Horizon Global Pty Ltd [2019] APO 52 - [2019] APO 52

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Horizon Global Pty Ltd [2019] APO 52
Patent Application: 2016101944

Title:Tray Assembly

Patent Applicant: Horizon Global Pty Ltd

Delegate:Greg Powell

Decision Date: 28 November 2019

Hearing Date: 30 April 2019, in Melbourne

Catchwords: PATENTS – section 101G – examiner’s objection – rooftop cargo tray – amendments filed after hearing – amendments filed during re‑examination and after hearing allowable – leave to amend granted – innovative step – whether difference contributes to the working of the invention – difference provides an advantage – patent has an innovative step – re-examination objection overcome –re‑examination concluded once amendments allowed

Representation: Counsel for the patentee: Clare Cunliffe of Counsel
Patent attorney for the patentee: Debra Tulloch, James-Robert Cram, patent attorneys of Jones Tulloch

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016101944

Title:Tray Assembly

Patent Applicant: Horizon Global Pty Ltd
Date of Decision: 28 November 2019
DECISION

The claims, as proposed to be amended, have an innovative step. I grant leave to amend.
REASONS FOR DECISION

Background

Horizon Global Pty Ltd (“the patentee”) filed innovation patent application 2016101944 on 4 November 2016. There was no priority claim. The application was granted on 17 November 2016.
On 1 December 2016 the patentee requested examination and a first adverse report issued on 2 February 2017 objecting to a lack of unity of invention and a lack of novelty. On 7 February 2017, a notice under section 28 was received from IP Solved (ANZ) Pty Ltd (“IP Solved”) asserting that at least claims 1, 2 and 5 of the patent did not comply with s18(1A)(b) of the Patents Act 1990 (“Act”) in that these claims lacked novelty and/or innovative step in light of AU 2011286169.
A response to the examination report was filed on 28 July 2017 addressing, and overcoming, the objections raised in the report and the assertions raised by IP Solved. The patent was certified on 31 July 2017.
On 7 August 2017, IP Solved filed a request under section 101G for re-examination of the certified patent. The request alleged that claims 1, 2, 4 and 5 lacked novelty in light of web pages for the Upracks Travel Roof-Racks Solutions. IP Solved asserted that it was established by the Wayback Machine ( that these pages had been published at least as early as 12 February 2013. IP Solved also asserted that claim 3 lacked an innovative step on the basis that, in light of the common general knowledge its features did not make a contribution to the working of the invention. IP Solved asserted that, if claim 3 did embody an innovative step, then the specification did not comply with s40(2)(a) as it did not disclose the invention of claim 3 in a clear enough and complete enough manner for it to be performed by a person skilled in the art. IP Solved also asserted that it followed from this that claim 3 was not fully supported.
A re-examination report issued on 2 November 2017 objecting to a lack of novelty for all claims in light of web pages for the Upracks Travel Roof-Racks Solutions. Following a second re‑examination report, the patentee filed amendments on 16 May 2019, but it was considered that the amended specification did not overcome the objections. A further three adverse re‑examination reports issued after responses filed by the patentee. The last re-examination report objected that claims 1-5 lacked an innovative step in light of web pages for the Upracks Travel Roof-Racks Solutions and noted:
“[T]he Commissioner intends to revoke this patent. If you wish to be heard, you have 1 month from the date of this report to request a hearing.”
The patentee requested to be heard on 4 January 2019. A hearing was set for 30 April 2019. On 26 April the patentee filed submissions and evidence in the form of a declaration by Paul Joseph Bingham, accompanied by exhibits PJB–1 to PJB–6.
The invention as described
The patent deals with a tray assembly for mounting to the roof of a motor vehicle. The specification noted that roof trays could be mounted to the roof of motor vehicles to transport a wide variety of cargo items. The specification noted that the known trays were generally attached to roof rack cross bars, and provided a container for items such as luggage, or a structure to mount larger items such as kayaks, surfboards, recovery tracks, or a variety of other types of equipment or vehicle accessories. It noted that a problem existed in that different cargo items were more easily attached to different types of mounting structures, and that a particular roof tray may not be the ideal mounting structure or carrier for different types of cargo. It was also noted that swapping trays to accommodate different cargo items was not ideal.
