Hunter Valley Signs Pty. Limited v Bartco Traffic Equipment Pty Ltd
[2021] APO 28
•2 July 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Hunter Valley Signs Pty. Limited v Bartco Traffic Equipment Pty Ltd [2021] APO 28
Patent Application: 2016210770
Title:METHOD AND APPARATUS FOR INDICATING CONDITIONS
Patent Applicant: Bartco Traffic Equipment Pty Ltd
Opponent:Hunter Valley Signs Pty. Limited
Delegate:Xavier Gisz
Decision Date: 2 July 2021
Hearing Date: 30 March 2021, via Video Conference
Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty and inventive step – information provided by the opponent not relied upon under regulation 5.23 – claims 1 to 6, 8 to 17, 21 and 22 lack an inventive step – costs awarded
Representation: Counsel for the applicant: James Samargis
Patent attorney for the applicant: Matt Pini of Pini IP
Patent attorney for the opponent: Andrew Caska of Caska IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2016210770
Title:METHOD AND APPARATUS FOR INDICATING CONDITIONS
Patent Applicant: Bartco Traffic Equipment Pty Ltd
Date of Decision: 2 July 2021
DECISION
The invention defined in claims 1 to 6, 8 to 17, 21 and 22 lacks an inventive step in light of the Mona Vale and Glenbrook “2007” model signs.
The Applicant is given 2 months from the date of this decision to propose suitable amendments.
Costs are awarded against the Applicant.
REASONS FOR DECISION
Background
Australian patent application 2016210770 (the Application) in the name of Bartco Traffic Equipment Pty Ltd (the Applicant) was filed on 5 August 2016. The application is a divisional application of 2012250287 which claims priority from provisional application 2011904749 with a priority date of 15 November 2011.
A request for examination was made on 17 October 2016. The application was accepted on 13 November 2018 and advertised on 29 November 2018.
A Notice of Opposition was filed on 21 February 2019 by Hunter Valley Signs Pty. Limited (the Opponent). The Statement of Grounds and Particulars was filed on 20 May 2019. Evidence in Support was filed on 19 August 2019. Evidence in Answer was filed on 21 November 2019. Evidence in Reply was filed on 24 January 2020.
On 11 March 2020 the Opponent requested a stay of 3 months in the opposition on the basis that “The parties intend to enter negotiations” which was allowed.
On 15 June 2020 the Opponent requested a further stay of 3 months on the basis that:
“The parties have now entered negotiations relating to the above referenced opposition.
However, further time is required to complete the negotiations due at least in part to the impact of Covid-19.”
The further stay was allowed.
On 21 September 2020 the Opponent requested a further stay of 1 month on the basis that:
“The parties are still in negotiations relating to the above referenced opposition.
Representatives of the parties are located in Victoria and the Opponent has informed us today that the speed of the negotiations has been impacted by the Victorian lockdowns as a result of Covid-19.”
The further stay was allowed.
On 23 October 2020 the Opponent requested a further stay of 1 month on the basis that:
“The parties are still in the final stage of negotiations relating to the above referenced opposition.
Representatives of the parties are located in Victoria and the Opponent has informed us again this week that the speed of the negotiations has been impacted by the Victorian lockdowns as a result of Covid-19.”
The further stay was allowed.
On 7 December 2020 the Opponent requested a further stay of 2 months on the basis that:
“The parties are still in the final stages of negotiations relating to the above referenced opposition, with a Deed of Licence being circulated amongst the parties.
The Opponent has informed us that representatives of the Applicant are located in the United Kingdom who are impacted by Covid-19 and this has resulted in further delays in the matter.”
On 16 December 2020 the Applicant informed the Commissioner that they did not consent to the stay. On 22 December 2020 the Commissioner declined to stay the opposition.
The hearing took place via video conference on 30 March 2021.
Regulation 5.23
On 8 March 2021 the Opponent filed documents and requested that they be considered under regulation 5.23.
On 11 March 2021 a delegate informed the parties that there was insufficient time before the hearing to resolve the question of whether the information would be considered under regulation 5.23. The Delegate informed the parties that submissions about whether the information would be considered under regulation 5.23 could be made together with the written submissions and at the hearing.
The regulation 5.23 matter was discussed at the hearing. Following the hearing on 13 April 2021 I wrote to the parties informing them that the information was not likely to be determinative of the opposition, and thus would not be relied upon under regulation 5.23.
Applicable Law
The Application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Thus, the standard of proof that applies in the present case is the balance of probabilities.
Evidence
Evidence in Support comprises:
·Declaration of Brett Watson dated 18 August 2019 accompanied by exhibits A to W
·Declaration of Stephen Faith dated 19 August 2019 accompanied by exhibits A to O
Evidence in Answer comprises:
·Declaration of Troy Raymond Wollard dated 21 November 2019
·Declaration of Matthew Pini dated 21 November 2019 accompanied by exhibit MBP-1
Evidence in Reply comprises:
·Declaration of Andrew Caska dated 21 January 2020
Brett Watson is the managing director of Hunter Valley Signs Pty. Limited and has held this position since 1983. Hunter Valley Signs Pty. Limited has been involved in the design, manufacture, installation and maintenance of flashing LED (Light Emitting Diode) signage since 1998.
Stephen Faith owned the business Faith Engineering over the period of 1991 and 2014. During that period Mr Faith designed, manufactured, and sold systems relating to smart or autonomous signs.
Troy Wollard is the managing director of Bartco Traffic Equipment Pty Ltd and has been involved in the management and monitoring of traffic since 1995.
Matthew Pini has been a registered patent attorney since 2004. Andrew Caska has been a registered patent attorney since 2001.
Mr Watson, Mr Faith and Mr Wollard each has a significant amount of experience in the field of electronic signage. The evidence they have provided is carefully considered to resolve the issues raised in the opposition.
Grounds of Opposition
The Statement of Grounds and Particulars pertains to the grounds of novelty and inventive step.
The specification
The invention relates to an automated sign for indicating environmental conditions, for example, a fire danger warning sign. The invention is exemplified in figures 1 and 3:
The corresponding description states at paragraphs 46 to 49:
“[0046] Figures 1 to 3 show a warning sign in accordance with a first embodiment of the present invention. In use, the warning sign conveys status of a condition. In this embodiment, the warning sign is in the form of a fire danger rating sign 10, and the condition is the fire danger rating. Thus, the sign 10 is arranged to convey a current fire danger rating.
[0047] The sign 10 has a plurality of sections that are permanently visible. Each section represents a level of the condition. In this embodiment, the board 12 displays six distinct fire danger ratings, and thus there are six sections. These include a first section 14a, which represents a "Low - Moderate" rating - the lowest of all the ratings that is to be conveyed by the sign 10; and a second section 14b, which represents a "Code Red" rating - the highest of all the ratings that is to be conveyed by the sign 10.
[0048] The sign 10 also has four intermediate sections 14c, 14d, 14e, 14f that respectively represent fire ratings "High", "Very High", "Severe", and "Extreme". The sections are hereinafter referred to collectively as " sections 14".
