Hood Computers Pty Limited v Online Furniture Pty Ltd & Weldun Engineering Pty Limited

[1993] APO 72

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 601055 in the name of HOOD COMPUTERS PTY LIMITED

Title:    Support Platform

Action:    Oppositions by:

ON-LINE FURNITURE PTY LTD, and

WELDUN ENGINEERING PTY LIMITED

Decision:    Issued            . 

Claims do not comply with section 40. Objections of lack of novelty, and obviousness, not sustained.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 601055 by HOOD COMPUTERS PTY LIMITED, and oppositions thereto under s.59 (Patents Act 1952) by ON-LINE FURNITURE PTY LTD, and WELDUN ENGINEERING PTY LIMITED

background

Hood Computers Pty Limited (hereafter referred to as 'Hood') filed application 601055 on 16 July 1987, as application PI3133 accompanied by a provisional specification. The application was completed on 13 July 1988 and allocated application no. 19015/88.

Two notices under s.57 of the Patents Act 1952 were filed - by F B Rice & Co, Sydney [subsequently supported by a declaration by M J Cotterill (managing director of On-Line Furniture Pty Ltd, one of the present opponents)] on 2 November 1989, E Harwood (patent attorney of Wray and Associates, Perth) on 16 November 1989, and by Graham Halford (patent attorney of Halford & Co, Sydney) on 22 January 1990.

The first examination report was issued on 1 Feb 1990. The application was subsequently accepted, with advertisement of acceptance occurring on 30 August 1990. On-Line Furniture Pty Ltd (hereafter referred to as 'On-Line') filed their notice of opposition on 20 Nov. 1990; Weldun Engineering Pty Limited (hereafter referred to as 'Weldun') filed their notice of opposition on 28 Feb. 1991.

Subsequent to both opponents serving their evidence in support, the applicant sought leave to amend the specification. In accordance with reg. 10.2(7), both opponents were afforded an opportunity to comment on those amendments. On-Line provided some comments on 14 May 1992. On 9 June 1992 Weldun advised:

"The Opposition by Weldun Engineering Pty Ltd would be withdrawn if the claims as proposed in the statement dated 12th March 1992 by the applicant, Hood Computers Pty Ltd, were allowed. The opponent would claim costs against the applicant. The need to propose amended claims is prima facie admission of the substance of the Opposition."

The amendments were advertised on 17 Sept. 1992, and subsequently allowed.

The applicant served their evidence in answer to both oppositions, on 24 November 1992.

On 25 Feb 1993, Weldun advised that it would not be serving any evidence in reply. On-Line served its evidence in reply on 24 May 1993.

The hearing of the oppositions was conducted in Sydney on 15 October 1993. Hood was represented by Mr G M Turner (patent attorney of Spruson & Ferguson, Sydney), and On-Line was represented by Mr F Schilling (patent attorney of F B Rice & Co, Sydney). Weldun did not appear, but requested an award of costs against the applicant.

By reason of s.234(3) and regulation 23.3, the opposition has proceeded essentially under the provisions of the 1952 Act and regulations - as the application was advertised accepted before the commencement of the Patents Act 1990.

Although all grounds available under s.59 were specified, the opponent argued on the grounds of s.40, novelty, and obviousness.

The Specification

Many desks for use with computer terminals and the like are provided with a portion (typically for supporting the keyboard) which can be raised or lowered with respect to the remainder of the desk. The invention relates broadly to a hinge mechanism for such a portion of a desk. The specification states:

"Known support platforms of this type provide for height adjustment of the second support surface by operating a releasable locking mechanism with one hand and simultaneously adjusting the support to the required height with the other. When the required height is attained the locking means is manipulated to lock the support in position. The need for two hands to adjust the prior art support platforms makes adjustment inconvenient and cumbersome.

"It is an object of this invention to provide a hinge for a support platform which will overcome, or at least ameliorae (sic) the above disadvantage."

