KRONE AG v MOD-TAP (Australia) Pty Ltd

[1998] APO 34

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 646204 in the name of KRONE AG

Title:          Electrical Connectors

Action: Opposition under section 59 (Patents Act 1990) by MOD-TAP (AUSTRALIA) PTY LTD

Decision:          Issued            .

Abstract

The claims were substantially amended in response to the opposition and prior to the hearing.  All the grounds of opposition failed against the amended claims, and costs are awarded to reflect these circumstances.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 646204 by KRONE AG and opposition thereto by MOD-TAP (AUSTRALIA) PTY LTD

background

Patent application 646204 (the application) was filed as 68208/90 on 18 December 1990 by KRONE AG (the applicant), claiming a Convention priority of March 1990. After modified examination (US patent 5074804), the application was advertised accepted on 10 February 1994. As the application was filed before, and accepted after, the commencing day of the Patents Act 1990 (30 April 1991), the application is subject to the transitional provisions of this Act. The effect of this, so far as present proceedings are concerned, is that Part V of the Patents Act 1952 and Patents Regulations 1991 of the Patents Act 1990 apply.

On 10 May 1994 a notice of opposition was lodged by MOD-TAP (AUSTRALIA) PTY LTD (the opponent), followed by a statement of grounds and particulars on 10 August 1994.  The latter includes a statement concerning the opponent's interest in the matter.

The grounds relied on correspond to paragraphs (e) and (g) to (i) of section 59 of the Patents Act 1952, ie publication, obviousness, novelty, and section 40.

Two requests were made to amend the statement of grounds and particulars, and both were allowed without objection.

Two applications were made for an extension of time in which to serve evidence in support.  Both were granted without objection, and service of this evidence was completed on 20 February 1995.

An application for an extension of time of time in which to serve evidence in answer was granted without objection, and service of this evidence was completed on 21 August 1995 (20 August being a Sunday).  At the same time, the first of what turned out to be three section 104 requests to amend the specification, including the claims, was filed.  The evidence in answer addresses the claims as then proposed to be amended by the first statement.

Pursuant to the variously proposed amendments, there followed adverse examiner reports and adverse comments from the opponent, and some discussion about the appropriate time for serving evidence in reply.  Eventually, allowance of the amendments was advertised on 25 September 1997, and it is the specification as so amended which is for consideration here.  Also, on 21 November 1997 the opponent advised that no evidence in reply would be served.

A hearing was set for 27 May 1998 in Canberra.  Attending the hearing were Messrs Leslie and Mitchell, patent attorneys, of Davies Collison Cave, Melbourne, representing the applicant.  The opponent was not represented at the hearing, but written submissions were made on the day on their behalf by Mr Pippard, patent attorney, of Spruson & Ferguson.

SPECIFICATION

The invention is an electrical connector, namely a socket (also known as a jack) which terminates a number of electrical conductors and accepts a mating plug.

More specifically, it concerns the constructional features of a kind of socket, known per se, which is a component in a "modular" system of connectors for coupling voice and/or data signals to/from cabling in a building with, for example, a telephone or modem, via a mating plug.  In its eight conductor form this type of connector combination is evidently known as the WE8W socket and RJ45 plug, and it is now common in commercial installations, usually with the socket mounted in a wall-plate.  The connectors are required to meet specified standards, primarily as to measurements and the disposition of contacts.

In more detail, the socket comprises a moulded housing made up of two parts, which on assembly click together.  The first part has insulation displacement contacts (IDC's - which permit the termination of an insulated conductor without the separate step of removing the insulation) on the rear surface, which extend through and contact a second set of contacts (eg by welding), which are generally planar with the main plane of the first housing part and perpendicular to the IDC's.  The second set of contacts have free ends which extend beyond the first housing part; when the second housing part is connected with the first part it simultaneously acts to form a cavity, which is shaped to receive a mating plug, and bends the free ends so as to form socket contacts within that cavity.