[0049] The sign 10 further has a plurality of illuminated regions 16a, 16b 16c, 16d, 16e, 16f (hereinafter referred to collectively as "illuminated regions 16"), that are each associated with a respective one of the sections 14. Each of the illuminated regions 16 has a respective light source 18a, 18b 18c, 18d, 18e, 18f (hereinafter referred to collectively as "light sources 18").”
Claims
The specification ends with 23 claims; 3 independent claims and 20 dependent claims. The independent claims are as follows:
Claim 1:
An automated sign for indicating environmental conditions comprising a segmented conditions rating scale physically disposed on a substrate for public display wherein an illuminated display panel is operatively associated with each segment of the segmented conditions rating scale, whereby the illuminated display panels are controlled to illuminate one display panel at any one time so as to indicate by way of a selected segment environmental conditions in accordance with a received communications signal comprising prevailing environmental conditions and each of the illuminated display panels are adapted to be visible and distinguishable from each other illuminated display panel by one or a combination of: each illuminated display panel comprising an array of high intensity light emitting elements;
the light emitting elements having distinguishable colours for each illuminated display panel; the disposition of each illuminated display panel of the sign.
Claim 9:
A sign for conveying status of an environmental condition, the sign comprising: a plurality of sections that are segmented and spaced with respect to each other and that are permanently visible, each segmented and spaced section representing a level of status of the environmental condition; and
a plurality of illuminated regions that are each operatively associated with a respective section, each illuminated region having a light source, whereby, in use, the light sources are controlled, in accordance with a received communications signal comprising prevailing environmental conditions, to be selectively illuminated one illuminated region at any one time such that the illuminated regions and sections together convey a visual indication of a selected status level of the environmental condition and where each illuminated region in operative association with its respective section is adapted to be visible and distinguishable from each other illuminated region in operative association with its respective section by one or a combination of: each illuminated region comprising an array of high intensity light emitting elements; the light emitting elements having distinguishable colours for each section; the disposition of each illuminated region on the sign.
Claim 23:
A warning sign for conveying status of an environmental condition, the sign comprising: a plurality of light sources whereby each of the plurality of light sources is operatively associated with one of a plurality of segments of a segmented condition rating scale physically disposed on a substrate for public display wherein in combination the light sources and their operatively associated segments are adapted to be selectively illuminated one segment illuminated at any one time for displaying a plurality of distinct status levels of the environmental condition; an electronic control system for controlling illumination of the light sources; and
at least one sensor that detects an observable environmental condition, and which is in communication with the electronic control system; wherein the electronic control system automatically changes the status condition displayed by the light sources in response to a predetermined change in the environmental condition detected by the sensor and each of the plurality of segments are adapted to be visible and distinguishable from each other by one or a combination of: each of the plurality of light sources comprising an array of high intensity light emitting elements; the light emitting elements having distinguishable colours for each respective segment; the disposition of each segment on the sign.
Novelty
Novelty Legal Principles
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:
“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”.
Whole of contents
The definition of “prior art base” given in Schedule 1 of the Act is:
"prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.
Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.
Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.
AU2012201396
The Opponent asserts that the claimed invention lacks novelty in light of AU2012201396. AU2012201396 contains the following disclosure at paragraph 51:
“To improve the effectiveness and/or visibility of sign 10 (or scale 16), particularly at night or at times during which light conditions are poor, as can be seen in Figure 1, sign 10 may also include additional lighting components. For example, each of segments 16.1 to 16.6 of scale 16 may include at least one LED segment light 18.1 to 18.6 for illuminating a respective segment 16.1 to 16.6 corresponding to the position of needle 14. This illumination of a segment 16.1 to 16.6 serves as an additional means for passing motorists, etc., to easily determine the position of needle 14, and hence the relative fire danger level. As can be seen in Figure 3, LED segment lights 18.1 to 18.6 are preferably coupled to outputs 206.4 to 206.9 of PLC 204, and are illuminated when required by the detection of the position of indicator needle 14 by a respective proximity sensor 17.1 to 17.6 coupled to PLC inputs 204.1 to 204.6. In a preferred form, each of LED segment lights 18.1 to 18.6 may be coloured to suit the colour of segments 16.1 to 16.6 of scale 16. For example, segments 16.5 ("extreme") and 16.6 ("code red") may each be coloured red, hence each of LED segment lights 18.5 and 18.6 may be red LED lights (or have red diffusers associated therewith) to correspond to those red segment colours 16.5, 16.6. Similarly, green, blue, yellow and orange colours may apply to segments 16.1 to 16.4, respectively, meaning matched coloured LED segment lights 18.1 to 18.4 (or diffusers, etc.) could be provided if desired. Sign 10 may also include a plurality of display surface illumination lights 21 (Figure 1), such as, for example, suitable white or clear LED lights 21. Display surface illumination lights 21 are preferably coupled to output 206.3 of PLC 204 and may be illuminated: at all times; at times when light conditions are poor or at night; or at selected times as instructed by server or client computer systems 110, 120.”
The LED segments 18.1 to 18.6 are the key feature which prima facie anticipates the claimed invention.
Can AU2012201396 be treated as a “whole of contents” document?
AU2012201396 was published on 9 May 2013 which is after the priority date of the presently opposed application of 15 November 2011. However AU2012201396 is based on provisional patent application 2011904416 which was filed on (and has a priority date of) 26 October 2011. Thus AU2012201396 can potentially be used as a “whole of contents” document.
Provisional application 2011904416 does not disclose lights in each segment and instead only discloses LEDs to display text messages, for example at page 9 lines 15 to 16 the LED message is “CODE RED: evacuate area immediately”. Thus any notional claim to light emitting elements which illuminate segments of the sign would not benefit from the earlier priority date and thus does not meet the criteria for “prior art base” (b)(ii)(A) and cannot be used as a “whole of contents” novelty document. Consequently, the claimed invention is novel in light of AU2012201396.
Prior use
The Opponent raised three examples of prior use:
·Mona Vale “2007” model
·Glenbrook “2007” model
·Glenbrook “2009” model
The definition of “prior art base” provided in Schedule 1 of the Patents Act includes “information made publicly available through doing an act, whether in or out of the patent area”. The concept of information being made “publicly available” was explored by the Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 and summarised at [124]:
·The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)
·It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial S.A. v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).
·The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31 (Merck) at [98]–[103]).
·In order to be "available", information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593–594).
·In order to be "available", information said to destroy novelty must "enable" the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster Cylinders Pty Ltd v Marks [1996] FCA 1544; (1996) 66 FCR 577 at 581–582).
The level of proof required was discussed by Besanko J in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]- [200]:
“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
Besanko J continued at [202]:
“In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.”