The specification noted that one solution to this problem that had been suggested was to affix mounting accessories to the roof tray, with the accessories being adapted for mounting different cargo items. However, the specification noted that not all changes or adaptations to a tray assembly could be possible. It also noted that attachment mechanisms for these accessories could vary between manufacturers, with the result that an accessory for one tray or roof rack could not be mounted to another manufacturer’s tray or roof rack. The patent sought to overcome these disadvantages.
The solution, according to the description, was to provide a tray that carried “attachment formations” which permitted components to be attached to the tray to allow different cargo items to be mounted. The attachment formations are, essentially, upward-facing T-slots in the support members of the tray that allow the enlarged portion of an attachment mechanism, such as a bolt head or a nut, to be inserted into the slot and held there. This allows a wide variety of accessories to be mounted to the tray assembly 100, in a wide variety of configurations.
Figure 1 gives a representation:
As seen in Figure 1, a roof tray assembly 100 has front and rear support members 110, and side support members 115. Slats 120 extend longitudinally, between the front and rear support members 110. Together, the support members 110, 115 and slats 120 provide a tray base. The tray base can be connected to a cross bar of a roof rack (not shown) via attachment plates 150. The top face of each of the support members includes an attachment formation in the form of an upward-facing T-slot 122. Each T-slot comprises a slot having a cavity behind it, which can receive an enlarged portion of an attachment mechanism such as a bolt head or a nut. The enlarged portion can be inserted at an end of the T-slot, or at a widened part of the slot. The enlarged portion can then be slid along the slot and secured at an appropriate position. A widened area of the slot can be seen, for example, in figure 3:
A widened area in slot 124 can be seen near the corner of the tray. In use, a bolt head, for example, could be inserted into this widened area, with the shank of the bolt projecting out through the slot, and then slid along to its desired position.
Re-examination objection
In the last re-examination report prior to the hearing, the examiner objected that the claims lacked an innovative step in light of the web pages for the Upracks Travel Roof-Racks Solutions provided under section 28. At that point, following the points raised in responses to various re-examination reports, the objection noted that the invention claimed at that point differed from the documents in that the slats supporting the load of the citation extended transversely to the outer support members, while the slats of the claim extended longitudinally. One of the figures on the web pages is:
As is clear, this rack has support members with an attachment formation. From other figures on other web pages, it is clear that the formation takes the form of an upward-facing T-slot with a widened area which allows an enlarged portion of an attachment mechanism, such as a bolt head or a nut, to be inserted and then slid to the desired position.
Amendments
Claim 1 at the start of the hearing was:
“A tray for mounting to a vehicle roof, comprising:
a tray base comprising a plurality of outer support members each having an upper face and an outward face, the outward face being around part of the perimeter of the tray base, the tray base further comprising slats extending only longitudinally between the outer support members; and
upper attachment formations located on the upper faces of the outer support members, to mechanically attach components to the respective outer support member; and
an outward attachment formation located on the outward face of at least one of the outer support members, to mechanically attach components to the outer face of the respective outer support member.”
I noted at the hearing that, notwithstanding the patentee’s position that this claim limited what was claimed to at arrangement of slats as shown, more or less, in figure 1, it did not do so. In particular I noted that:
(i)notwithstanding the use of “longitudinally”, all slats, by their very nature, extend in a longitudinal direction and this was not a meaningful limitation;
(ii)the slats of the claim were not limited to extending longitudinally with respect to the travelling direction of the vehicle they were mounted on, with the result that the claim included within its scope slats that extended side-to-side (i.e. latitudinal slats) on the vehicle with respect to its direction of travel; and
(iii)the claim did not exclude other slats forming part of the tray, such that the “checkerboard” arrangement of slats of the citation fell within the scope of the claim.
