James Earl Winner, Jr. v. Australian Chicago Products (Sales) Pty. Limited

[1989] APO 4

In the Matter of the Patents Act 1952 and - In the Matter of Application No. 561885 for a Patent by JAMES EARL WINNER, JR. - and - In the Matter of Opposition thereto under Section 59 by AUSTRALIAN CHICAGO PRODUCTS (SALES) PTY. LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent application 561885 for an invention entitled "Automobile Steering Lock" was lodged by JAMES EARL WINNER, JR. (WINNER) on 26 June 1986. The application is a Convention application claiming priority from an application filed in the USA on 26 November 1985. Following acceptance of the application and complete specification, on 27 August 1987 AUSTRALIAN CHICAGO PRODUCTS (SALES) PTY. LIMITED (hereinafter referred to as ACP) lodged a notice of opposition under section 59.

The service of evidence was completed by 22 December 198n and the matter was heard in Canberra on 11 January 1989. Mr. G. Turner, patent attorney of Spruson & Ferguson, Sydney appeared for WINNER and Mr. P. Taylor, patent attorney of Arthur S. Cave & Co., Sydney appeared for ACP.

The grounds of opposition listed on the notice of opposition are those grounds specified in paragraphs (a), (e) to (i) of sub-section 59(1) of the Act. The submissions on behalf of the opponent at the hearing were restricted to those in paragraphs (e) and (h) (i.e. prior publication and lack of novelty).

The Specification

The invention the subject of the opposed specification relates to an antitheft device for attachment to a steering wheel of an automobile. The device is constructed so that it can be securely fitted to a steering wheel to extend across either a diameter or a chord of the wheel, and to have a portion thereof which extends beyond the circumference of the wheel to inhibit complete rotation of the wheel when the device is so fitted. The device described with reference to the drawings resembles an elongated bar comprised of two telescoping parts, each part bearing oppositely directed hook elements offset from the bar axis and of a size to accommodate the rim of a steering wheel. A lock mechanism is affixed to one telescoping part no enable the parts to be secured together at any one of a plurality of telescoping positions.

The specification refers to prior antitheft devices of a similar type to that of the present invention by referring to the disclosures of three US Patent specifications, namely numbers 4303110, 4103524 and 3462982. It is stated that the prior art devices exhibit a number of disadvantages such as being awkward and inconvenient to use because of their configuration, being insufficiently adjustable for use over a wide range of steering wheel sizes, and having parts (such as the locking mechanism) exposed and thus subject to unauthorised manipulation. The device of the present invention is said to overcome such problems.

The specification concludes with 19 claims of which claims 1, 8 and 12 are independent and claim 19 is an omnibus claim. Claims 1 to 8 and 12 are as follows:

"1. An antitheft device for attachment to a steering wheel of an automobile comprising: an elongated body member having a passage extending along an axis therethrough, first hook means secured to said body member for engagement with a portion of said steering wheel wherein said first hook means engages said wheel from the inside thereof with said body member having an extended portion thereof extending outward beyond the periphery of said steering wheel, an elongated rod member adapted to move in telescopic fashion in said passage of said body member along said axis, second hook means secured to said rod member for engaging from the inside a portion of said steering wheel diametrically opposed to said first hook means, and means associated with said body member engaging said rod within said passage for locking said rod member stationary with respect to said body member at any of a plurality of positions, said extended portion of said body member having a length such that rotation of said steering wheel with said locked members engaged thereon is limited by contact of said extended portion with said automobile.

2. A device as defined in claim 1, further comprising a housing associated with said body member having said passage extending therethrough, and having said means for locking contained therein.

3. A device as defined in claim 2, wherein said housing encases a portion of said body member.

4. A device as defined in claim 3, wherein said body member is a tubular member of metallic material having a circular cross-section, and said housing is metal and die cast around an end of said body member.

5. A device as defined in claim 1, wherein said rod includes transverse grooves, axially spaced along the length thereof, and said locking means includes a locking member with said housing movable between a rod locking first position and a rod releasing second position, said locking member in said first position intersecting said passage and positioned within one of said plurality of grooves in a manner which limits movement of said rod through said passage.