Mona Vale Road Sign “2007” model – MV10
The Opponent states in their submissions:
“MV10 Sign - A “2007” model Mona Vale Road Sign referred to in the Declaration of Mr Brett Watson dated 18 August 2019 as the MV10 sign, and shown in Exhibits O and P. Exhibit N provides the relevant invoices dated 29 October 2007, and 25 March 2008. The sign being installed by 21 July 2008 with the photograph shown in exhibits O and P having meta data showing its date of 28 August 2008, the original photograph and meta-data being provided as Exhibits O-A and O-B with a second Declaration of Mr Brett Watson dated 8 March 2021. The same photograph was provided as part of a Tender to Rural Fire Services NSW dated September 2009 provided in Exhibit S referred to in the Declaration of Mr Brett Watson dated 18 August 2019.”
Exhibit O contains the following photograph:
Exhibit P has the following annotated photographs:
Though not visible in the photograph in exhibit O, the photographs in exhibit P show that the sign can display the illuminated text “TOTAL FIRE BAN”. Another thing that is barely visible in the photographs is that each segment has its own illuminated arrow.
Glenbrook “2007” model – GB07
The Opponent states in their submissions:
“GB07 Sign – A “2007” model sign was installed on the Great Western HWY Glenbrook in 2007 and a photograph of this sign is shown in Exhibit M referred to in the Declaration of Mr Brett Watson dated 18 August 2019 in which the photograph is time stamped January 2010. This sign is same model as the MV 10 sign. The provided link in Exhibit M referred to in the Declaration of Mr Brett Watson dated 18 August 2019 to Google Maps may be followed and time stamped images of this sign may be inspected. Further links and photos are provided in Exhibit M-A with a second Declaration of Mr Brett Watson dated 8 March 2021.”
Exhibit M shows the following in the 2010 image:
I am satisfied by the evidence that the Glenbrook “2007” model was installed on the Great Western Highway before the priority date.
Glenbrook “2009” model – GB10
The Opponent states:
“GB210 Sign – A “2009” model sign was installed on the Great Western HWY Glenbrook to replace the 2007 model and Exhibit Q referred to in the Declaration of Mr Brett Watson dated 18 August 2019 provides the relevant invoice dated 30 September 2009 for this “LED ELECTRONIC FIRE SAFETY SIGN” and its installation, and Exhibit R referred to in the Declaration of Mr Brett Watson dated 18 August 2019 provides an image of the sign and feature description of the 2009 model that was installed at the Great Western Highway, Glenbrook, Blue Mountains, New South Wales, Australia in about late 2009. The sign as installed in 2009 may still be inspected today and photographs of the sign as installed in 2009 are provided in Exhibit T. Exhibit M referred to in the Declaration of Mr Brett Watson dated 18 August 2019 provide a link in which the 2009 installed sign can be inspected via Google Maps.”
Exhibit T contains the following photographs:
Google Street view of the Glenbrook road sign
I have opened the Google Street View link provided in Exhibit M at the following URL:
>
Google Street View allows the user to look through the history of street view photos.
This section of the road has the following history in Google Street View:
January 2008
December 2009
January 2010
June 2014It is notable that the street view image taken in January 2010 contains the same electronic sign as the street view taken in January and December 2008.
It is not until the street view taken in June 2014 does the “2009” model sign appear with its distinctive solar panel perpendicular to the sign and antenna.
Here are two screen shots I have taken from January 2010 and June 2014 to show the difference:
January 2010:
June 2014:
Thus I do not accept the assertion that the “2009” was installed in 2009. From the Google Street Views history it is clear that the “2009” model was installed at some time after January 2010 (but before June 2014).
Although it is plausible that the sign was installed at some time between January 2010 and the priority date of 15 November 2011, it is equally plausible that the sign was installed at some time after the priority date of 15 November 2011.
Consequently, I do not accept that the Glenbrook “2009” sign was installed before the priority date.
What is actually disclosed by the Mona Vale sign and the Glenbrook “2007” model signs?
I have found the Mona Vale sign and the Glenbrook “2007” model signs were installed before the priority date. The exterior of the signs was visible to members of the public. The question is which features of the claimed invention were apparent to the public.
The only claimed feature not immediately apparent in the road signs is how the LED segments are changed. There are at least three possibilities: the sign is controlled locally (by an operation panel in the sign), the sign is controlled remotely (by cable or radio signal), or the sign changes itself based on sensors (e.g. temperature, humidity etc.).
A feature can only be considered inherent if it is necessarily present. Neither of the “2007” Mona Vale sign in Brett Watson Exhibit O nor the “2007” Glenbrook sign in exhibit M show an antenna or anything else to indicate that the sign has remote communication capabilities. Thus I am not satisfied that this feature is inherent.
The photo of the Glenbrook “2009” model is shown in Brett Watson Exhibits Q and T shows what appears to be an antenna. However, I have found that this is not established as being installed before the priority date and thus is not considered a prior use.
The claims are novel in light of the prior use of the “2007” model Mona Vale and Glenbrook roadside signs.
Inventive step
Inventive step legal principles
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:
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 (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
Subsection (3) prescribes the information that may be considered as:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act.
Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
I have found that the Mona Vale and “2007” Glenbrook road signs disclose all the features of the claimed invention except for receiving a communication signal.
I also found that there are at least three possible ways the sign would change its state: local change by an operator, remote change by an operator, or by sensors. When faced with the problem of how to operate such a sign, a person skilled in the art would consider all three possibilities.
Was the remote operation of environment condition signs known before the priority date?
Brett Watson’s declaration asserts that signs which change on the basis of remote communication were known before the priority date. Mr Watson states at the last paragraph of page 3 of his declaration:
“It is my opinion, as I will further detail below, that the Common General Knowledge of a person skilled in the art (such as a signage designer or engineer) in Australia at or prior to 15 November 2011 included at least knowledge of, but not limited to, the use of LED lights on a sign and remotely controlling these LED lights, such as by a local or remote control, for example, a webserver to provide various indicator functions in connection with printed or other indications displayed on a sign along with receiving signals from a range of local sensors.”
Mr Watson states at the first two paragraphs of page 7:
“Another aspect that I consider to part of the Common General Knowledge in Australia prior to 15 November 2011, includes the illumination of signage, such as by LED lights, and the selective local or remote control of this illumination such as by a communication means.
In this regard, the use of wireless communication to control lights such as use of a GSM (2G/3G) signal or a webserver-based system were in common use prior to 15 November 2011 and any person skilled in the art would have been aware of these system as may [sic] road side signs had some level of automation and control such as traffic signal and warning signs.”
I note that Mr Watson’s assertions that remote operation of environment condition signs was publicly known is uncontroverted in the evidence. Mr Wollard’s evidence discusses the existence of electronic road signs, however does not address whether these signs were remotely operated.
I am satisfied that the concept of remotely controlled fire safety signs was known to a person skilled in the art before the priority date. I am further satisfied that the concept of remotely controlled environment condition signs was common general knowledge.
Would a person skilled in the art modify the inventions of the Mona Vale and “2007” Glenbrook signs such that they were remotely operated?