In response to my queries, the patentee filed amendments. Amended claim 1 is most relevant for this decision and is shown below, with strikethroughs and underlining indicating deletions and additions, respectively:
“A tray for mounting to a vehicle roof, comprising:
a tray base comprising a plurality of outer support members including front, rear and side outer support members (oriented relative to the vehicle), each outer support member having an upper face and an outward face, the outward face being around part of the perimeter of the tray base; and~~, the tray base further comprising~~ slats extending ~~only longitudinally~~ between the front and rear outer support members but not between the side outer support members; ~~and~~
upper attachment formations located on the upper faces of the outer support members, to mechanically attach components to the respective outer support member; and
an outward attachment formation located on the outward face of at least one of the outer support members, to mechanically attach components to the outer face of the respective outer support member.”
It is clear that these claims limit the invention to one that has the configuration shown in figure 1 above – that is, a tray which has only longitudinal slats extending generally from the front of the vehicle to towards the back of the vehicle, and no latitudinal slats extending transversely from one side to the other.
In all, there have been 2 sets of amendments filed during the re-examination process and this hearing. Proposed amendments have been filed on 16 May 2018 and 29 May 2019. During re‑examination, the examiner did not object that the amendments filed on 16 May 2019 were not allowable. I agree. With respect to the amendments filed on 29 May 2019, in my opinion, as is clear from the figures of the patent shown above, they do not add anything that was not in the specification as originally filed. As the amendments are allowable under section 102 of the Act and under Chapter 10 of the Regulations, I grant leave to amend the specification. Consequently, my decision will be limited to the claims as proposed to be amended.
Examiner’s objection
The innovation step objection of the final report before the hearing referred to three citations:
D1         UPRACKS Travel Roof-Racks Solutions <URL: Published on 12 February 2013 as per Wayback Machine
D2         UPRACKS Travel Roof-Racks Solutions <URL: Published on 12 February 2013 as per Wayback Machine
D3         63-A001 Lifting Eye <URL: > Published on 2 July 2015 as per Wayback Machine
The examiner’s objection was as follows:
“Claims 1-5 lack an innovative step in light of the disclosure of D1 (and additional citations considered to form part of D1).
With regards to claim 1, D1 discloses a tray for mounting to a vehicle roof, comprising a tray base having a plurality of outer support members (Figures of “Component table”). The outer support members have an upper face and an outward face, wherein the outward face is located on the outer perimeter of the tray base (Figure of “Models”). The outward faces of the outer support members include attachment formations configured to receive additional components for attachment thereto (Figure of “Models” & Figures of “Top Rails” and in particular the eleventh figure as an example of an additional component). Attachment formations are also shown in D2 (Fig. 1, (Top left)) and D3 (main figure).
D1 discloses that the upper faces of the outer support members have attachment formation (Figures of "Component Table" and the First Figure of "Top Rails (TR)"); also disclosed in D2 (Fig. 7 (from the top left)). D1-D3 discloses ‘attachment formations’ (D1: Figure of “Models”; D2: Fig. 1 (top left), Fig. 7 (from the top left); D3: main figure).
D1 differs from the claimed invention in that it doesn’t disclose that the slats are only extending longitudinally between the outer support members. The applicant asserts that this provides the benefit of requiring fewer components provides simpler assembly and reduces wind noise. An innovative step requires that the technical difference provides a substantial contribution to the working of the invention. Substantial contribution is in relation to the working of the invention and not the contribution that is made to the art. We agree that the 'the invention' as claimed in any claim is 'a tray for mounting to a vehicle roof'; however, when it comes to identifying the working of the invention, the tray as defined in the claims is related to supporting articles and securing them to the roof of a vehicle. Having slats only extending in one direction (longitudinal) on the roof tray does not contribute, in any significant way, to retaining objects on the roof of a vehicle and therefore does not provide an innovative step. Additionally, it is considered that having fewer slats would, in fact, compromise the strength of the assembly and subsequently compromise the working of the invention.