Thereafter follows the consistory statement, and the description of the invention with reference to 3 diagrams. The specification concludes with 5 claims. Claim 1 is in the following terms:

"A hinge for a support platform having a first support surface and a second support surface height adjustable with respect to the first;

said hinge comprising first and second parallel arms of substantially equal constant length, each pivotally connected adjacent each end respectively with the first and second support surfaces;

said hinge including a single selectively releasable locking mechanism comprising a portion of said first arm which is releasably engaged by detent means to prevent pivotal movement of the first arm, and lock the hinge, said locking mechanism being operable whilst gripping a marginal edge of said second surface to allow single handed height adjustment thereof; and wherein said portion of said first arm includes a plurality of engagable means which are arranged at spaced locations along a curved path, which engagable means are engaged by said detent means to lock the hinge."

I note here that the last 2 clauses (after 'thereof') of the claim are not included in the consistory statement.

There are a number of aspects of the specification which require discussion, particularly in the light of the opponent's submissions. In this matter, I am guided by the rules for construction which were summarised by Sheppard J in Decor Corp v Dart Industries, 13 IPR 385. Having regard to the nature of the submissions, I here set these out in full:

"In summary, the relevant rules of construction which may be distilled from the authorities referred to are as follows:

(1)The claims define the invention which is the subject of the patent.  These must be construed according to their terms upon ordinary principles.  Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

(2)It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves.  To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

(3)Nevertheless, in approaching the task of construction, one must read the specification as a whole.

(4)In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document.  But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

(6)A patent specification should be given a purposive construction rather than a purely literal one.

(7)In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.

(8)The body, apart from the preamble, is there to instruct those skilled in the art concerned in carrying out the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.

(9)Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.

(10)If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid.  But the specification must be construed in the light of the common knowledge in the art before the priority date."

Section 40 Matters - the Claims

At the hearing the opponent submitted that the claims as amended did not comply with the requirements of section 40, for a variety of reasons. In my view there are indeed several matters of concern with respect to whether the claims comply with section 40 of the Act. There are also other matters which require consideration viz-a-viz the actual scope of the invention claimed.

1. Firstly, the first line of claim 1 states that it is directed to 'A hinge for a support platform ...' - that is, apparently to a hinge separate from any platform. However the remainder of the claim indicates otherwise. The second paragraph of the claim states that the arms of the hinge are "each pivotally connected .... with the first and second support surfaces", which seems to be a clear inference that the hinge is being claimed when attached to the support surfaces. Likewise the last paragraph of claim 1 refers to the single-handed operability of the hinge in the context of being attached to a support surface. Thus, even though Mr Turner (for the applicant) stated at the hearing that the claim was directed to the hinge in isolation, I am of the view that the claim, properly construed, defines a hinge attached to support surfaces (and not in isolation).

1. A second matter (which I raised at the hearing) concerns the relative arrangement of the arms which make up the hinge. As described and depicted, the hinge involves two arms held in a parallelogram arrangement - a well-known configuration in which the two arms are pivoted on common support brackets at each end. If the distance between the pivots on the two brackets is the same, and the distance between the pivots on the two arms is the same, the brackets remain parallel no matter the position of the hinge. The hinge as described relies on this property.

However the claim does not necessarily define this arrangement. Firstly, there is no reference to a parallelogram arrangement involving the arms - merely that the arms are parallel. Secondly, the second paragraph of the claim specifies that the arms of the hinge are pivotally connected to the support surface - and not, for example, to a common support bracket which is attached to a surface. Thirdly, although the claims define the arms as being parallel, there is nothing in the claim requiring the two arms to be co-located in the plane of movement of the hinge (as would be required by a parallelogram arrangement). The claim clearly includes an arrangement where the two arms are located in a plane perpendicular to the plane of movement of the hinge; indeed, the requirement that each arm be pivotally attached to the support surface suggests that this is the preferred interpretation of the claim.