6. A device as defined in claim 5, wherein said passage in said body member has a circular cross-section, said rod is generally circular in cross-section for sliding engagement within said passage and said grooves are arcuate and extend in annular fashion about the axis of said rod, and said locking member is generally cylindrical in shape having a flat portion on one side thereof and an arcuate portion opposite thereto, said locking member rotatable about an axis through said housing wherein said first position said arcuate portion of said locking member communicates with said annular grooves on said rods.

7. A device as defined in claim 1 further comprising means associated with said body member for locating said rod member at one of said plurality of positions.

8. An antitheft device for attachment to a steering wheel in an automobile comprising: an elongated, tubular body member having first hook means at one end thereof, said hook portion opening along the length of said body member for engaging the inner edge of said wheel when said body member extends beyond the periphery thereof, an elongated telescoping member movable in telescoping fashion in said body member, said telescoping member having second hook means opening opposite to said first hook means for engaging an opposed inner segment of said steering wheel, and means for locking said telescoping member with respect to said body member at any one of a plurality of positions, said positions having said body member extend beyond said periphery of said steering wheel such that rotation of said steering wheel is limited by contact-of said body member with said automobile.

12. An antitheft device for attachment to a steering wheel in an automobile comprising:

an elongated tubular body member of predetermined length having a central axis; first and second longitudinally spaced hooks movable along said axis for engaging diametrically opposed segments of said steering wheel from the inside, said first hook secured to one end of said body member such that said body member extends beyond the circumference of said steering wheel, and said second hook having, means extending within said body member to effect telescopic movement therebetween; and means associated with said body member for releasably locking said hooks with respect to each other at any one of a plurality of positions, said positions having said body member extend beyond said circumference of said steering wheel such that rotation of said steering wheel is limited by contact of said body member with said automobile."

The antitheft devices of claims 8 and 12 each have a similar combination of features to that claimed in claim 1, but they differ to some extent in respect of the locking feature. Claims 8 and 12 do not require the means for locking to engage the rod member within the body member to effect the locking action. In my view these claims are not fairly based in this regard given the disclosures on pages 1, 2 and 9 of the specification.

Several claims lack clarity. In particular claim 5, which is appended to claim 1, refers to "a locking member with said housing ..." but the first definition regarding a "housing" appears in claim 2. Also the reference in this claim to "said locking member ... limits movement of said rod" is inconsistent with the definition in claim 1 requiring the rod member to be locked "stationary". Regarding claim 10, this claim is unclear and lacks fair basis.

The Evidence

As evidence in support, ACP lodged the following material:

(a) a statement listing by number 11 prior patent specifications and referring to industry pamphlets of WD Industries Inc., Yu Chih Co. Limited and hang Li Industrial Co. Ltd., which statement was accompanied by a tabulated comparison of features of two of the patent specifications listed with the claims of the opposed specification and photocopies of pamphlets of the companies listed. (The patent specifications and pamphlets disclose, inter alia, antitheft devices for use in association with the steering wheel of an automobile.)

(b) a further statement accompanied by a copy of Danish Patent 106072, a notarised copy of a letter by one Giovanni Clignon with attachments, and a notarised copy of an affidavit by one Rock Davis with annexures filed in an action before the Federal Court of Australia.

Applicant's evidence in answer consists of the following:

(a) a statutory declaration by John David O'Connor, a Patent Attorney, who exhibits advice from the Patent Office Library, Canberra, of the unavailability of a German patent specification and Danish Patent 106072 both mentioned in the opponent's opposition material.

(b) a statutory declaration by Richard Frost, a graduate in Mechanical Engineering, who comments on the claims of the opposed specification and on the various antitheft devices disclosed in the opponent's opposition material.

The opponent's evidence in reply consists of the following:

(a) a statutory declaration by Rock Davis who exhibits as Exhibit RD1 an antitheft device which is otherwise referred to in evidence as a "LOCK 4".

(b) a statutory declaration by Roy Thomas Southin, who has qualifications and considerable experience in the metallurgy field including a Ph.D from the University of Cambridge. Dr. Southin comments on the invention of the opposed application and on the disclosure exhibited by the device known as "LOCK 4" of Exhibit RD1 and as otherwise shown in trade pamphlets.

(c) a second statutory declaration by Dr. Southin who exhibits as Exhibit RTS1 an antitheft device made by the Yu Chih Co. Limited, referred to as the "Yu Lock" in evidence.