In the context of innovative step, a substantial contribution requires that the contribution is ‘real’ or of ‘substance’. As per the Patent Manual of Practice and Procedure sub-section 2.31.4.5.4.1, a difference between the invention and the prior art convey an advantage to the invention to meet the requirement of substantial contribution. An innovative step results from determining whether the difference between the claimed invention and the prior art make a substantial contribution to the invention as claimed in a way that is not merely superficial or peripheral to the invention. The question is not whether the absence of horizontal slats affected the use, or functionality of the tray assembly, but whether the integer contributed substantially to the development, or use, of a tray for mounting to a vehicle roof. It is for this reason, the absence of horizontal slats cannot be considered to provide a substantial contribution to the invention as claimed.
Furthermore, pages of the same website are considered to form a single source of information as the prior art was made publicly available in two or more related webpages of the same website and the relationship between the documents is such that a person skilled in the relevant art would treat them as a single source of that information.
Claim 1 lacks an innovative step in light of the disclosure of D1.
Appended claims 2-5 lack an innovative step as the additional features are disclosed in D1 (and additional citations considered to form part of D1).
D1 discloses the tray base comprising slats extending between the outer support member each of which have upper attachment formations comprising T-slots (Figure of “Models”). T-slots are further disclosed in D2 (Fig. 1 (top left), Fig. 7 (from the top left)) and D3 (main figure)).
D1 further discloses the tray base comprising four outer support members defining a substantially rectangular tray (Figure of “Models” & First Figure of “Component Table”), and each support member has upper and outward attachment formations (Figure of “Models” and Paragraph 6 of "Models").
D1 discloses the tray base further comprising attachment plates, each extending between a pair of slats, to connect the tray assembly to a roof rack (Figure under “Models” shows cross members of a roof rack attached to the tray assembly with thick plate members extending from the outer support members).
Therefore, claims 1-5 are not considered to involve an innovative step in light of the disclosure of D1.”
For brevity, I have not included any details of D2 or D3. However, all showed various webpages maintained by UPRACKS Travel Roof-Racks Solutions, and all, prima facie, appeared to refer to the same roof-rack tray. As such, the examiner had taken the three separate citations as being prior art that a person skilled in the relevant art would treat as a single source of information.
Submissions
The patentee’s submissions were focussed on three areas:
1.the citations, which had been retrieved via the Wayback Machine, could not be said to reliably be part of the prior art base;
2.even if it was accepted that the citations were part of the prior art base, then it should not be concluded that the person skilled in the relevant art would treat them as a single source of information; and
3.in any event, there is an innovative step over the prior art.
I will only be focusing on the third point as, ultimately, even if I disagree with the patentee on the first two points (which, on the balance of probabilities I would have done), it does not affect the outcome in any way.
Innovative Step – the Law
The claims of an innovation patent must involve an innovative step. Noting that this patent is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, subsection 7(4) of the Act provides that:
An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
The decision of the Full Court in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 confirmed the approach of Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 at [52]–[53], who at first instance made a clear distinction between an innovative step and an inventive step:
“There is no need to search for some particular advantage in the art to be described as an innovative step which governs consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date and ask whether the invention as claimed varies from the kinds of information set out in s7(5) in ways that make no substantial contribution to the working of the invention ...
The phrase ‘no substantial contribution to the working of the invention’ involves quite a different kind of judgement from that involved in determining whether there is an inventive step. Obviousness does not come into the issue ... Indeed the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.”