At the hearing Mr Turner observed that none of the declarants in the proceedings had raised this interpretation of the claim - that is, he argued that the interpretation that I suggested was inconsistent with that which a person skilled in the art would place on the claim. However, I am not pursuaded by this submission; I do not know the extent to which the declarants read the description into the claims when they construed them. In my view the claim on its plain meaning, when read as part of the specification and applying a purposive construction, does not require the arms to be in a parallelogram configuration. I therefore conclude that the claim is not fairly based on the specification.

1. A third matter is that the claim provides for two 'arms' of substantially equal constant length, each pivotally connected adjacent each end. The term 'arm' is commonly used in engineering and other disciplines; in the context of the specification, I take an arm to be an elongate member of generally uniform cross-section.

I observe that, having identified an 'arm',  an integer is not part of that arm merely by being attached to it; for an integer to be taken as being part of an arm, I am of the view that it must exist in the general form of that arm. Thus, for example, a lateral attachment to an arm is not part of that arm unless it fits into the overall form of an arm. Conversely, something that falls in the general form of the arm cannot be said to be not part of that arm, unless that distinction is manifestly clear from the definition used to define the arm.

A simple inspection of the diagrams shows that one arm of the parallelogram is prima facie longer than the other - with the longer arm bearing the engageable means at the end. Furthermore, the description provides no basis for equating the portion of the longer arm that is the same as the shorter arm as being the entire 'arm' of the first arm, with the remainder being something other than the arm. As a result, I do not accept that in the invention depicted (and described) the two 'arms' are of substantially equal length. Nor is the upper arm pivotally connected adjacent both ends; the pivot at the end bearing the engageable means is not adjacent that end of the arm - rather the relevant feature is that the distance between the pivot points on each of the two arms that is substantially the same. Consequently I consider the claims (which define the arms to be of substantially equal length, and pivotally connected adjacent both ends) are not fairly based on the description.

Certain other features of claim 1 require construction:

-in the second paragraph it is stated that the arms are of "equal constant length"; however the description does not qualify the length as 'constant'. It was suggested that this implies the existence of variability of length in claim 1 - but clearly claim 1, and the dependant claims, are restricted to constant length. As the description is entirely consistent with a constant length, the claim is fairly based, and I do not think there is any lack of clarity.

-the third paragraph states that there is a releasable locking mechanism 'comprising a portion of said first arm'. I take this to mean that the locking means is generally part of the arm. It is not 'attached' to the arm; nor is it an 'extension' to the arm. The claim does not indicate where on the arm the locking means is located, and I do not consider there is anything in the specification that mandates that a particular location is required.

-The last 5 lines of the claim are not present in the consistory statement. Furthermore, the only reference in the specification to the plurality of engagable means being arranged at spaced locations "along a curved path" is in the drawings; the feature of the curved path is nowhere described in the text.

As the feature is clearly disclosed in the specification, the claim is clearly fairly based. The most that can be said is that the feature of the curved path may not be an essential feature of the invention claimed in claim 1.

-the hinge is to enable one surface to be height adjustable relative to another. Dictionary meanings of adjustable include adaptable, variable, alterable. In my view, in the context of the specification, adjustable imports an arrangement wherein the height of the surface can be changed, and the user has some element of control over the height. In this sense, I do not take the term as requiring a number of height selections; it includes, for example, a situation where there are only two height settings - provided there is some element of being able to select one or other of those settings.

The opponent additionally suggested that the claim was not fairly based on either the specification as filed, or the provisional specification, and should therefore be allocated a 'late' priority date. However the features alleged to be missing are clearly shown in the diagrams accompanying those specifications. I see no basis for according a priority date to any claim which would be later than the application date.

Section 40 matters - the description

At the hearing, the opponent spent substantial time going through the description in considerable minutia, pointing out a significant number of alleged difficulties. By way of illustration of matters raised, it was said that the reference on page 4 line 24 to reference numerals '18, 19A' should be to '18, 18A'.