(d) a statutory declaration by Allan Prager, managing director of Test-Rite Imports (A'Asia) Pty. Ltd. who exhibits documents relating to the shipping from Taiwan and receipt by his company in Sydney in May 1985 of a consignment of goods including a quantity of "Yu Locks".

After service of evidence in reply, further evidence by way of special leave was lodged on behalf of the applicant. This consists of a statutory declaration by Ross Douglas Squire, a qualified locksmith having both an interest in, and consultancy work in relation to, automotive locks and antitheft devices for motor vehicles. He comments on and compares the device of Exhibit RD1 with the device of the present invention.

At this point, it is worth noting that the material presented by the opponent as its evidence in support does not meet the requirements of Regulations 55 and 75 in that the "statements" are not declarations. That does not mean the material ought to be rejected from consideration; clearly those patent specifications listed which were publicly available at the Patent Office before the priority date require due consideration, and the other material requires consideration on its merits.

Prior Publication and Novelty

To support its opposition on the grounds of prior publication and lack of novelty, the opponent relies on the disclosures of a number of patent specifications, the antitheft device referred to in evidence as "LOCK 4" and related brochures, and on the "Yu Lock" referred to in evidence. A consideration of these items follows.

(i) Patent Specifications

AU 418801. This specification discloses an antitheft device to fit across a steering wheel. The device shown in Fig. 5 has two elongated members each possessing hook means to accommodate the steering wheel rim. The two members can be locked together when each hook is engaged with the steering wheel. There is no disclosure of members fitting together in a telescopic fashion with a rod member being adapted to move in a passage of a second member. This specification clearly does not prior publish the claimed invention nor render it not novel.

US 4304110. This specification discloses an antitheft steering wheel locking device. In one embodiment (Fig. 6) it consists of an elongated bar for fitting across a steering wheel comprising a first rod-like part threadingly engaged in a tubular second part. The first part has a hook element and the second part a pair of lugs to enable the device to be located on the rim of the steering wheel and secured in position by a padlock passing through holes in the free ends of the lugs. The device when fitted to a steering wheel has portions extending outward beyond the periphery of the wheel.

This specification does not disclose hook means on each of the two parts. Furthermore and more significantly, it does not disclose a locking means as defined by claim 1, i.e. "associated with said body member engaging said rod within said passage Additionally, the threaded association between the first and second parts does not constitute a "telescopic" arrangement within the meaning of that expression in engineering, namely a sliding together of elements, one within the other thus extending or shortening the device. Thus the devices disclosed in this specification do not publish, nor render not novel, the claimed invention.

It was submitted by Mr. Taylor that the disclosure of US 4304110 could be enlarged by reference to the specifications listed as "References Cited" in that patent, and if that were done the invention claimed would be anticipated. He relied on the judgement in Warner Laboratories Pty. Ltd. v. Chemspray Pty. Ltd. [19671 AOJP 2513. The question as to what US 4304110 discloses given the law in Warner v. Chemspray concerns what it would disclose (cited references included) to a person skilled in the art. There is no particular evidence before me on this point, but on my assessment of US 4304110 and its cited references, I do not consider that it provides a disclosure of the present invention.

US 3462982. This specification discloses an antitheft device for fitting across a steering wheel. This device comprises an elongated flat bar having a fixed hook element spaced from one of its ends, and a carriage component having a book element which is slidably located on the bar and can be locked in various positions by a keyed lock means carried on the carriage. This device therefore lacks many of the features of the claimed invention and consequently the present invention is not prior published by, or rendered not novel in the light of, the disclosure of this specification.

DK 106072. This Danish specification discloses an antitheft device somewhat similar to that described for the preceding US specification except that the bar appears to be tubular and the hook element on the bar is at one end thereof. The opponent has not provided evidence to establish the publication of this specification in Australia before the priority date of the opposed application. In contrast, the applicant has provided evidence showing that this document was not available at the Australian Patent Office as of 4 January 1988. Even had it been established that this patent specification was published in Australia, it clearly does not anticipate the claimed invention.