Gyles J at [61] also provided an indication as to what is encompassed by the requirement of a ‘substantial’ contribution:
“In my view the provenance of the phrase ‘make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without real difference”.
The Patent Examiner’s Manual of Practice and Procedure identifies some questions which can assist in determining whether there is an innovative step:
a)Does the difference identified between the invention and the prior art convey an advantage to the invention?
b)Does the difference provide a technical or functional contribution to the invention?
c)Is the difference a significant aspect of the operation of the invention?
The patentee also drew my attention to SNF (Australia) Pty Ltd (ACN 050 056 267) v Ciba Speciality Chemicals Water Treatments Ltd And Others [2011] FCA 452 at [194]–[197] and the appeal of this decision at SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2012] FCAFC 95 at [375]–[378].
I also note, as also pointed out by the patentee, Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179, where it was said at [177] to [181]:
“177Further, the specification does not need to expressly identify or set out the substantial contribution that any particular integer of a claim might make to the working of the invention. That is to be ascertained by the Court with or without expert assistance.
178Further, it is erroneous to assert that the test for “substantial contribution” requires establishing a difference between the prior art and the claim such that it could be characterised as an “advantage”. That is not the language of the Act. One may still have a “substantial contribution” even if the overall effect could be characterised in evaluative terms such as neutral from a particular perspective; any issue arising under s 18(1A)(c) as to utility is a separate question (see Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd at [234] per Beach J).
179Further, the assessment requires consideration of the contribution the feature would make to the working of the invention as claimed, not the contribution it would make to the prior art (Streetworx at [237]).
180Further, it is irrelevant whether the patentee has identified advantages not specifically described in the Patents or does not expressly refer to an advantage which is described in the Patents. The analysis required is whether the features in question make a substantial contribution to the working of the claimed invention, not whether the evidence as to that contribution matches the text of the patent specification (Streetworx at [238]).
181Further, a feature does not need to provide an economic benefit in order to meet the test for innovative step.”
The patentee submitted that it was apparent from these decisions that a substantial contribution did not mean an advantage over the prior art had to be achieved. They submitted that, if the claimed invention differs from the prior art information in a material way, whether that is positive, negative or neutral, it will incorporate an innovative step.
I do not disagree with this. Indeed, it is clear from the passage quoted at [23] above (c.f. “There is no need to search for some particular advantage in the art to be described as an innovative step…”) that this is so. It must be said that the guidance in the Patent Examiner’s Manual is just that – guidance. It presents some questions that can be asked in assessing whether a claimed invention possesses an innovative step. In this regard, I note that the second question asks whether there has been “a technical or functional contribution to the invention”, and the third asks whether “a significant aspect of the operation of the invention” has been affected. It is not the case that answering one of these questions in the negative means that there is no innovative step – and I did not take the examiner to be doing this. Rather, I took the examiner to be saying that there was no technical or functional contribution, or significant effect of the operation of the invention, evident, and the difference did not appear to provide an advantage. As such, an innovative step did not appear to be present.
Notwithstanding this position, the patentee submitted that, in any event, the evidence indicated that the claimed invention did have advantages over D1-D3.
Person Skilled in the Art and Common General Knowledge
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified the skilled addressee as:
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”
Mr Bingham is a Design Engineer with more than twenty years’ experience. He states (see [4] to [14] of his declaration), and I am prepared to accept, that he has substantial experience in design of automotive products, including roof rack designs. I am satisfied that he can provide comments on the common general knowledge. Mr Bingham also commented on the invention of the present application, indicating some advantages that it had over the prior art.
Advantages
The patentee submitted that the claimed invention provided two advantages:
1.The fact that it was composed of less material than the trays shown in D1-D3 meant that it was lighter, with the attendant benefit that more weight could be put on the tray before the vehicle’s roof carrying capacity was reached; and
2.The tray of D1–D3, with cross-members welded to the outer frame, meant that there were limited points of attachment to the underlying vehicle roof-rack, while the claimed invention, with its lack of cross members meant that the tray of the claimed invention was able to be adjusted forwards or backwards relative to the underlying roof-rack more freely to achieve a more even distribution of the weight along the vehicle of an otherwise uneven load.
Less weight
It is unambiguous that an article made of a certain amount of a material would have less weight than an article made with a greater amount of the same material. It would also follow that if, for example, a vehicle with a roof load capacity 150-180 kg was fitted with a roof rack that weighed 10-20 kg less than another roof rack, that vehicle could carry 10-20 kg more on the roof rack.