I am mindful of the words of McTiernan J. in AMP v. Utilux (1971) ALJR 123 at page 128:

"Specifications very frequently contain mistakes, they also have omissions.  But, if a man skilled in the art can easily rectify the mistakes and can readily supply the omissions, the patent will not be held to be invalid."

In my view, none of the opponent's criticisms of the description relate to matters that would not be readily rectified by a person skilled in the art - indeed, the opponent apparently had no difficulty knowing what was intended, as in each case they indicated what they thought the description should state.

Consequently, although there may indeed be a number of mistakes in the description, I do not find any objection arises under section 40 from any such mistakes.

Novelty

The relevant test for novelty is the "reverse infringement test" of Meyers Taylor Pty Ltd v. Vicarr Industries Ltd, (1977) CLR 228 where Aiken J stated:

"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."

and I note that it is well known in patent law that the test for infringement requires that all essential integers of the claimed invention must be taken by the alleged infringing article.

Further, in the application of the reverse infringement test, I am mindful of the comments of Hill J in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) AIPC 91-017 at page 39543:

"It seems clear, from his Honour's judgement, that the task is to be approached by determining what are the essential integers of the prior publication and what are the essential integers of the alleged invention. If the differences between the two arises from an inessential integer, then there will have been anticipation. The mere replacement of an inessential integer by something which is a mechanical equivalent will not result in the claimed new invention being treated as novel. To that extent, the question whether the difference between the two is merely one involving a mechanical equivalent may have some bearing on the question of whether the integer in question, which is replaced by a mechanical equivalent, is inessential."

and:

"The determination of what is an essential or inessential integer of an invention will involve, where the question arises in relation to a patent specification, the interpretation of the patent itself."

Subject to the comments and interpretations I made above when considering the claims against section 40, I consider all the integers in claim 1 are essential integers of the invention.

The evidence exhibits a large number of citations, many of which were rendered irrelevant by reason of the amendment to the specification. At the hearing the opponent relied on some only of those citations. My views on the most relevant of these are as follows.

US 2919966

This specification is directed to a retractable shelf. The shelf is moved from an extended position to a position inside a cavity. It appears to only have two positions - the extended, and the retracted position. However, as discussed previously, such an arrangement is clearly height adjustable, as the user can selectively move the shelf between two different height positions. Movement is effected via a handle, which on the drawings appears to sized for single-handed operation.

The locking mechanism consists of a pivoted star attached to one of the arms, which cooperates with a specially shaped bracket to lock the shelf in the extended position. The locking mechanism is controlled by movements of the shelf.

In my view, it cannot be said that the pivoted star arrangement is "a portion of said first arm" as required by claim 1 - rather the star is attached to the arm.

Consequently, I do not think this citation anticipates the claims.

"Silvers" device

A page from a product catalogue of Howard Silvers was exhibited. The hinge of this device has a single projection on one arm, with a plurality of indentations in an adjacent supporting bracket. The pivot has a rotating handle associated with it, which when rotated enables the arm to be moved toward the bracket, with the projection engaging one of the indentations, thereby locking the device.

U. Kruger and J Cotterill both declare that they were aware of this device prior to 16 July 1987 - but there is nothing to establish when either of them actually became aware of it, nor is there any evidence establishing the date of publication of the catalogue. I am therefor not satisfied that publication of the information relied upon occurred before the priority date of the claim.

However, even if the publication date was established, the first arm does not "include a plurality of engageable means" as required by the claims. Nor can it be said, in my view that the arrangement of this device is such that it is

"operable whilst gripping a marginal edge of said second surface to allow single handed height adjustment thereof"

as required by the claim.

Consequently, I do not think this citation anticipates the claims.

AU-A-75700/87

This specification became OPI on 21 Jan 1988 - that is, after the date of filing the application and provisional specification, but before the complete specification was filed.

