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

[1989] APO 5

In the Matter of the Patents Act 1952 - and - In the Matter of an Application under Sub-Section 68B(l) for an Extension of the Term of Petty Patent 565999 in the Name of JAMES EARL WINNER - and - In the Matter of a Notice under Sub-Section 68B(3) in the Name of AUSTRALIAN CHICAGO PRODUCTS (SALES) PTY. LIMITED.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Petty patent application 77371/87 for an invention entitled "Automobile Steering Lock" was lodged by JAMES EARL WINNER (WINNER) on-24 August 1987. The application was lodged as a further application under the provisions of section 51 to standard patent application 77245/87, itself a further application to standard patent application 561885 (formerly numbered 59297/86). A petty patent numbered 565999 was sealed in respect of application 77371/87 on 29 October 1987. The earliest priority date of the claim of the petty patent is 26 November 1985 being the date of lodgement of the basic application in respect of application 561885.

On 3 June 1988, the patentee lodged an application under sub-section 68B(l) for an extension of the term of the petty patent. A notice under sub-section 68B(3) was lodged on 28 September 1988 on behalf of AUSTRALIAN CHICAGO PRODUCTS (SALES) PTY. LIMITED (hereinafter ACP). Pursuant to the provisions of sub-section 68B(8) and regulation 85, the parties were afforded an opportunity to be heard on the matter, the hearing taking place 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.

Sub-section 68B(3) notice and evidence

Section 68B provides for the extension of the term of a petty patent. The provisions are such that if the Commissioner is satisfied of the existence, in relation to a petty patent of any of the grounds set out in paragraphs 100(l)(b) to (g) of the Act, he may refuse to grant an extension of the term. In the present case, the notice under sub-section 68B(3) is based on those grounds as set out in paragraphs 100(l)(c), (e) and (g), i.e. non-compliance with section 40, obviousness and lack of novelty. ACP's notice was accompanied by copies of ACP's evidence in support of its section 59 opposition to WINNER's related patent application 561885 and a declaration comprising evidence in reply in that matter. The respective parties were in fact to rely on all their respective evidence material as lodged in relation to the opposition to application 561885, the hearing of this section 68B matter and that concerning the section 59 opposition being held concurrently.

The Specification

The invention the subject of the petty patent 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 to 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 object of the present invention is "to overcome or substantially immunerate the above disadvantages".

The claim of the specification is as follows:

"An anti-theft device for attachment to a steering wheel, having a rim, of an automobile comprising an elongated body member having a passage extending along the longitudinal axis therethrough, a first steering wheel engagement means secured to said body member for engaging a portion of said rim, said engaging means providing a recess within which the rim portion is to be located, 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, a second steering wheel engagement means secured to said rod member for engaging a further portion of said rim to define a chord between the two steering wheel engagement means, said second engaging means proving (sic) a further recess within which said further rim portion is to be located, and locking means connected to and extending through said body member permitting movement between said rod member and said tubular member while engaging said rod within said passage for locking said rod member stationary with respect to said body member at any one 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 therein is limited by contact of said extended portion with said automobile."

Section 40

Whilst no matters concerning non-compliance with section 40 were raised on behalf of ACP, I feel there are several points that require attention. Firstly, the claim defines the device as comprising "an elongated body member having a passage which definition is not restricted to such member being "tubular". However later in the claim, in defining the locking means, reference is made to "... movement between said rod member and said tubular member In the context, I interpret the "tubular member" to be the elongated body member, which body member has a tubular form.

Secondly, the definition of the "locking means" in the claim is in my view unclear and renders the claim indefinite. Whilst Mr. Turner submitted that the definition could be interpreted to mean that the locking means has a construction which exhibits either a locking or a free condition between the rod and body members, I do not feel that the definition can or should be so limited in its interpretation. On its strict interpretation the locking means permits movement between the rod and body members while at the same time holding them locked and stationary. This of course gives an absurd result, but it is not evident from the present wording in the claim that the interpretation advanced by Mr. Turner necessarily ought to prevail. The function of claims is "to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers" (see E.M.I. v. Lissen 56 RPC 23). In my view the present claim is lacking in clear definition and accordingly offends against the requirements of section 40.

Novelty

The material and evidence relevant to considerations concerning the novelty of the claimed invention comprises the evidence filed in the section 59 opposition by ACP to WINNER's related patent application 561885. I have identified that evidence and thoroughly reviewed the portions thereof relevant to novelty considerations in my decision in that matter being issued on even date with this decision, and I do not find it necessary to repeat the exercise here.

Clearly in my view, patent specifications AU 418801, US 4304110, US 3462982 and DK 106072 do not render the claimed invention not novel. In respect of patent specification UK 1127524, as the claim on my interpretation defines the device having a tubular body member, I conclude that the disclosure of this patent specification does not deprive the claimed invention of novelty.

The remaining material to consider for novelty purposes is the LOCK 4 material which I have decided was available to the public in Australia before the priority date. Referring to the LOCK 4 antitheft device (Exhibit RDl), this device clearly includes the features of "elongated (tubular) body member" and "elongated rod member" each bearing "engagement means" as defined in the claim. Furthermore, the locking feature of the LOCK 4 device has a construction which in one position allows movement between the rod member and the elongated body member and in a second position prevents such movement. Thus the LOCK 4 device also discloses "locking means" of the type presently defined. Accordingly the LOCK 4 device discloses an antitheft device having all the features of the claimed invention and thus I find the petty patent claim not novel.

Obviousness

The evidence before me does not establish the common knowledge in the art. Consequently a determination concerning whether the invention is obvious is not possible here.

Conclusion

I have determined that the claim of the petty patent lacks novelty and does not comply with section 40. I therefore refuse to extend the term of the grant at this stage. It does seem to me however that there is subject matter described which if properly claimed would entitle WINNER to an extension of the term.

I understand that there is an action commenced in the Federal Court of Australia, New South Wales District Registry (No. G689 of 1987), between the parties involved in this sub-section 68B(3k action and others, whereby the validity of the petty patent may be disputed - consequently I will not set a definite time for WINNER to propose any amendments under section 77. However, should WINNER desire to propose amendments in order to remove any grounds of objection to extension of term, such amendments will be processed up to the point of acceptance: nothing further will be done at that time pending outcome of the action before the court.

I award costs against the patentee.

(T.R. BRUHN)

Supervising Examiner of Patents

17 MAR 1989

Patent attorneys for the patentee : Spruson & Ferguson, Sydney

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