To my mind such an effect would fall within the scope of a difference that makes a substantial contribution to the working of the invention. However, it would also be the case that, with only longitudinal support slats and no strengthening cross-members, rigidity and strength of the tray would be reduced. Mr Bingham recognises this, and states at [42] of his declaration (when discussing D2, but it is nevertheless germane):
“… I have been asked if the tray would be lighter if I were to remove the latitudinal slats. My response to this is yes. It appears to me that it would also be possible, at least in theory, to mount the tray lower to the vehicle roof using a mounting system that affixed to the side of the perimeter frame or underside of the longitudinal slats. This would reduce rigidity and strength, but it would be possible to add strength without adding the same weight of material back in by widening the slats. Alternatively, with the latitudinal slats removed, the tray could then be used with a pair of roof racks. Two or even three roof racks would weigh less than the latitudinal slats removed, and would add strength.” (my emphasis)
As such, given the equivocal nature of Mr Bingham’s statements, it is not at all clear whether the effect would happen. Mr Bingham talks of widening the slats and adding further roof racks to prevent a loss of rigidity and strength. Widening the slats would clearly increase their size and, consequently, their weight. In addition, the use of more roof racks increases the overall weight of the article sitting on the vehicle’s roof and, therefore, decrease the amount of weight that could be carried before reaching the roof’s carrying capacity. While Mr Bingham states that three roof racks would weigh less than the latitudinal slats removed, there is no data supporting this conclusion. I also note that at [91] of his declaration, when discussing the differences between the claims and the citations, Mr Bingham states:
“Even if it were to be mounted to roof rack crossbars, the overall roof mounted tray assembly would likely be lighter than it is mounted as pictured in D1. This is because you would be removing between 3 to 7 cross members and replacing them with a reduced number of roof rack cross bars, starting with 2.” (my emphasis)
To my mind, this leaves it open to an arrangement where many more than two roof racks are used, with a corresponding increase in weight, regardless of how light the tray was. Moreover, Mr Bingham has not said what effect widening of the slats would have on weight.
As such, while this advantage could make a substantial contribution to the working of the invention, I am not satisfied that all embodiments of the invention as claimed, and as intended to be used (in accordance with Mr Bingham’s views of how this would be done) would actually achieve the advantage.
For completeness, I will note here that the claims before the examiner definitely did not embody this advantage as they did not explicitly disclaim latitudinal slats and, therefore, did not necessarily embody a weight loss.
Adjustability
I believe that it is self-evident that the tray defined in amended claim 1 does not have latitudinal slats. At [90] of his declaration, in regard to this feature, Mr Bingham states:
“the tray defined in claim 1 does not have the limitations caused by immovable latitudinal slats. For example, its mounting means and position is more flexible. It can be mounted with legs like the Upracks tray, but it can be used with roof racks, and thus mounted evenly on the roof racks or offset. It can also be adjusted similarly, forwards and backwards relative to the roof rack and mounting points. This is an advantage for carrying awkward uneven loads, so that the tray and thus weight of the load can be moved and balanced more evenly between the roof rack cross bars and thus better distributed through to the roof pillars. Locating an awkward uneven load to the centre of a vehicle will improve driving dynamics and handling stability of the vehicle. The tray in claim 1 would also be applicable to a wider range of vehicle models because of this flexibility in its mounting and fitment.”
A tray that can be placed in more positions with respect to the roof rack cross bars that it is mounted to allows for better distribution of weight. In addition, a tray that does not rely on particular mounting points is not limited to be used only with vehicle models with suitable spacing of roof rack cross-members. As such, this difference is of a character that clearly provides an advantage and a functional contribution to the invention. This difference embodies an innovative step.
By limiting the claims to trays that only have longitudinal slats, where the slats extend only in a direction that is along the length of the vehicle the tray is attached to, the claim has captured only those embodiments that achieve this advantage. Again, for completeness, I note that the claims before the examiner did not embody this advantage as they did not explicitly disclaim transverse slats and, therefore, did not necessarily embody more flexible positioning options.
It follows that claim 1 has an innovative step. As claims 2–5 are dependent on claim 1, they, too, have an innovative step.
I accept that the specification does not describe an advantage in adjustability (or, indeed, less weight) anywhere. The specification in no way identifies a problem with carrying capacity or positioning and seeks to solve it. However, as noted in Blue Gentian:
“the specification does not need to expressly identify or set out the substantial contribution that any particular integer of a claim might make to the working of the invention. That is to be ascertained by the Court with or without expert assistance.”
In the present case, I have been assisted by expert evidence which was not before the examiner.
Conclusion
The claims, as proposed to be amended, have an innovative step. It is also my opinion that the amendments are allowable and, as such, I grant leave to amend. Once the amendments have been allowed, noting that this will not occur until after the relevant opposition period has expired, re‑examination will conclude.
Greg Powell
Delegate of the Commissioner of Patents