Uli Kruger (formerly Ulrich Kruge-Gailus, and listed as a joint inventor for this application) declares that the mechanism of 75700/87 was first sold in September 1986, and in the period up to July 1987 approximately 800 units were sold. However:

-no evidence of those sales has been provided; and

-there is no evidence to demonstrate that what was sold was in fact in accordance with this specification.

Consequently I do not consider the opponent to have discharged its onus of clearly establishing the existence of prior use (see Seiller's Application [1970] RPC 103 @ 106).

In any case, the device of that specification consists of a parallelogram arrangement of two arms (as claimed by the present claim) with locking being achieved by way of a third, variable-length arm having a ratchet-type mechanism. I do not think that it can be said that this variable-length arm is (in effect) "a portion of said first arm" by reason of its common connection with one arm to a pivot point. Nor can it be construed as being one of the "arms of substantially equal constant length" as required by the claim, as it is clearly of variable length.

Therefore (and irrespective of whether the present claim is entitled to the date of the provisional specification as its priority date), I do not find the claims anticipated by this citation.

US 2463026

This citation is a support platform for a projector. It has two parallelogram hinges (one on each side of the platform) which enable it to be raised and lowered. There is a bracket connecting the ends of the two hinges, onto which is attached a handle bearing a ratchet which engages in a slot. The mechanism allows for the platform to be selectively positioned in height.

The opponents argue that the handle and ratchet mechanism constitute the:

"locking mechanism comprising a portion of said first arm which is releasably engaged by detent means to prevent pivotal movement of the first arm"

as required by the claim. I do not agree. I do not accept that the handle and ratchet mechanism can be said to be a portion of the parallel arms of the device - absent an unacceptably strained interpretation of the claim.

Consequently, I do not think this citation anticipates the claims.

Lawn-Mower Arrangements

Much of the evidence relates to mechanisms for adjusting the height of a rotary lawn-mower vis-a-vis the ground.

The general form of the mechanism involved consists of two cranks attached at the front and rear of the lawn-mower. On one end of each crank the axis of a wheel is attached. The other end of the cranks are connected to each other by a rigid link, so that the corresponding parts of the crank are maintained parallel. The rear crank is also extended to form a handle; on one side of the handle there are a plurality of lugs, which engage with a series of holes or slots attached to the lawn-mower base.

It was argued by the opponents that all the features of the claim were present in such arrangements. They argued that the parts of the crank between the wheel axis and the point of connection to the lawn-mower constituted the arms of the claim.

It is very noteworthy that K D Fullicks (for the opponent) declares:

"the stub axles, which rotatably support the four wheels, lie in a plane which is notionally a second support surface"

as the arrangement does not appear to have a second support surface per se.

Matters relating to this 'notional' identification of a support surface are:

-the claim requires the arms to be pivotally connected to each surface. I do not accept that arms can be pivotally connected to a 'notional' surface. Furthermore, in so far as the wheels of the lawn-mower are rotatably supported on the arms, the wheels do not constitute a support surface.

-it is clear from various illustrations in evidence of the lawn-mower arrangement that the notional plane, as defined by the wheel axes, intersects the base of the lawn-mower. That is, it is apparently impossible to attach a real support surface in the location of the notional plane.

Consequently, I am not satisfied that any of the lawn-mower arrangement possess the features of the hinge of the claims.

Obviousness

The test for obviousness is whether the invention would be obvious to a person skilled in the art having regard to their common general knowledge. The matter was put as follows, with particular reference to combination patents, by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 293:

"The proper question is not whether it would have been obvious to the hypothetical addressee who was presented with an ex post facto selection of prior specifications that elements from them could be combined to produce a new product or process. It is rather whether it would have been obvious to a non-inventive skilled worker in the field to select from a possibly very large range of publications the particular combination subsequently chosen by the opponent in the glare of hindsight and also whether it would have been obvious to that worker to select the particular combination of integers from those selected publications. In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious ... The opening of a safe is easy when the combination has been already provided."