The benefits of remote operation of an environment condition sign are clear: a) the sign can be changed almost instantaneously and without the need for travelling to each sign to change its status, and b) the sign can be centrally controlled and not reliant upon the sensor (which could have anomalous or erroneous data) at each sign. Given that remotely operated fire safety signs were known, I consider that a person skilled in the art would, as a matter of routine, modify the disclosure of the “2007” model Mona Vale and Glenbrook signs such that the signs were operated remotely.
Claim 1 lacks an inventive step in light of the Mona Vale and Glenbrook “2007” model signs.
Other independent claims and the dependent claims
Claim 2
The sign as claimed in claim 1 further comprising a variable message display for conveying variable messages carried by the received communications signal.
The Opponent states in their submissions at paragraphs 65 to 67:
“As set out in the Declaration for Mr Brett Watson, the prior Hi-Vis Fire Signs, namely the Mona Vale Road Sign MV10 of Exhibit P, included a variable message display in MV22 that was able to be chosen at the time of purchase with the NSW Rural Fire Service selecting “TOTAL FIRE BAN” to be activated when the received communications signal was issued to the sign and MV16b “Extreme” was activated.
The prior Hi-Vis Fire Signs, namely the Glenbrook Sign GB210 of Exhibit R, included a variable message display in GB22 that utilised variable messages and was adjusted when a received communications signal was provided and provides a range of variable messages depending on the signal received for the environmental conditions.
In view of the above, each of the prior Hi-Vis Fire signs includes all of the essential feature of claim 2 of the Bartco application Application in both MV10 of Exhibit P and GB210 of Exhibit R. Therefore, claims 2 is submitted to lack novelty.”
I have previously found that the Glenbrook “2009” model sign was not installed before the priority date. Thus the variable message in the Glenbrook “2009” model sign cannot be used as prior art.
The Mona Vale “2007” model sign has single activatable message “TOTAL FIRE BAN”. However, I do not consider this to be a variable message. Although it could be argued that turning a message on and off is variable, I consider this to be an unreasonably broad interpretation. I consider that a variable message is a message that can switch between at least two different messages.
Mr Watson provides evidence that variable message signs were known at the priority date, however this is based on his interpretation that a message that can be merely turned on and off is a variable message sign. This is contrary to the interpretation that I have adopted that a variable message sign must be able to display at least two distinct messages.
Mr Watson and Mr Faith each note that the Glenbrook “2009” model (as shown in the photographs in Exhibit T) shows a variable message sign. Although the Glenbrook “2009” model does indeed appear to disclose a variable message sign (that can display at least two distinct messages), I have previously found that the Glenbrook “2009” model cannot be considered prior art (or prior use) since the date which it was made public has not been established as being before the priority date.
I consider that it is uncontroversial to assert that variable message signs to provide messages to traffic were common general knowledge before the priority date. There is no evidence to show that a variable message display would be used in conjunction with a segmented environmental condition sign. A variable message sign in addition to a segmented environmental condition sign is clearly beneficial since it can provide information to the viewer about the environmental condition in a second format (in addition to the segmented scale display). Providing the information in multiple ways to traffic can be helpful particularly since drivers cannot devote too much time to interpreting information on signs. I consider that a person skilled in the art would, as a matter of routine, modify the Mona Vale and Glenbrook “2007” model signs such that they included a variable message display rather than the single message display.
Consequently, I consider that claim 2 lacks an inventive step in light of the Mona Vale and Glenbrook “2007” model signs.
Claim 3
The sign as claimed in claim 1 wherein one or a combination of each of the illuminated display panels and each of the segments comprises a different colour and size increasing with corresponding levels associated with the conditions rating scale.
The Opponent states in their submissions at paragraphs 166 to 168:
“The prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each disclose segments of differing colour. However, the segments do not increase in size. The problem addressed by making the segments larger is to highlight to a viewer that the risk is increasing. It is submitted that such as change on layout is a simple design variation applied to MV10 Sign, GB07 Sign, GB210 Sign that any person skilled in art would be able to routinely try and without any technical difficulty being overcome. As such, it is submitted that claim 3 is obvious in view of the prior art signs in the light of common general knowledge.
Further, as aforesaid, and the format of such signs, such as having a larger and separated “catastrophic” segment was a feature specified by the Victorian CFA (as indicated in the background of the Bartco specification) and thus any person skilled in the art would have been able to make these routine type design changed to the layout of the sign. This is why the Adco patent also discloses a similar arrangement of segments with changing sizes – as such, the arrangement or separation of segments cannot be considered to provide an inventive step. The Declarations of Mr Brett Watson and Mr Stephen Faith support this position.
As such, it is submitted that claim 3 lacks an inventive step.”
Mr Watson states in his declaration at page 11 that increasing the segment sizes would be a routine variation. I consider that adjusting the sizes of segments to improve visibility would be a routine variation that a person skilled in the art would be expected to make. Consequently claim 3 lacks an inventive step in light of Mona Vale and Glenbrook “2007” model signs.
Claim 4
A system for indicating environmental conditions comprising: at least one sign as claimed in claim 1, 2 or 3; and a web server comprising processor means adapted to operate in accordance with a predetermined instruction set, said web server, in conjunction with said instruction set, being adapted to transceiver communications signals comprising information corresponding to prevailing environmental conditions with the at least one sign via a modem located proximate the at least one sign.
The Opponent states in their submissions at paragraphs 169 to 171:
“As set out in the Declarations of Mr Stephen Faith and Mr Brett Watson each of the prior signs (MV10 Sign, GB07 Sign, GB210 Sign) were designed to operate with a web server to allow a control signal relating to the environmental conditions, in this case a fire rating, to be sent between the web server and the sign. However, the NSW RFS decided to use a pager type system at the time for the control due to concerns over mobile phone tower reliability.
At the priority date web servers and modems were known as a common means to communicate a sign with a remote control system and would have been part of the stock knowledge of a person skilled in the art. There is no substantive difficulty in changing a pager system to a web server based system that would require inventive effort. Rather, use of a web server and modem based communication is an obvious choice that would be arrived at by the person skilled in the art routine steps along, and would certainly have been “obvious” to try when determining the different available control systems and means of communication. Further, in any event, it is likely that use of a webserver system in this situation was a requirement of the customer the Victoria CFA.
Accordingly, it is submitted that communicating the sign with a webserver using a modem is simply a design choice of the implementation and often dictated by the end user. As such, it is submitted that claim 4 lacks an inventive step.”
Mr Watson states that electronic signs which are remotely controlled by a web server were known before the priority date at pages 2 and 3 of his declaration:
“Examples of a range of different signs that have been designed and manufactured in Australia in order to communicate particularly important visual safety messages, include: school zone signs (remotely programmable by wireless network and controller by a web server) for NSW and QLD, Flashing Fire Danger indicator signs (NSW RFS), Flashing work zone signs (civil construction industry), Flashing “reduce speed” signs (civil construction and mining industry), Flashing pedestrian crossing signs (Fox studios, shopping centres, etc), Blast board signage (explosives warning signs, mining industry), LED dashboard panels (rail industry), LED arrow boards (traffic control industry) and it is noted that “all” of these examples were manufactured, sold and installed, and therefore publicly available in Australia prior to September 2011 as set out the Exhibit D.”