UK 1127524. Although no submission was made at the hearing on behalf of the opponent in relation to this specification, I consider it warrants consideration. It discloses an antitheft steering wheel locking device comparising an elongated channel member having a U-shaped cross section of sufficient length to extend across a steering wheel and extend beyond its periphery. A hook is fixed adjacent one end of this member. An elongated rod member (in the form of a flat bar) is arranged for sliding movement entirely within the channel of the channel member and also has a hook affixed to it, the two hooks opening in opposite directions and each being adapted to engage the inside of a steering wheel. A keyed locking means is associated with the channel member and has a plunger part to selectively engage holes in the rod member to enable locking of that member fixedly with respect to the channel member. In the terms of opposed claim 1, this specification discloses "an elongated body member having a passage", namely the elongated channel member, and discloses all other features of the claimed invention except the "telescopic" arrangement of the rod member with the channel member. There is thus no prior publication of the present invention. On the question of novelty, whilst the telescopic arrangement of the elongated members of the present invention enables the device to be collapsible to a compact size for storage, this difference alone compared to the device disclosed in UK 1127524 is not one which in my view can be held to contribute substantially to the working of the device as a locking device and thus confer novelty to claim 1 (see Griffin v. Isaacs [19421 AOJP 739). In my assessment, the same conclusion does not apply to claims 8 and 12 because they have the additional difference of a "tubular" body member compared to the device of the prior specification, a difference which seemingly improves significantly the tamper resistance of the device.

(ii) Other material

(a) LOCK 4 material

The device identified as LOCK 4 in this matter is illustrated in a brochure by M&G Marketing sas (an Italian company) forming an attachment to the notarised copy of an affidavit by Rock Davis, and a sample of such device is exhibited as RD1.

The brochure illustrates an antitheft device labelled "LOCK 4".including a picture of the device fitted on a steering wheel. The illustrations clearly show the device having an elongated rod member which is arranged in telescopic fashion with a tubular elongated body member. Both members possess Unshaped hook means which are arranged to engage inside portions of the steering wheel at diametrically opposed locations when the device is in position on the wheel. Located at the end of the body member which receives the rod member is a circular housing. The rod member illustrated shows some form of ribbing or grooving along its visible length. In the steering wheel fitted position, the body member has a portion extending outwardly beyond the wheel periphery.

A locking facility is not readily observable on the LOCK 4 device from the three illustrations of the device on the brochure.

However I note that the brochure also illustrates three other antitheft devices of somewhat similar telescoping configuration to the LOCK 4 device, two of which show a key lock facility in a housing - the device labelled "LOCK 1" has a housing (with a key lock facility) similarly positioned to the circular housing of LOCK 4.

The brochure bears no detailed description of the antitheft devices it illustrates : the only reference to LOCK 4 reads "Universal antitheft device-to apply to steering wheel". In actions such as here, the interpretation of photographs is a matter reliant on the evidence of a skilled addressee in the art pertaining to what such % person with appropriate engineering skills and experience would see in the photographs (see C. Van Der Lely N.V. v. Bamfords Limited 119631 RPC 61 at 71). No relevant evidence is before me on this issue. Opponent's declarant Dr. Southin states that the features of claims 1 to 3 "are clearly discernible in ... the beforementioned pamphlet from M&G Marketing", however his reasons for so concluding are not given. In any event Dr. Southin, given his qualifications and experience, in my view does not qualify as a skilled addressee in the art in question. Applicant's declarant Mr. Frost provides some comments on the disclosure of the brochure and what it "appears" to show (see paras 6 and 7), but he also, in my view, is not a skilled addressee. Thus, insofar as a locking facility is not clearly evident on the LOCK 4 device shown in the brochure and as there is no expert evidence on this point to establish otherwise, I conclude that the brochure does not disclose the invention claimed.

Exhibit RD1 is a device which corresponds in all visual respects with the LOCK 4 device illustrated on the M&G brochure. The rod member of Exhibit RD1 has a series of annular grooves along its length. Furthermore the part of the exhibit corresponding to the described housing of LOCK 4 on the brochure contains a keyed locking device, and from inspection of the disassembled housing and locking device, elements of the locking device are arranged to engage an annular groove of the rod member to selectively lock the latter stationary with respect to the body member. Exhibit RD1 thus has a construction possessing all features of the antitheft device claimed in the independent claims in suit.

PN

It was submitted on behalf of the applicant that from the evidence, it had not been proven that either the M&G pamphlet, Exhibit RD1, or LOCK 4 devices had been available to the public in Australia prior to the priority date of claims of the opposed application. The notarised copy of the Clignon letter and the notarised copy of the Davis affidavit are relevant to this point.