In support of the objection of lack of inventive step, the opponent relied upon the declarations of Cotterill, Kruger, Philpot, and Fullicks.

Mr Turner challenged whether Cotterill or Kruger are in fact non-inventive skilled workers in the field. The declaration of Cotterill states:

"I have been involved in the ergonomic furniture industry for computer workstations, and particularly the design and manufacture thereof for 13 years.

"I was initially employed by Interior Modular Products to design and manufacture Australia's first fully adjustable ergonomic workstation which was sold in large numbers and won an Australian Design Award. ... I started my company which designs and manufactures height adjustment mechanisms for furniture manufacturers. Some of our products are the subject of subsisting patents in Australia and overseas."

Exhibited with the declaration is Australian Patent specification 581471 which was OPI on 20/3/1986, of which he asserts he is the inventor.

The declaration of Uli Kruger (formerly Ulrich Kruge-Gailus) states:

"I am the proprietor of Adga-Industries...

"In the first half of 1986, myself and Mr U Adam designed an alternative to these known height adjustment mechanisms ... which can be seen in Australian patent application No. 75700/87. ...

"The mechanism shown in Australian patent application No 75700/87 (hereinafter referred to as "my mechanism") ...."

Australian patent application 75700/87 is exhibited, and names Uwe Adam and Uli Gailus as inventors.

Mr Turner argued that, by reason of their demonstrated inventiveness in the area of the devices of the present invention showed that Cotterill or Kruger were not "non-inventive" persons in the art. Mr Turner referred to a number of office decisions to support this contention.

Mr Schilling argued that the mere naming of a declarant as the inventor did not disqualify the declarant as a non-inventive person skilled in the art. He argued that a determination of their inventiveness was dependant upon a determination of such, as by a challenge to the validity of the patent in question.

In my view, the mere naming of a person on a patent application as an inventor is not sufficient in itself to disqualify a person as a non-inventive person in the art - as the inventiveness must relate to the field of the invention in dispute. However, if the application is in the field of the invention in dispute, I consider the naming of a person as an inventor of that patent application to be a prima facie indicator of inventive faculties in the art.

Further, the matter of declarants being non-inventive persons in the art has been considered in a number of decisions by the Commissioner over recent years. Thus, for example, it has been found:

-"In my opinion Mr. Wassilieff has disqualified himself from being considered as non-inventive because he is an inventor in the relevant art." - Allfex Intern v Leader Products 9 IPR 649, (1987) AIPC 90-420;

-"Finally, Mr Carpenter's opinions as to whether the invention was obvious bear little weight as he, being an inventor in the art concerned, clearly does not belong to the category of non-inventive skilled workers in the art which is built into the test of obviousness." - Sue v Carpenter 19 IPR 187, (1991) AIPC 90-750;

-"In the present circumstances, I think it would be difficult to classify Mr Jones, who is a Research and Development Manager, as a non-inventive skilled worker.  Even if Mr Jones were to be considered as non-inventive, I think it is quite likely that he may possess more knowledge in the art, because of the position he holds within his company, than the ordinary skilled worker." - Byrne & Davidson v Firmagroup (unreported decision on Petty Patent 538392, dated 20 Oct. 1986)

See also Clafton v Forbes 19 IPR 29, (1990) AIPC 90-709 and Braas & Co v Humes (1992) AIPC 90-906.

In the present case, both Cotterill and Kruger are named on patent specifications as inventors; and the relevant inventions are in the same field as the present invention. I do not consider it necessary to go beyond their being named as inventors and consider whether the relevant application was truly inventive - in my view their being named as an inventor is sufficient prima facie evidence of their inventiveness. It follows that neither of these declarants belong to the category of non-inventive skilled workers in the art - that is, I cannot rely upon their evidence to establish lack of inventiveness.