“The Flashing School Sign included, amongst other features, a display panel having text (in this case the speed limited “40”) with a series of LED (Light Emitting Diodes) lights that are controlled by a microprocessor and powered by a battery chargeable via a solar panel. The Flashing School signs were remotely controlled by a web server with the details of the web server access provided in Exhibit H.”
“The design, manufacture and sale of the Flashing School Sign in 2007 / 2008 clearly shows in my view that the base technology for smart or automated signs with various types of lights, control and communication with a webserver was well known in Australia since at least 2006 and certainly well before 15 November 2011, which I note is the priority date of the subject Patent Application no. 2016210770 (“The Bartco Patent Application”).”
This evidence in uncontroverted and so I am inclined to accept it. I consider that a person skilled in the art would, as a matter of routine, modify the Mona Vale and Glenbrook “2007” model signs such that they are controlled by a webserver as defined in claim 4. Consequently claim 4 lacks an inventive step.
Claim 5
The system as claimed in claim 4, wherein the at least one sign comprises at least one sensor for collecting one or a combination of meteorological, visual and diagnostic information.
The Opponent states in their submissions at paragraphs 172 to 174:
“As set out in the Declarations of Mr Brett Watson and Mr Stephen Faith, the prior art sign GB210 Sign utilises an electronic control system GB52 with one sensor that detects the observable condition ambient light GB48 and the electronic system then automatically changes the light intensity of the sign GB210. Furthermore, it is noted that sensors used in relation to road signs to change a status of the sign are well-known, and example of such signs include black ice detection signs that indicate black ice based on input from a temperature sensor.
Referring to the Declaration of Mr Brett Watson, Exhibit L details how the sensors detect ice and then activates advisory signs along with communicating via a web server to VicRoads. Exhibit J is the Manildra Vehicle Activated Warning sign that uses a sensor in the road to activate the signs when vehicles are entering the road and the public needs to prepare to stop. Each of these signs automatically change the status condition conveyed by the sign based on a predetermined change in the condition detected by the sensor.
Accordingly, it is submitted that such sensors are known and part of common general knowledge. Further, there is no difficulty or ingenuity required to add such a sensor to a sign, such as the prior Hi-Vis signs. As such, it is submitted that claim 5 lacks an inventive step.”
Mr Watson states at pages 3 and 6:
“The Australian Road Authorities throughout Australia, in about 2005, utilised sensors to assess the environmental conditions and then send wireless signals to Automated Warning Signs that would activate upon exceeding the acceptable environmental conditions. A common, and publicly available, example of this is the Black Ice Warning systems that utilise a combination of temperature sensors and skid resistance sensors that then activate warning signs in the area. Exhibit L details an internet article in 2010 from one of our competitors Vaisala that implemented their first Black Ice Automated warning system in 1989 and in 2008 installed a series of Automated Advisory Black Ice Warning Systems on the operations of Black Ice warning systems with environmental sensors.”
“In early 2011, Hi-Vis sold an automated vehicle warning sign that incorporates a sensor in the road activated when vehicles cross and then wireless communication to dual warning signs in the area. Exhibit I and J details the associated invoice and sign photographs which are still in operation.”
This evidence is uncontroverted. I accept that sensors for road signs were known before the priority date. I consider it would have been a matter of routine for a person skilled in the art to incorporate a sensor into the sign defined in claim 1. Consequently claim 5 lacks an inventive step.
Claim 6
The system as claimed in claim 4 or 5, wherein the web server is adapted to collate information from a plurality of signs to provide an overall environmental status of a region for coordinating emergency services.
The Opponent states in their submissions at paragraphs 175 to 177:
“As set out in Declarations of Mr Brett Watkins and Mr Stephen Faith, it is submitted that webservers were well-known, and part of the common general knowledge, at the priority date, and many road signs collected information such as via temperature sensors that provide an overall environmental status of a region for coordinating emergency services.
In more detail, in the Declaration of the [sic] Mr Brett Watkins it states that “…the technology where web servers were able to [sic] able to collate information for a plurality of signs to provide an overall environmental status for a region has been provided for a long time in other formats for Road Authorities throughout Australia. Exhibit L is the Vaisala Black Ice Detection system that was first introduced in 1989 and subsequently installed on a larger basis with VicRoads in 2008 where there are a number of stations that gather the environmental status of the road and then provide the status of black ice on the road to Automated Advisory signs and also back to the co-ordinating emergency services which in this stage is VicRoads….”
Accordingly, it is submitted that it would be a routine and obvious modification to the Mona Vale Sign MV10 shown in Exhibit P and the Glenbrook Sign GB210 shown in Exhibit R in the light of common general knowledge to be configured to collate information from a plurality of signs to provide an overall environmental status of a region for coordinating emergency services in view of, for example, the Vaisala Black Ice Detection system and/or Common General Knowledge.”
The evidence of Mr Watson is uncontroverted. I accept that data is collected and collated from a number of sensors. I consider it would have been a matter of routine for a person skilled in the art to modify the Mona Vale or Glenbrook “2007” signs such that they data from sensors is transmitted to a webserver which collates the data. Consequently claim 6 lacks an inventive step.
Claim 7
The sign as claimed in any one of claims 1 to 3, wherein the illuminated display panels operatively associated with each segment are adapted to be visible and distinguishable from each other fixed display panel at a distance of at least 2 kilometres.
The Opponent states in their submissions at paragraphs 178 to 180:
“As set out in Declarations of Mr Brett Watkins and Mr Stephen Faith, it is submitted that modifying the display panels such as the size, layout or brightness are simply design choices that could be made by any person skilled in the art such as by increasing the power or luminosity of the LED lights.
In more detail, in his Declaration, states the “…the LEDs supplied could be seen from 2km if required however the Road authorities would not let this occur. All signage in Australia has to be installed 5 degrees away from the road to avoid glare and the brilliance of the lights needs to be controlled to ensure that there is no distraction to the public. If the sign was set to be viewed 2km away then the public would be significantly distracted when is the desired viewing area. Although, of course, it is a simple design choice to modify the required power/luminosity of the light and this chance could have easily been made to The Mona Vale Sign MV10 of Exhibit MV and/or the Glen brook Sign GB210 of Exhibit GB.”
As such, it is submitted that claim 7 lacks in inventive step in view of the Hi-Vis signs, such as the MV10 or GB210 signs, and common general knowledge.”
Mr Watson states in his declaration at page 12:
“The LED’s supplied could be seen from 2km if required however the Road authorities would not let this occur. All signage in Australia has to be installed 5 degrees away from the road to avoid glare and the brilliance of the lights needs to be controlled to ensure that there is no distraction to the public. If the sign was set to be viewed 2km away then the public would be significantly distracted when is the desired viewing area.