The Clignon letter which is dated 18 February 1988 and bears a M&G Marketing letterhead, reads as follows:

TO WHOM IT MAY CONCERN

We hereby declare that our products LOCK 1 - LOCK 2 - LOCK 3 - LOCK 4 had been exhibited at the SYDNEY MOTOR SHOW in October 1985 at the stand of M/S BLACKWALL PRODUCTS who exhibited at the same time also car alarms of the brand MACH.

We confirm that the undersigned was present at the stand and that all samples had been left with M/S Blackwall in Australia.

Also we confirm having shipped samples of LOCK 1 and LOCK 4 to Australia twice in 1984 and we have invoices certified by the Italian Customs Authority confirming this."

Attached to the letter are (i) a copy of page 59 from an unidentified catalogue, which page is entitled "Accessories for cars" and contains a representation of a device resembling the LOCK 4 device previously mentioned but which is labelled "LADY BLOCK", and (ii) copies of two invoices dated July and September 1984 from M&G Marketing in Italy to Beal Pritchett Pty. Ltd., Sydney, which appear to indicate the dispatch of antitheft bars identified as "XlOOO, X1001, X1003 and LADY BLOKY".

The Davis affidavit reads as follows:

"1. I am the Manager of Mongoose (Australia) Pty. Ltd., formerly known as Blackwall Products of 126 O'Connell Street, North Parramatta. I have been involved in the importation, sale and distribution of automobile spare parts for the past seventeen (17) years.

2. During a business trip to Europe in the first half of 1985, I held discussions with a Mr. Giovanni Clignon who showed me a range of products which included various steering wheel security locking devices. I arranged for him to forward to my address in Australia a quantity of leaflets and price details. Annexed and marked "B" is a copy of a letter dated 3rd June 1985, from Mr. Clignon.

3. In October 1985, my company operated a stand at the Sydney Motor Show. By arrangement, Mr. Giovanni Clignon attended this Show and brought with him a full range of the steering wheel security locking devices. Annexed hereto and marked with the letter "A" is a photostat copy of a brochure which was distributed with other literature.

4. I further say that the sliding type lock known as "Lock 4" as set out in the brochure, was amongst the samples exhibited.

5. Mr. Clignon was on hand to explain the product to interested parties and I can recall that there was a large number of enquiries and several hundred brochures were given out."

Apart from the photostat copy of the brochure marked "A", an actual corresponding colour brochure was also attached. The letter of annexure "B" was addressed to Blackwall Products for the attention of Mr. Davis, and mentioned that the "purpose of this letter is as agreed, to send you a few leaflets of our steering wheel locks", and includes reference to prices for the devices LOCK 1, 2, 3 and 4.

The content of the "leaflets" has not been explained.

Mr. Davis deposes that the antitheft device, Exhibit RD1 to his statutory declaration dated 28 September 1988, is "the Anti-Theft Device, as far as I can remember, of the type known as "Lock 4" which was exhibited at my company's stand at the Sydney Motor Show in October 1985".

The Clignon letter and the Davis affidavit in my view leave in doubt a number of matters. For instance, the relationship between antitheft devices identified in the invoices as X1000, LADY BLOKY, etc. to those labelled LOCK 1 and LOCK 4 on the brochures has not been explained : no evidence of receipt of the invoiced consignments by Beal Pritchett has been supplied : and it is not known when Davis received the letter (annexure B) and the "leaflets" of M&G's steering wheel locks. I also note the statement by Mr. Squire in evidence lodged on behalf of the applicant, that while he has seen an enormous variety of vehicle security devices, he had not previously seen a device of the type represented by Exhibit RD1 before viewing that exhibit.

It appears from the material before me that M&G brochures in accordance with annexure "A" of the Davis affidavit were available and distributed to the public at the Sydney Motor Show in October 1985. It appears also that an antitheft device known as "LOCK 4" was amongst samples of antitheft devices exhibited at the Blackwall Products stand at that Motor Show, the LOCK 4 device exhibited being as represented by the device of Exhibit RD1, although that particular device may not have been the actual sample on exhibition. As the standard of proof in opposition proceedings is the civil standard of proof on the balance of probabilities (see, e.g. Dunlop Holdings Ltd.'s Application (1979) RPC 523), I conclude that the M&G brochure and antitheft devices known as LOCK 4 were available to the public in Australia before the priority date, viz. before 26 November 1985.