The specification reveals little about the prior art or its problems, except for a few lines at page 2, where reference is made to a known connector which uses a printed circuit board, which is said to be difficult to assemble, or to replace when faulty.  It says the present invention "is concerned with improved connection apparatus".  Under "Summary and Objects of the Invention" are statements which essentially repeat the main claims; there follows a detailed description and claims numbered 1-15.

Claim 1 is for a connector characterised by its constructional features; claim 15 is for a connector characterised by the steps taken to establish these features, and claims 2-14 add various preferred features to the connector of claim 1.

Claims 1 and 15 read as follows.

"1. A connector for connecting a plug to electrically insulated wires, the connector comprising:
a moulded housing defining a cavity for receiving the plug;
a first set of connecting elements, each connecting element being arranged to receive an insulated wire and to make electrical contact with a core of the insulated wire;
a second set of connecting elements, each connecting element of the second set of connecting elements being connected to a corresponding one of the first set of connecting elements and arranged such that a free end of each of the connecting elements of the second set of connecting elements extends into the cavity to define a contact for electrical connection to a contact carried by the plug;
wherein the housing is formed by first and second parts, the first part having a lower wall facing the second part with channels formed therein in which are arranged a part of each of the connecting elements of the second set of connecting elements with the free ends thereof extending past an end wall of the first part which is transverse to the lower wall;
and wherein the second part includes an end portion defining said cavity such that when the first and second parts are interconnected the end portion is located adjacent the end wall of the first part, the end portion having a structure adapted to bend the free ends of the second set of connecting elements during interconnection of the first and second parts so that the free ends extend into the cavity angled toward 90° with respect to said part of each of the connecting elements of the second set of connecting elements in the channels.

15. A connector for connecting a modular telecommunication plug to electrically insulated wires, formed by the steps of:
forming a first moulded housing part including pillar portions defining a plurality of slots between adjacent pillar portions and a central portion between a first and second row of the pillar portions, the central portion having a lower surface defining a plurality of grooves and the central portion having a front side surface defining a front surface plurality of grooves aligned with the lower surface grooves;
positioning cutting/clamping contact elements in said plurality of slots to form cutting/clamping connectors between the pillar portions, the cutting/clamping contact elements including a first set of connecting elements extending to a lower portion of the first housing part;
positioning a second set of connecting elements in the lower surface grooves, each of the second set of connecting elements including a contact tongue;
welding each of the contact tongues of the second set of connecting elements to a corresponding lower portion of each of the first set of connecting elements;
providing a second housing part having a cover portion for covering the second set of connecting elements in the grooves and a socket integrally formed therewith and projecting substantially normally therefrom, the socket defining a cavity for receiving the modular telecommunication plug and having a surface portion extending into the cavity;
connecting the first and second housing parts so as to bend a portion of the connecting elements with the second housing part surface portion such that a portion of the second set of connecting elements extends into the cavity angled toward 90° with respect to a portion of the connecting elements positioned in the grooves."

EVIDENCE

In Support

· A statutory declaration by Kenneth Graham Freestone, electrical engineer, presently occupying the position of Managing Director of the opponent company.  This declaration is accompanied by exhibits KGF 1-22, being mainly patent specifications, also some product information from the opponent, an actual connector which is said to be constructed according to the teachings of the present specification, and two Austel permits concerning various telecommunications connectors, respectively dated earlier and later than the priority date.

· A statutory declaration by Lee Dorset Pippard, the patent attorney acting for the opponent in this matter, with exhibits LDP 1-4, concerning the dates of publication in Australia of the patent documents mentioned above.

· A statutory declaration by Rowland Spencer White, electronics engineer, evidently Chief Technical Officer of the opponent's parent company, accompanied by exhibits RSW 1-4.  The exhibits comprise several patent specifications, some further product information, and an extract from the specifications for the RJ45 type of connector.

The evidence shows that plugs and jacks of the WE8W/RJ45 type, and other telecommunications connectors, with and without IDC's, were well known before the priority date.

However the claims were substantially amended subsequent to the service of this evidence, and a comparison of the main claims at acceptance and as they are now shows, in my opinion, that most of the evidence is no longer very relevant, the main exception being KGF 14, which I will return to.