Accordingly, in my view, modifying the luminosity of the LEDs is a routine design choice.”
Mr Faith states in his declaration at paragraph 59:
“The LEDs supplied could be seen from 2km if required however the Road authorities would not let this occur. All signage in Australia has to be installed 5 degrees away from the road to avoid glare and the brilliance of the lights needs to be controlled to ensure that there is no distraction to the public. If the sign was set to be viewed 2km away then the public would be significantly distracted when is the desired viewing area. Although, of course, it is a simple design choice to modify the required power/luminosity of the light and this chance could have easily been made to The Mona Vale Sign MVl0 of Exhibit MV and/or the Glen brook Sign GB210 of Exhibit GB.”
Mr Watson and Mr Faith each assert that modifying the luminosity of LEDs would be a routine design choice, however also assert that the luminosity would not be set such that the LEDs could be viewed from 2km away because this brightness would be distracting to drivers.
In light of these declarations I consider that a sign which was bright enough such that each segment would be visible and distinguishable at a distance of at least 2 kilometres (at night with the naked eye) would be outside what a person skilled in the art would consider a reasonable modification to the “2007” model Glenbrook or Mona Vale signs.
Consequently I consider claim 7 to be inventive in light of the prior art.
Claim 8
A public warning system for conveying status of a condition at several discrete locations, the system comprising: a plurality of signs as claimed in any one of claims 1 to 3, each sign having a wireless communication device and being located at one of the discrete locations; a central control that remotely corresponds with the signs using a wireless network and the wireless communication devices of the signs, such that the signs can independently and/or collectively be directed by the central control to alter the status level of the condition.
The Opponent states in their submissions at paragraphs 181:
“As set out in relation to novelty, the prior Hi-Vis signs including the Hi-Vis Glenbrook sign GB210 of Exhibit GB can operate via either by receiving a plurality of signs signal or via a discrete wireless signal. This sign is a public warning system per GB210 and communicates wirelessly to the central control to alter the status level of the condition. Glenbrook Sign GB210 has all of the claimed features. Further, the networking of road signs to be controlled is common general knowledge such as how the common traffic signal functions. Accordingly, it is submitted that claim 8 lacks an inventive step.”
I have found that the Glenbrook “2009” model (GB210 sign) is not prior art. However, I have also found that the concept of wireless signal control of environmental condition signs was known. Claim 8 does not add anything substantial to beyond this. Consequently claim 8 lacks an inventive step.
Claim 9
A sign for conveying status of an environmental condition, the sign comprising: a plurality of sections that are segmented and spaced with respect to each other and that are permanently visible, each segmented and spaced section representing a level of status of the environmental condition; and a plurality of illuminated regions that are each operatively associated with a respective section, each illuminated region having a light source, whereby, in use, the light sources are controlled, in accordance with a received communications signal comprising prevailing environmental conditions, to be selectively illuminated one illuminated region at any one time such that the illuminated regions and sections together convey a visual indication of a selected status level of the environmental condition and where each illuminated region in operative association with its respective section is adapted to be visible and distinguishable from each other illuminated region in operative association with its respective section by one or a combination of: each illuminated region comprising an array of high intensity light emitting elements; the light emitting elements having distinguishable colours for each section; the disposition of each illuminated region on the sign.
The Opponent states in their submissions at paragraphs 182:
“As set out above in relation to Novelty, each of the MV10 Sign, GB07 Sign, GB210 Sign individually disclose the features of claim 9 of the Bartco application. As such, it is submitted that a person skilled in the art in view of these disclosures would find the invention defined in claim 9 as obvious in view of each of the MV10 Sign, GB07 Sign, GB210 Sign alone, or if required, in combination with the common general knowledge, Therefore, it is submitted that claim 9 lacks an inventive step.”
I consider claim 9 to be essentially the same scope as claim 1. Consequently claim 9 also lacks an inventive step.
Claim 10
The sign as claimed in claim 9, wherein the sections comprise:
a first section that represents a lowest level of condition severity, a second section that represents the highest level of condition severity, and one or more intermediate sections that each represent a distinct level of condition severity between the lowest and highest levels.
The Opponent states in their submissions at paragraphs 183:
“As set out above in relation to Novelty, each of the MV10 Sign, GB07 Sign, GB210 Sign individually disclose the features of claim 10 of the Bartco application. As such, it is submitted that a person skilled in the art would find the invention defined in claim 10 as obvious in view of each of the MV10 Sign, GB07 Sign, GB210 Sign and therefore claim 10 lacks an inventive step.”
The Mona Vale and Glenbrook “2007” model signs have segments ranging from the lowest to highest severity. Claim 10 lacks an inventive step.
Claim 11
The sign as claimed in claim 9 or 10, wherein, each of the intermediate sections has a corresponding intermediate illuminated region, wherein the area of each intermediate illuminated region is greater than the first illuminated region, and less than the second illuminated region.
The Opponent states in their submissions at paragraphs 184 to 186:
“The prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each disclose segments of differing colour. However, size of the “illuminated regions” do not increase in size. It is submitted that such a change in the size of the illuminated region is a simple design variation applied to MV10 Sign, GB07 Sign, GB210 Sign that any person skilled in art would be able to routinely try and without any technical difficulty being overcome. As such, it is submitted that claim 11 is obvious in view of the prior art signs in the light of common general knowledge.
Further, as aforesaid, and the format of such signs, such as having a larger and separated “catastrophic” segment was a feature specified by the Victorian CFA (as indicated in the background of the Bartco specification) and thus any person skilled in the art would have been able to make these routine type design changes to the layout of the sign. This is why the Adco patent also discloses a similar arrangement of segments with changing sizes – as such, the arrangement or separation of segments cannot be considered exhibit an inventive step. The Declarations of Mr Brett Watson and Mr Stephen Faith support this position.
As such, it is submitted claims 11 lacks an inventive step.”
Claim 11 is similar to claim 3 and lacks inventive step for essentially the same reason.
Claim 12
The sign as claimed in claim 9, 10 or 11, wherein the illuminated regions comprise: a first illuminated region associated with the first section, and a second illuminated region associated with the second section, wherein the area of the first illuminated region is smaller than that of the second illuminated region.
The Opponent states in their submissions at paragraphs 187 to 189:
“The prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each disclose segments of differing colour. However, size of the “illuminated regions” do not have different sizes such as the area of the first illuminated region being relatively smaller. It is submitted that such a change in the size of the illuminated region is a simple design variation applied to MV10 Sign, GB07 Sign, GB210 Sign that any person skilled in art would be able to routinely try and without any technical difficulty being overcome. As such, it is submitted that claim 12 is obvious in view of the prior art signs in the light of common general knowledge.