A third declarant is Graeme Philpot, who is the Deputy Chairman of Carmen Furniture Company. He declares he is a mechanical engineer, and has had over 14 years experience as a design engineer. He also declares that he has been managing research and development for Carmen, including design of height adjustable computer workstations for a number of years. In my view the quote from Byrne & Davidson v Firmagroup (unreported decision on Petty Patent 538392, dated 20 Oct. 1986) above is particularly apposite to Mr Philpot and the position he holds within his company. Consequently I conclude that I cannot rely upon his evidence to establish lack of inventiveness.

The fourth declarant is Keith Fullicks. He has a varied background over 50 years as a draughtsman for a variety of machines, engines etc. He had about 7 years experience in the 1960's as an industrial designer for lawn-mower manufacturers, and since 1981 has worked as a design draughtsman for Carmen Furniture Company.

Mr Turner submitted that, by reason of his varied background, Mr Fullicks was not an ordinary skilled worker in the art. He argued that the other declarants illustrated that relevant persons in the art had a long history of working only in the art - and that Fullicks' varied background rendered him out of the ordinary. I do not agree. Since I have found the other declarants do not belong to the category of non-inventive skilled workers in the art, those declarants cannot be said to be indicative of the characteristics of such a person. I am of the view that Fullicks is a relevant non-inventive skilled worker in the art, and that it is appropriate to have regard to his evidence.

The declaration by Fullicks relates essentially to the mechanisms for adjusting the height of lawn-mowers. Fullicks declares that support platforms such as that described in the application would be designed by industrial designers who would have had knowledge of the lawn-mower height adjustment mechanisms. Although I am somewhat sceptical of the suggestion that such lawn-mower mechanisms would constitute part of the common general knowledge in the art of the present invention, I am prepared to proceed on the basis of this proposition having regard to the general availability of such mechanisms.

The problem to be solved by the present invention is to provide a hinge for support surfaces with a certain functional capability. Although I have accepted that lawn-mower mechanisms might be part of the relevant common general knowledge, I do not consider that a person seeking a solution to this problem would give serious consideration to the arrangement in lawn-mowers for adjusting their cutting height. As indicated previously, the lawn-mower arrangement does not have an actual second support surface, only a notional one. I do not believe that the lawn-mower arrangement, dependant upon identification of a notional support surface, would suggest a solution to the problem. Rather, in my view the lawn-mower arrangement falls into the category of an ex post facto identification of an arrangement with many features similar to the present invention.

Consequently, I do not consider that the objection of obviousness has been made out.

Costs

The normal rule for the award of costs before the Commissioner is that costs follow the event.

In the case of the opposition by On-Line Furniture Pty Ltd, I have found the opposition successful, and I see no reason to vary the normal rule for awarding costs. I therefore award costs in respect of that opposition, against Hood Computers Pty Limited.

Weldun Engineering Pty Limited effectively took no part in their opposition subsequent to 9th June 1992 - when they notified the Commissioner that they would withdraw the opposition if certain amendments were allowed. The fact that the applicant amended the specification during the evidentiary stages is (in my view) a prima facie acknowledgement of the validity of the oppositions at that time. Accordingly I think it appropriate to award costs in the opposition by Weldun against Hood Computers Pty Limited, but only up until 9 June 1992; I make no award of costs in that opposition for any matters subsequent to that date.

Conclusion

I have found the opposition has succeeded on the grounds of non-compliance with section 40, but has failed on the grounds of novelty and obviousness.

I am of the view the defects I have identified can be overcome, and that the applicant should be given an opportunity to amend the specification. I therefore allow the applicant 60 days from the date of this decision to propose relevant amendments.

D. HERALD

Delegate of the Commissioner of Patents

Patent attorneys for the applicant    :  Spruson & Ferguson, Sydney

Patent attorneys for the first opponent :  F B Rice & Co, Sydney

Patent attorneys for the second opponent:  Halford & Co, Sydney