In Answer

· This consists solely of a statutory declaration by George Georgevits.  Mr Georgevits states that he is a Consulting Communications Engineer, and that he has experience in, among other things, local and wide area voice and data networks and their cabling.

Mr Georgevits' declaration is in respect of the claims as first proposed to be amended, and while there are significant differences between those claims and the present claims, it seems to me that there is sufficient similarity for his comments to retain some relevance.

In Reply

· Nil

SUBMISSIONS

On the day of the hearing the attorney for the opponent lodged brief written submissions, and I advised the attorneys for the applicant that I would allow two weeks from the day of the hearing in which they could file a written response, if they wished to do so.  I also requested that they advise this Office as soon as convenient if they decided not to.  In the event, no response was received.

From the Opponent

· All the claims are invalid for the various reasons asserted during the opposition proceedings, lacking novelty, inventiveness, clarity, and fair basis.  However I note that, except as follows, there was no detailed argument to support such generalised assertions against the claims as amended.

· More specifically, it was submitted that AU 34876/89 (KGF 14), published 21 December 1989, discloses all the features of claim 1.

· In the alternative, claim 1 is obvious in view of this document, which (it was said), teaches the general concept of bending contact elements into an area within a dielectric block during interconnection of two parts, and whether this is to or from 90° is an obvious design alternative.

· It was submitted that there was no support in the description for the words in claim 1 (last three lines) regarding the position and angling of the free ends of the second set of connecting elements when the connector is assembled.

· The words "toward 90°" (claim 1 second last line) is not clear, as having regard to Fig 12 of the drawings, it appears to include about 120°.

· These submissions apply equally to claim 15.

From the Applicant

· The claimed construction means that the contacts in the socket do not have to be preformed, as they are formed by the assembling of the two housing parts, and a shorter length of contact is achieved, thus reducing crosstalk between adjacent conductors.

· It was not agreed that a reasonable construction of that part of claim 1 regarding the bending of the connecting elements is unclear or lacking basis in the description.

· It was agreed that the most relevant prior art is that of KGF 14.  It was submitted however that the socket construction in this document has preformed contacts which, on assembly, exhibit a "return bend".  This is referred to in the Georgevits declaration as a feature common in the prior art, and occurs when contact elements are bent back in a direction approximately opposed to the original direction, ie tending toward 180°.  In the present invention, in contrast, the contacts are bent toward 90°.  This bending is necessary to provide the contacts with the resilience required for this type of socket.

· Regarding obviousness, it was submitted that, as the 1952 Act applied, and there was no evidence that KGF 14 was in the common general knowledge in the art at the relevant date, then this ground was not made out.

· Concerning the Austel permits, it was stated that it was only the second permit, dated 26 August 1994, that covered sockets manufactured according to the present claims.

· Should the opposition fail, the applicant asks to be awarded costs in its favour, or at least those costs arising subsequent to the final amendments.

DECISION

The only specific issues now raised by the opponent against the amended claims relate to independent claims 1 and 15 in regard to KGF 14, and some section 40 matters.  There being nothing else apparent to me, I will restrict my decision to these issues.  References to claim 1 will generally apply equally to claim 15.

Section 40

In final written submissions the opponent maintained some clarity and fair basis objections, going to the meaning of "angled toward 90°" as used in claim 1, and the basis for this expression in the description.

It is perhaps intrinsically difficult to accurately define, without unwarranted limitation, all the essential elements of what is a reasonably complex mechanical arrangement, and I think that the rules for claims construction should be borne in mind, such as the one stipulating that the claims should not be read in isolation; see Decor Corp Pty Ltd v Dart Industries Inc 13 IPR 385.

I consider that if there was any doubt about the meaning of "angled toward 90°" then a quick look at the description and Fig 1 would remove it.  On assembly the free ends of the second connecting elements are bent through an angle which cannot exceed 90°, but they are finally retained in individual slots at an angle of perhaps about 60° relative to their initial position.  Insertion of a plug into the cavity resiliently engages the elements and depresses the free ends to about 90°, thus ensuring proper electrical contact.