Further, as aforesaid, and the format of such signs, such as having a larger and separated “catastrophic” segment was a feature specified by the Victorian CFA (as indicated in the background of the Bartco specification) and thus any person skilled in the art would have been able to make these routine type design changed to the layout of the sign. This is why the Adco patent also discloses a similar arrangement of segments with changing sizes – as such, the arrangement or separation of segments cannot be considered provide an inventive step. The Declarations of Mr Brett Watson and Mr Stephen Faith support this position.
As such, it is submitted claims 12 lacks an inventive step.”
Claim 12 has essentially the same scope as claim 11 and lacks an inventive step for the same reason.
Claim 13
The sign as claimed in any one of claims 9 to 12, wherein the sections comprise one or a combination of: colours, indicia, alphanumeric markings.
The Opponent states in their submissions at paragraphs 190:
“The prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each disclose sections that comprise colours, indicia, alphanumeric markings. Adding, for example, colours is routine and obvious. As such, claim 13 lacks an inventive step.”
The Mona Vale and Glenbrook “2007” model have sections of different colour and indicia. Consequently claim 13 lacks an inventive step.
Claim 14
The sign as claimed in any one of claims 9 to 13, wherein, the sections are arranged on the board in a manner that sequentially represents the possible levels of condition severity between lowest and highest levels.
The Opponent states in their submissions at paragraph 191:
“The prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each disclose sections that sequentially represent the possible levels of condition severity between lowest and highest levels. As such, claim 14 lacks an inventive step.”
The Mona Vale and Glenbrook “2007” model have sections representing condition severity. Consequently claim 14 lacks an inventive step.
Claim 15
The sign as claimed in any one of claims 9 to 14 further comprising an electronic control system for controlling illumination of the light sources.
The Opponent states in their submissions at paragraphs 192:
“The prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each include an electronic control system for controlling illumination of the light sources. As such, claim 15 lacks an inventive step.”
The Mona Vale and Glenbrook “2007” are active illuminated segments and are thus inherently electronically controlled. Consequently claim 15 lacks an inventive step.
Claim 16
The sign as claimed in claim 15 further comprising a LED matrix adapted to be controlled by the control system to display a message and/or image.
The Opponent states in their submissions at paragraph 193:
“The prior art signs (MV10 Sign, GB210 Sign) each included an LED matrix adapted to be controlled by the control system to display a message and/or image, and, in any event, such a LED matrix is common general knowledge in the art. As such, claim 16 lacks an inventive step.”
In my consideration of claim 2 I found that a variable message display, although not disclosed in Mona Vale or Glenbrook “2007” model, would be an obvious modification of these signs. The most common form of variable message display is an LED matrix display. I consider that a person skilled in the art would, as a matter of routine, modify the Mona Vale and Glenbrook “2007” model signs such that they included a LED matrix display rather than the single message display. Consequently claim 16 lacks an inventive step.
Claim 17
The sign as claimed in claim 15 or 16, wherein the electronic control system comprises a wireless device that is capable of receiving control information from a remote control at a remote location, such that the illuminated regions can be selectively set at the remote location.
The Opponent states in their submissions at paragraph 194:
“As set out in the Declarations of Mr Brett Watson and Mr Stephen Faith, the prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) each include a wireless device in the form of a 2G communication module that can receiving control information to selectively control the illuminated regions. As such, claim 17 lacks an inventive step.”
Claim 17 defines that the remote communication is wireless (as opposed to a wired remote communication). I have found that it would be a matter of routine for a person skilled in the art to use wireless communication with the Mona Vale or Glenbrook “2007” model signs, and so claim 17 lacks an inventive step for the same reason.
Claim 18
The sign as claimed in claim 15, 16 or 17 wherein, the electronic control system comprises at least one sensor that detects an observable condition, and the electronic control system is operated to automatically change the status condition conveyed by the sign based on a predetermined change in the condition detected by the sensor.
The Opponent states in their submissions at paragraphs 195 to 197:
“As set out in the Declarations of Mr Brett Watson and Mr Stephen Faith, the prior art signs (GB210 Sign) utilises an electronic control system GB52 with one sensor that detects the observable condition ambient light GB48 and the electronic system then automatically changes the light intensity of the sign GB210. Furthermore, it is noted the sensors used in relation to signs to change a status of the sign are well-known and part of the common general knowledge, and example of such signs include black ice detection signs that indicate black ice based on input from a temperature sensor as had been outlined above in relation to claim.
In more detail, in the Declaration of the [sic] Mr Brett Watkins it states that Hi-Vis has manufactured along with other competitors that utilise sensors observing environmental conditions and then adjusting the automated warning signs via the electronic control system with one of the main systems that has been in operation since 1989 being black ice detection. Referring to Exhibit L which details how the sensors detect ice and then activate Advisory signs along with communicating via a web server to VicRoads. Exhibit J is the Manildra Vehicle Activated Warning sign that uses a sensor in the road to activate the signs when vehicles are entering the road and the public needs to prepare to stop. Each of these signs automatically change the status condition conveyed by the sign based on a predetermined change in the condition detected by the sensor, and a representative of the common general knowledge.
As such, it is submitted that claim 18 lacks an inventive step in view of the prior art signs alone or in combination with common general knowledge as there is no technical difficulty or unexpected result from adding such a sensor and electronic control system automatically change the status condition based on a predetermined change in the condition detected by the sensor.”
During the hearing Mr Watson noted that each state of Australia is divided into a number of fire warning regions. Thus all the signs in one region are centrally controlled and display the same fire condition. Although automatically changing the sign on the basis of a sensor would make sense in some situations (such as a black ice warning system), it would not be obvious to a person skilled in the art to automatically change the fire warning on the Mona Vale or Glenbrook “2007” model signs on the basis of a sensor, since this is the opposite of the central control of all fire warning signs in a region.
An alternative inventive step argument could be that a person skilled in the art could modify a different environmental condition sign (such as a black ice sign) which did automatically change on the basis of sensors such that it contained all the remaining features of the independent claim That is, modifying a black ice sign such that it was a segmented display. A photo of a black ice sign from exhibit L accompanying Mr Watson’s declaration is shown below.
A black ice warning sign is automatically turned on once the temperature goes below a threshold. Although a more complex black ice sign with a segmented display for various levels of black ice danger (e.g. that takes into account temperature ranges, recent rain fall, etc.) is conceivable, this level of imagination is beyond what would be expected of a non-inventive person skilled in the art.
Consequently, I consider claim 18 to be inventive in light of the prior art.
Claim 19
The sign as claimed in claim 18, wherein the observable condition is one or more of: temperature, wind speed and/or direction, humidity, barometric pressure, and water level.
The Opponent states in their submissions at paragraphs 198 to 201:
“As set out in the Declarations of Mr Brett Watson and Mr Stephen Faith, the prior art sign GB210 Sign utilises an electronic control system GB52 with one sensor that detects the observable condition ambient light GB48. This is not one of a temperature, wind speed and/or direction, humidity, barometric pressure, and water level.