(c) Conclusions regarding anticipation by LOCK 4 material

Earlier in this decision I concluded, given the evidence before me, that the M&G brochure did not disclose the invention claimed, and hence the present invention is not anticipated by that document.

I have also earlier concluded that the device of Exhibit RD1 possesses all features of the invention defined in the independent claims. Exhibit RD1 is a "LOCK 4" device, such devices being-available, at least for inspection, in Australia before the priority date. Consequently claims 1, 8 and 12 of the opposed application are prior published by the LOCK 4 device. It seems unnecessary to consider in depth the question of anticipation of the dependent claims - many of these claims are clearly also anticipated, for instance claims 2, 3 and 7. I will limit further comments to claims 4 to 6.

Claim 4 specifies a particular form of body member (LOCK 4 also has these features) and further defines that the "housing is metal and die cast around the end of said body member". LOCK 4 differs in that the housing is formed in two parts which parts are affixed together around the body member by swaging elements of the two parts together. I fail to see that the difference in construction defined by the invention of claim 4 is such as to provide a substantial contribution to the working of the device. Accordingly it is not a feature conferring novelty on the invention (see Griffin v. Isaacs (supra).

Claim 5 is deficient on section 40 grounds as mentioned earlier herein. However insofar as it can presently be construed, it includes a particular construction of locking means, the general nature of which is considerably different to that of the LOCK 4. Accordingly LOCK 4 is unlikely to anticipate a properly formulated claim based on claim 5.

It was however submitted to me on behalf of the opponent that locking means of a construction defined by claims 5 and 6 were "known" in the art, and that claims 5 and 6 lacked novelty on the basis that they merely defined a known device (a LOCK 4) having an alternate known locking means. To support the contention that the locking means was known, reference was made to Exhibit RTS1 (the "Yu Lock" antitheft device) and to the Yu Chih pamphlet and its depiction of the "Deluxe Steering Wheel Lock" of which the exhibit appears to be a sample. According to the Prager declaration, his company received a consignment of Yu Locks (product No. 65443Y) from Taiwan on 14 May 1985. The Yu Lock is of the steering wheel to foot pedal type but is adjustable in a telescopic manner and in particular has a locking means which appears identical to that described as the preferred embodiment of the present application. Whilst on the evidence Yu Locks were received by an importer in Australia prior to the priority date, there is no evidence to indicate use of the device before that date nor any evidence to establish that the Yu Lock device or the particular locking means it contains were matters of common knowledge to a skilled addressee in the art in Australia prior to that date. There is therefore insufficient evidence for me to conclude that the invention defined by these claims lacks novelty either on the basis of a "workshop improvement" consideration (as per Dennison Manufacturing Company v. Monarch Marking Systems Inc. 1 IPR 431), or consequential to there being a lack of invention as alleged on behalf of the opponent based on an analogous use submission. on the point of analogous use, the evidence in this case is not such as to render the doctrine of analogous use applicable. Whilst Mr. Taylor strongly contended that his submission on analogous use was not an obviousness attack, it seems to me that the nature of his submission was more appropriate to an obviousness allegation - however, given the absence here of evidence of common knowledge in the art, a determination concerning whether the invention is obvious is not possible.

Conclusion

I have decided that certain claims do not comply with section 40 and that the invention claimed has been anticipated. However, as I consider that the specification discloses novel subject matter and could be amended accordingly, I afford the applicant 60 days from the date of this decision to seek appropriate amendment thereof.

As to costs, the opponent has been successful in its opposition and thus, on the basis that costs follow the event, is entitled to its costs. I referred earlier in this decision to the fact that the material lodged by the opponent as evidence in support did not comply with the Regulations. Accordingly, the opponent is not in my view entitled to its costs in relation to that material. I thus award costs except in respect of evidence in support against the applicant.

(T.R. BRUHN)

Supervising Examiner of Patents

17 MAR 1989

Patent attorneys for the applicant: Spruson & Ferguson, Sydney

Patent attorneys for the opponent : Arthur S. Cave & Co., Sydney