LifeSource Group Pty Ltd v Lambrini Dranganoudis - [2008] APO 22

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 2004253188 in the name of LAMBRINI DRANGANOUDIS

Title: Template System

Action: Opposition under section 59 of the Patents Act by LIFESOURCE GROUP PTY LTD

Decision: Issued 15 September 2008.
Abstract

The opposition was successful on the grounds of novelty and inventive step with respect to all claims of the application. This was the case irrespective of how the claims are interpreted or might be amended. The application was as a consequence refused.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2004253188 in the name of Lambrini Dranganoudis and opposition under section 59 of the Patents Act by LifeSource Group Pty Ltd

BACKGROUND

Patent application 2004253188 (the application) was filed on 1 July 2004 by Lambrini Dranganoudis (the applicant) under the provisions of the Patent Cooperation Treaty claiming priority from provisional application 2003903349 filed on 1 July 2003. The application was advertised accepted on 19 January 2006.

LifeSource Group Pty Ltd (the opponent) filed a notice of opposition to the application on 19 April 2006 followed by a statement of grounds and particulars on 19 July 2006. The service of evidence in support was completed on 19 September 2007 after the opponent had been granted several extensions of time unopposed. The applicant did not serve any evidence in answer.

I heard the matter in Canberra on 17 June 2008. The opponent was represented by Mr Adam Hyland of Watermark who appeared by telephone. The applicant did not participate in the hearing, or file written submissions.

THE SPECIFICATION

The specification filed in respect of the application (the specification) indicates that the invention relates to the removal of unwanted body hair.

The specification explains that it has recently become fashionable among men and women to remove a portion of unwanted body hair so as to express some individuality by shaping the remaining hair into a recognisable pattern. The pattern may be expressed as a “positive” or “negative”, that is, as an area of exposed skin from which the hair has been removed surrounded by remaining hair, or as an area of hair surrounded by exposed skin from which the hair has been removed.

The shaping of a well defined recognisable pattern by the conventional application of depilatory agents is awkward. The invention seeks to address or ameliorate this drawback or to offer a useful alternative.

The specification summarises the invention in language which corresponds to that of claim 1. Notably, it refers to the removal of hair from the human body in a shaped pattern by means of a depilatory agent and a template.

The specification next describes various embodiments of the invention with reference to a series of drawings. In the first of these, the template comprises flexible sheeting made from paper or plastic which is placed over a part of the body such as the scalp and a depilatory agent applied to the hair through a shaped central cut-out portion in the sheet. A coextensive area of the scalp is exposed after the depilatory agent has taken effect to produce a positive pattern. In the case of a negative pattern, the depilatory agent is applied around flexible sheeting having a shaped periphery to define the desired pattern of hair. Any remaining areas of hair may then be removed by conventional means.

The shaped portion cut from the flexible sheeting to produce a positive template may conveniently be used as an accompanying negative template.

10. The above process of producing a positive or negative pattern may be reversed by coating the underside of the flexible sheeting with a depilatory agent. In a further embodiment, the coating of depilatory agent rather than the flexible sheeting defines the desired pattern. Thus, in a template for producing a positive pattern, the agent is coated on a region of the flexible sheeting whose shape corresponds to that of the desired pattern. Conversely, the shaped region of the flexible sheeting is left free of depilatory agent in a template for producing a negative pattern.

11. The specification ends with thirteen claims of which claim 1 is as follows:

“ A system for the removal of unwanted hair by means of a template and a depilatory agent; said system adapted to the provision of a pattern by said removal; said template in the form of flexible sheeting and wherein the shaped periphery of said flexible sheeting defines said pattern; and wherein said depilatory agent is applied to said hair exposed around said shaped periphery of said flexible sheeting.”

12. Claims 2 to 11 are directly or indirectly dependent upon claim 1. In accordance with these claims, the unwanted hair includes chest hair or pubic hair, while the depilatory agent includes razors, electric shavers, waxes, creams, mousse, gels, or spray-on formulations. Claims 12 and 13 are directly appended to claim 1, and are in the form of omnibus claims which respectively relate to the embodiments illustrated in Figures 3 and 4 of the specification.

GROUNDS OF OPPOSITION

13. The grounds of opposition pursued by the opponent are that the claimed invention (i) is not novel and (ii) does not involve an inventive step.

THE EVIDENCE

14. The evidence in support consists of:

A statutory declaration made by Therese Montoya on 15 June 2007 together with exhibit TM-1;
A statutory declaration made by Adam Hyland on 15 June 2007 together with exhibits ALH-1 and ALH-2; and
A statutory declaration made by Debbie Mitchell on 13 September 2007.