Then, while it appears that the expression "angled toward 90°" is not actually used in the description, nonetheless I think that it is a fair attempt at a concise definition of what is in fact happening when the housing parts are interconnected.

I conclude that there are no section 40 issues needing attention.

Novelty

There were no submissions made distinguishing between paragraphs (e) and (h) of section 59, Patents Act 1952.

The test for want of novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries (1977) 137 CLR 228 where Aickin J said at 235:

" 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..."

The general rule as to what constitutes an infringement has been expressed by Lord Upjohn in Rodi & Weinenberger AG v Henry Showell Ltd (1969) RPC 367 at 391 as follows:

" The essential integers having been ascertained, the infringing article must be considered.  To constitute an infringement the article must take each and every one of the essential integers of the claim."

It was not argued that any of the features of claim were inessential, and I do not consider that there is any reason to think that might be the case.  Referring to Figs 1 & 2 of KGF 14 and the relevant description, it is apparent that what is disclosed is a modular socket which is quite similar in some respects to that now claimed.  It includes a housing comprising two parts (120 and 130), part 120 carrying IDC's (121 and 140), the IDC's contacting a lead frame (150) which is comparable to the second set of connecting elements claimed, which are located in matching channels in the housing part 120, and which have "free ends (153)".  When the housing part 130 is attached to part 120 it acts to bend the free ends through an acute angle so as to form contacts located in a plug-receiving cavity.

However, it seems to me that claim 1 cannot be read onto this prior disclosure.  The free ends of the connecting elements of the lead frame do not extend past an end wall of the first housing part 120 as is claimed, nor is it clear that this part has anything that could properly be called an "end wall".  Also, it is difficult to say that the second housing part has an "end portion", which on assembly, is located adjacent the first part's "end wall", if indeed it could be said to have one.

Of more significance however, is that the free ends of the lead frame elements in the citation are already bent in a direction perpendicular to the general plane of the lead frame (ie preformed), and on assembly of the housing parts, they are bent again (ie a return bend).  In contrast, the presently claimed construction requires only a single bend of the free ends, of essentially the same magnitude as the second bend applied in the citation.

According to the Georgevits declaration in the evidence in answer, this is a significant difference over KGF 14 (and some other mentioned exhibits), as it reduces the length of the connecting elements and consequently reduces crosstalk.

I conclude therefore that KGF 14 does not disclose all the essential features of claim 1, and the ground of lack of novelty is not made out.

Obviousness

The test for obviousness under the Patents Act 1952 is whether the invention claimed would have been obvious to a non-inventive worker in the industry, equipped with the common general knowledge (cgk) in the industry, as at the priority date of the claim; see The Welcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262. The test must be made against what is proven to be cgk in the industry, being a "general body of knowledge" held and used by workers of ordinary skill in that industry; see Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253.

There was little attempt in any of the evidence to show what was cgk.  The prior disclosures most relevant to what is claimed are all patent documents, and in my opinion the evidence fails to show that any of them, including most importantly KGF 14, are in fact part of the cgk.  This being so, the ground of obviousness must fail.

But even if KGF 14 was shown to be cgk, I would still not find claim 1 to be obvious.  The present construction is materially different, and advantageously avoids the return bend of the second connectors which is characteristic of that prior construction (and numbers of others).  In my opinion the variation in construction is not one which would have been obvious to a person of ordinary skill in the art.

I conclude that the claims do not fail for obviousness.

CONCLUSION

I have found that none of the opposition grounds are made out in respect of the amended claims; accordingly I direct that the application proceed to sealing.

COSTS

Costs normally follow the event.  In this case the opposition has been successful insofar as it has resulted in significant amendment of the accepted claims, and in my opinion, had the accepted claims been similarly tested they would have been found to lack novelty.  However, pursuance of the opposition after the final amendments were made has failed.  Therefore I award those costs incurred up to making the final amendments against the applicant, and those thereafter against the opponent.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Melbourne

Patent attorneys for the opponent   :  Spruson & Ferguson