However, temperature sensors are known to be used in relation to road signs such as a black warming sign as outlined in Exhibit L of the Brett Watson Declaration. Even a simple bedside clock may have temperature sensor and display that temperature.
Fire ratings are related to observable weather conditions, in particular, temperature. For example, it is well-known that very hot days have an increased fire danger. Therefore, it is submitted that the selection of the observable weather condition being temperature is the most obvious choice, and would certainly have been routinely selected by the person skilled in the art.
Accordingly, it is submitted that claim 19 lacks an inventive step in view of the prior art signs MV10 or GB 210 in combination with common general knowledge.”
Claim 19 is dependent on claim 18 which has been found to be inventive and is thus also inventive.
Claim 20
The sign as claimed in claim 18 or 19 wherein the observable condition alternatively or additionally relates to speed and/or direction of a moving object.
The Opponent states in their submissions at paragraphs 202 to 204:
“As set out the Declarations of Mr Brett Watson & Mr Stephen Faith, it is submitted that at the priority date it was well-known that roads signs such as the Hi-Vis school sign have included sensors to detect the speed cars and provide a message or speed.
In more detail, as per the Declaration of Mr Brett Watson, Sensors that detect observable conditions such as speed are well known such as that disclosed in relation to the Hi-Vis school sign in Exhibit F and such signs may display a message or speed warning. As such, in my view, it would have been obvious in view of the Hi-Vis school sign and/or Common General Knowledge to select a sensor in which the observable condition was, for example, speed and add this to the prior art signs, MV10 or GB210, to, for example, add a speed warning. The Manildra signs Exhibit J detect the speed and direction of moving vehicles via the sensor in the road surface and then use planned logic to activate the plurality of signs in the area.
Accordingly, it is submitted that claim 20 lacks an inventive step in view of the prior art signs MV10 or GB 210 in combination with common general knowledge because there is no technical problem overcome or any expected result from adding such as a sensor.”
Claim 20 is dependent on claim 18 or 19, both of which are inventive, and is thus also inventive.
Claim 21
The sign as claimed in any one of claims 15 to 20 further comprising a battery for providing power to the light sources and electronic control system.
The Opponent states in their submissions at paragraphs 205:
“As set out the Declarations of Mr Brett Watson & Mr Stephen Faith, the prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) such as the Mona Vale Road sign, MV10, included a battery MV103 for power to the light sources and electronic control system. Further, the providing of a battery to power a light or electronics is common general knowledge. Accordingly, it is submitted that claim 21 lacks an inventive step in view of prior art signs alone or in combination with common general knowledge.”
The Mona Vale and Glenbrook “2007” model have solar panels and batteries. The existence of the solar panel necessitates a battery (even if this is not visible to the public), since the sign needs to work constantly, but the solar panel can only power the sign directly while the sun is facing the solar panel. Thus I consider that it would be obvious for a person skilled in the art that the solar panel would recharge a battery to power the sign. Consequently claim 21 lacks inventive step.
Claim 22
The sign as claimed in claim 21 further comprising a solar panel and regulator for recharging the battery.
The Opponent states in their submissions at paragraph 206:
“As set out the Declarations of Mr Brett Watson & Mr Stephen Faith, the prior art signs (MV10 Sign, GB07 Sign, GB210 Sign), for example, the Mona Vale Road sign, MV10, included a solar panel MV106 and a regulator for recharging the battery. The Glenbrook Sign GB210 of also disclosed similar features. Further such a solar panel and regulator for recharging the battery were well-known at the priority date. Therefore, it is submitted that claim 22 lacks an inventive step in view of the prior art signs alone or in combination with common general knowledge.”
The Mona Vale and Glenbrook “2007” model have solar panels and regulators. Consequently claim 22 lacks inventive step.
Claim 23
A warning sign for conveying status of an environmental condition, the sign comprising:
a plurality of light sources whereby each of the plurality of light sources is operatively associated with one of a plurality of segments of a segmented condition rating scale physically disposed on a substrate for public display wherein in combination the light sources and their operatively associated segments are adapted to be selectively illuminated one segment illuminated at any one time for displaying a plurality of distinct status levels of the environmental condition;
an electronic control system for controlling illumination of the light sources; and
at least one sensor that detects an observable environmental condition, and which is in communication with the electronic control system;
wherein the electronic control system automatically changes the status condition displayed by the light sources in response to a predetermined change in the environmental condition detected by the sensor and each of the plurality of segments are adapted to be visible and distinguishable from each other by one or a combination of:
each of the plurality of light sources comprising an array of high intensity light emitting elements;
the light emitting elements having distinguishable colours for each respective segment;
the disposition of each segment on the sign.
The Opponent states in their submissions at paragraphs 207 to 210:
“As set out in the Declarations of Mr Brett Watson & Mr Stephen Faith and similar to the comments above in relation to claims 1 and 9, the prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) disclose each and every feature claim 23 aside from “…wherein the electronic control system automatically changes the status condition displayed by the light sources in response to a predetermined change in the environmental condition detected by the sensor…”.
However, the Glenbrook Sign GB210 of Exhibit R of the Brett Watson declarations utilises an electronic control system GB52 with one sensor that detects the observable condition ambient light GB48 and the electronic system then automatically changes the light intensity of the sign GB210. Further, other prior art signs, such as H the “Vaisala Black Ice Warning Sign” shown in exhibit L did include a sensor and a control system that changed the status of the sign (i.e to show a black ice warning) based predetermined change in the condition detected by the sensor (i.e. a low temperature).
It is submitted that the knowledge of using a sensor to provide a signal that then results in a change in status of a sign is well-known and a person skilled in the art would have routinely made this modification to any of the prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) to arrive at the invention as claimed by routine steps alone. For example, if the posed problem were to change the status of the sign on a very hot day, the solution of adding a temperature sensor that is used to increase to fire rating is completely obvious and does not involve overcoming a technical barrier.
Accordingly, it is submitted that claim 23 lacks an inventive step in view of any of the prior art signs (MV10 Sign, GB07 Sign, GB210 Sign) in combination with common general knowledge.”
Claim 23 has similar scope as claim 18, however does not include the feature of receiving a communication signal. I consider that a person skilled in the art would not modify the Mona Vale or Glenbrook “2007” signs to change on the basis of sensors for the reasons discussed in relation to claim 18. I also consider that a person skilled in the art would not modify other known environmental condition signs that change based on sensors (e.g. black ice sign), such that it was a segmented display with a condition rating scale.
Consequently, I consider claim 23 to be inventive in light of the prior art.
Conclusion
The invention defined in claims 1 to 6, 8 to 17, 21 and 22 lack an inventive step in light of the Mona Vale and Glenbrook “2007” model signs.
There is subject matter disclosed in the specification which could be used as the basis to amend the claims.
The Applicant is given 2 months from the date of this decision to propose suitable amendments.
Costs
Costs typically follow the event. I can see no reason to depart from this practice. Costs are awarded according to Schedule 8 against the Applicant.
Xavier Gisz
Delegate of the Commissioner of Patents
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