching or deformation, the elements would not interlock correctly and that their value was greatly diminished.  As a result of this inherent defect of such interlocking toy building elements there were proposed a large number of elements having varied forms of "snap" fits. These proposed elements have, in general, required complex structures and/or manufacturing methods."

The specification goes on to state:

"It is the principal object of the present invention to provide a building element, particularly an interlocking toy element, which is of a relatively simple structure and may be easily manufactured."

There follows a statement of the invention in the same terms as Claim 1 (the broadest claim), followed immediately by a description of the best method of performing the invention.
         There are seven claims in all, Claims 2 to 6 being appended either directly or indirectly to Claim 1, and Claim 7 being a conventional omnibus claim.  Claim 1 reads:

1.A toy building element adapted, in use, to be disposed in an interlocking relationship with at least one similarly configured building element, said building element including a substantially parallelepiped shaped hollow body, said body having a closed upper face, side walls, and an open lower face, said upper face having a plurality of equally spaced outwardly extending stud‑like projections provided thereon, said projections being arranged in at least one row extending longitudinally of said body, said upper face further including at least one row of a plurality of relatively equally spaced apart inwardly extending stud‑like projections extending longitudinally of said body, wherein each of the respective outwardly and inwardly extending stud‑like projections includes a cylindrically shaped body portion having a wedge‑like radially outstanding flange at the end thereof remote from said upper face, wherein said outwardly and inwardly extending projections are adapted to engage and co‑operate with respective inwardly and outwardly extending projections of at least one similarly configured element whereby to allow for interlocking of the flanges of said respective projections.

The Invention
         It appeared to be common ground between both the parties to this proceeding that the Folley building element can be regarded as being a modified form of the well known toy building block sold in Australia under the trade mark LEGO.  A LEGO brick commonly has one of its two major faces open (this face being termed the "lower" face in Claim 1), while on the other major face (termed the "upper" face in Claim 1) are present inwardly and outwardly extending cylindrical projections.  The particular dimensioning of the LEGO brick enables two such bricks to be assembled by a force‑fit interlock.
         The LEGO‑type configuration makes possible two manners of interlock between two such bricks of this type.  Firstly, an outwardly extending projection of one brick can be force‑fitted between two adjacent inwardly extending projections and the inner surface of an adjacent side face of the other brick; and, secondly, an outwardly extending projection of one brick may be force‑fitted between one inwardly extending projection and the inner surfaces of two adjacent, mutually‑perpendicular side faces of the other brick, provided, of course, that there are two such adjacent, mutually‑perpendicular, side faces suitably juxtaposed with the one inwardly extending projection.  Depending on the particular relative orientation of the respective bricks, multiple interlocking, which may or may not include both manners of interlock, may occur when two bricks are assembled together.
         I am satisfied that LEGO bricks were common general knowledge in the field of the present invention at the priority date of the specification, and the applicant willingly conceded this point.
         The development of the present invention over the prior art LEGO‑type building blocks consists of the provision on the cylindrical projections of ‑ as is defined in Claim 1 ‑ "a wedge‑like radially outstanding flange at the end thereof remote from said upper face".
The Evidence
         The evidence provided by the opponent in support of its opposition consists of three statutory declarations, of which only one, by Thomas Oliver Penman, requires close consideration.
         The Penman declaration has ten annexures.  Included in these are: a sample of a LEGO brick plus a copy of an Australian Patent Specification (No. 229550) which apparently constitutes the earliest disclosure of the LEGO brick; two examples of plastic press stud fasteners of a type commonly used in clothing applications, as, for instance, in plastic raincoats; three United Kingdom Patent Specifications (996811; 1008459 and 1321365) and one United States Specification (3566531), all of which were published in Australia before the earliest priority date of the application in suit.  The disclosure of US specification 3566531 is in fact just a consolidation of the disclosures made in UK specifications 996811 and 1008459, all three of these patents (referred to hereinafter as the Hasel Patents) being by the same person, one Heinz Hasel.
         There is also a further declaration by Mr. Penman constituting part of the evidence in reply.  This declaration incorporates as annexures Australian Patent specifications Nos. 447676 and 474044, both of which were made open to public inspection before the earliest priority date of the application in suit, and also a sample of the plastic fastening tape constituting the disclosure of those specifications.  This plastic tape is, according to the declaration, known as WAVELOK.
         At the outset of the hearing Mr. Winch questioned the eligibility of Mr. Penman to give evidence in this matter, on the basis that, firstly, he was overqualified in the sense that his extensive technical qualifications gave him expertise above and beyond that of the so‑called "unimaginative skilled technician" to which the authorities on obviousness refer and that, secondly, he lacked sufficient knowledge of patent law to be able to comment on obvious‑
ness with any authority.
The point made by Mr. Winch is undoubtedly a valid one. the proper approach to this situation is that laid down by Lord Tomlin in the case of British Celanese Ltd. v. Courtaulds Ltd., House of Lords, (1935) 52 RPC 171 at p.196 and followed recently by Franki J. in the Federal Court of Australia in the case of Dennison Manufacturing Company v. Monarch Marking Systems Inc. (unpublished). Lord Tomlin stated:

"The area of the territory in which cases of this kind an expert witness may legitimately move is not doubtful.  He is entitled to give evidence as to the state of the art at any given time.  He is entitled to explain the meaning of any technical terms used in the art.  He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to its meaning is capable of being carried into effect by a skilled worker.  He is entitled to way what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him.  He is entitled to say whether in his opinion a particular operation in connexion with the art could be carried out and generally to give any explanation required as to facts of a scientific kind. 

He is not entitled to say nor is Counsel entitled to ask him what the Specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or as a chemist.  No is he entitled to say whether any given step or alteration is obvious, that being a question for the Court."

Accordingly I intend to disregard any assertions made by Mr. Penman in relation to obviousness, lack of inventive step, etc.
Obviousness
         This is the first of the three grounds upon which the opponent based its opposition.  Essentially, it is the opponent's contention that given the common general knowledge of the LEGO brick and given the common general knowledge in the field of plastic fasteners evidenced by the plastic press‑stud fasteners and WAVELOK fastening tape of the Penman declarations, the invention defined by the claims of the application in suit is obvious.
Subsequent to the decision of the High Court of Australia in the case of Minnesota Mining and Manufacturing company and Another v. Beiersdorf (Australia) Limited, 144 CLR 253, the law in Australia in regard to obviousness has required that in order that an allegation of obviousness be made out it must be established that the information relied upon had become part of the common general knowledge, at the priority date of the application in suit, of those engaged in the particular art to which the invention belongs. In the present circumstance I am not satisfied that certain of the information relied upon by the opponent as establishing obviousness has been proven to be common general knowledge in the field of the invention in suit. The information to which I refer comprises the various forms of plastic fastener annexed to the Penman declarations. In his judgement in the case of Minnesota Mining and Manufacturing Company and Another v. Beiersdorf (Australia) Limited (supra), Aickin J. stated, at p.290:

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

So far as the two examples of press‑stud fastener are concerned it appears to be the opponent's contention, based on the evidence of Mr. Penman, that because building blocks of the LEGO and Folley type operate by use of a fastening mechanism, the common general knowledge in the field of plastic press‑stud fasteners exemplified by the Exhibits to the Penman declaration could be imputed to the toy building brick field to which the LEGO and Folley bricks belong.  Of the plastic press‑stud fasteners Mr. Penman says merely that they "they have been commercially available in Australia for many years", and that they "formed, at the priority date of the Folley application, part of my common general knowledge in the field of plastics fasteners" (emphasis added). This latter statement is of very limited value, since there is no evidence to suggest that Mr. Penman is the "non‑inventive skilled worker" in the field, or the "unimaginative skilled technician", to which the authorities on obviousness refer.  In fact the evidence before me suggests the contrary, i.e. that because of Mr. Penman's qualifications and background his common general knowledge would be more extensive than that of the hypothetical individual we are concerned with in relation to obviousness.  It is my belief that the imputation sought to be made by the opponent is not justified given what is in reality the quite diverse natures of the specific arts in question.  The "background knowledge and experience available to all in the trade" to which Aickin J. referred would, it would seem to me, be quite different in the toy building brick trade and the trades (not specified in the evidence, but clearly not the toy building brick trade) in which the plastic press‑studs in evidence are employed.  It may well be that there is a not inconsiderable degree of overlap between the respective areas of common general knowledge, but I am not able, on the basis of the evidence before me, to form a concluded view as to the specific nature of that overlap, but insofar as I can form a view, it is not one favourable to the opponent's cause.
         I would add the further observation that even if it were established that fasteners of the plastic press‑study type were part of the common general knowledge in the field of toy building blocks, I consider that this would be of doubtful benefit to the opponent in establishing obviousness.  The plastic press‑stud fasteners utilize a male‑female form of interlock with an inwardly extending lip‑like projection being located on the female member, whereas with the arrangement of this invention the interlock takes place between members having substantial identity of configuration.  Thus it would appear that in order for a person concerned to arrive at the present invention he would need to consider some modification or adaptation of these structures, this in itself perhaps being indicative of invention.
         So far as the WAVELOK plastic fastening tape is concerned, Mr. Penman says of it merely that "This fastening tape has been commercially available in Australia".  Such a statement does not suffice to establish the WAVELOK fastening tape as being part of the common general knowledge in the relevant technology at the relevant time.
         Therefore, the evidence before me is not such to enable me to conclude that the invention claimed is obvious, and I find that the opponent has not succeeded on this ground.
Novelty
         I turn now to the second of the grounds upon which the opponent opposes the grant of a patent upon this application, namely, that the invention defined by the claims of the specification in suit is not novel in light of the disclosures of the Hasel patents when there is "added to these disclosures the common general knowledge provided by the LEGO brick".
         The Hasel building element bears some marked similarities to the Folley building element.  It has the same basic configuration in that it is generally box shaped, with one face open and the remainder closed.  If the open face is considered as the lower face, then on the upper face there are present a number of outwardly extending cylindrical projections, the outer end of each of which is formed with a radially outstanding flange, in like manner to the Folley building element.  At the hearing some discussion ensued as to whether these flanges of the Hasel elements were disclosed as being wedge‑like, but I am satisfied as a result of submissions put to me by Mr. Ward that there has indeed been such a disclosure.
         However, so far as the open side interlocking mechanism configuration is concerned, the Hasel building element differs significantly from the Folley building element.  Rather than there being "at least one row of relatively equally spaced part inwardly extending stud‑like projections extending longitudinally of [the element]", such as is defined by Claim 1 of the specification in suit, the Hasel building element, according to some of its embodiments, utilizes at least one longitudinally extending interior partition wall, upon which are present longitudinally extending wedge‑like projections.  These co‑operate with longitudinally extending wedge‑like projections on the interior surfaces of the resilient side walls of the building element.  One building element is interlocked with another by forcing the wedge‑like flange of the stud‑like projections of one element between and past the co‑operating wedge‑like projections within the open face of the other building element.
The question is, therefore, whether this difference is in the nature of a novelty conferring feature. Mr. Ward submitted that if the approach was taken of adding the common general knowledge of the prior art LEGO brick to the disclosure of the Hasel patents, then it could be shown that the Hasel patent anticipated the device defined by the claims in suit. He cited as an authority for this procedure to be adopted the judgements of the High Court of Australia issued in two cases: Acme Bedstead Company Limited v. Newlands Brothers Limitd, (1937) 58 CLR 689, and Griffin v. Isaacs (1942) AOJP 739.
         The latter of these two decisions is the one upon which the present law and Office practice in relation to novelty is largely based.
         On the test enunciated by Dixon J. I am unable to view the claims defining the present invention as being devoid of novelty.  Quite clearly it cannot be said that there is no working advantage in the present invention over the prior art, since to do so would be to deny the merit of the LEGO principle itself.  Thus, in my opinion, the evidence provided by the opponent does not discharge the onus placed upon it in this type of proceeding of establishing the case which it has put forward.
         I am further persuaded in this matter by a comparative appraisal of the Folley building element and the Hasel building element.  It is an incontrovertible fact that the respective elements are of quite disparate nature both in physical configuration, and in my view, in principle of operation also.
Section 40
         I turn now to the last of the three grounds upon which it was argued for the opponent that the application in suit should not be allowed to proceed to grant, viz., that of non‑compliance with the requirements of section 40 of the Patents Act.  The submission put to me by Mr. Ward at the hearing was that "the claims offend against section 40 by making no reference to the resilience of the material".  It was Mr. Ward's contention that since there had to be some resilience in the Folley building element in at least some part of the element, the claims in suit did not define the invention by their failure to include a feature to that effect. 
         I find myself unable to accord with this point of view.  While the specification appears nowhere to contemplate the use of anything other than a resilient material and a means of assembly requiring the deformation of a portion of the building elements in order to achieve an interference fit, and while this feature appears crucial to the practical application of the invention, I am not satisfied that the claims in suit are defective for want of an explicit definition of this resilient deformability in the building element defined by the claims.  I believe that the addressee of the specification, the man skilled in the art, would, when construing the claims, understand the definition of "wedge‑like flanges" and "whereby to allow for the interlocking of the flanges of said respective projections" to impose an implicit requirement of resiliency of some portion of the structure of the building element defined by the claims.  That is to say, the resiliency is an inherent feature of the device as defined by the claims in suit.

Decision
         As I have found that the opponent has failed on all grounds, I dismiss the opposition and award costs against the opponent.

(J.L. ROVETA)