15. Ms Montoya has worked as a beautician for approximately 21 years during which time she has performed many waxing services including artistic waxing involving the removal of hair in specifically shaped patches, or the trimming of hair so as to produce shaped residual regions of hair. Ms Montoya is presently employed by the opponent as a Training Manager/Administrative Assistant whose duties include training sales and retail staff in the use of the opponent’s hair removal and depilatory products.

16. According to Ms Montoya, there are a number of ways of removing hair from the human body that are well known to practising beauticians. These include shaving or cutting using razors, hair clippers and electric razors or shavers, and the application of depilatory waxes, creams, sprays, mousse and gels. The depilatory products may be applied by placing a strip of material coated with the product onto the skin and hair. The hair is removed by pulling the strip away from the skin.

17. Ms Montoya continues as follows:

“In my opinion, and according to my recollection, it was well known particularly with the strip-type depilatory treatments that if the treatment was applied in a specific area, the shape of the hairless area, from which hair had been removed, would closely resemble the shape of the strip used or the area to which the cream or gel has been applied. This kind of technique was used on customers who, for example wanted their pubic hair to resemble a narrow ‘strip’ – which we called a ‘landing strip’ or ‘Brazilian’.
When a client wanted a particular area of hair removed, I would usually cut the strip to a particular shape or size to produce the desired shape or effect in the client’s skin.”

18. Ms Montoya goes on to say that these techniques could be used to remove hair from all parts of the human body.

19. This evidence is corroborated by Ms Mitchell, an independent declarant who has worked as a beauty therapist since 1991. She commenced bikini line and “Brazilian” waxing approximately 14 years ago in which hair is removed to create a positive or negative pattern as desired. In about 1996 Ms Mitchell trialled the use of a shaped template but did not favour this approach.

20. Mr Hyland appeared for the opponent in these proceedings. He exhibits copies of certain documents relating to the prosecution of the application but which are not presently relevant.

21. As already mentioned, the applicant did not serve any evidence in answer.

FURTHER EVIDENCE

22. It is readily apparent from the statement of grounds and particulars that, in addition to its declaratory evidence, the opponent intended to rely on the following prior art documents:

US patent specification 4977672;
US patent specification 6336462; and
Webpage advertisement for “Jenna’s Hot Trimmer”, published by HotTrimmer, LLC at (the web page advertisement).

23. However, the opponent did not serve copies of these documents as evidence in support. After drawing Mr Hyland’s attention to this omission at the commencement of the hearing, of which he was clearly unaware, I indicated that the opponent could as a matter of public interest and expediency seek to introduce copies of the documents into the opposition proceedings as further evidence.

24. A request for leave to file further evidence was made on 17 June 2008. The request included a second statutory declaration from Mr Hyland which exhibits copies of the three prior art documents identified above (exhibits AH-1 to AH-3). In submissions accompanying the request, Mr Hyland contended that:

“… the applicant has suffered no real disadvantage by the opponent’s failure to put these documents directly in evidence. Each of the three documents was identified clearly and explicitly in the statement under Regulation 5.4. Further, none of these documents are at all difficult to obtain or review, two of them being published US patent specifications dating from 1990 and 2002, while the other prior art document is an archived internet web page readily obtainable from the “Wayback Machine Internet Archive” website, and where the website address and exact page address were provided to the applicant in the statement under Regulation 5.4. Further, one of the prior art documents, US patent no. 4,977, 672 would in fact have been very well known to the applicant, since it was the subject of substantial argument during the international phase of the PCT application from which the present application is derived.”

25. The request was granted by the Patent Office on 26 June 2008. The applicant subsequently asked that the Commissioner withdraw her consent to the request and provide a reasonable opportunity to make representations on it pursuant to regulation 5.10(5)(c)(i). By letter dated 4 July 2008, the office advised the applicant as follows:

“The opportunity to make submissions on granting this request to file further evidence was at the hearing. The applicant did not avail itself [sic: her] of this opportunity by choosing not to attend the hearing. There is nothing which indicates the Commissioner’s decision to grant leave to file further evidence was ultra vires.”

26. The applicant was allowed one month in which to file evidence in response to the further evidence, but again did not take advantage of this opportunity.

27. Consequently, it is open to me to consider the further evidence in the context of these proceedings.

ONUS OF PROOF

28. The onus of proof in these proceedings lies on the opponent who must establish that it is clear that a valid patent cannot be granted (F Hoffman-La Roche AG v NewEngland Biolabs Inc 50 IPR 305 at [67]). It is also the case that the standard of proof required is the civil standard on the balance of probabilities (Dunlop Holding Ltd’s Application [1979] RPC 523 at 543-4).

ISSUES OF CONSTRUCTION

29. The grounds relating to the patentability of the claimed invention which the opponent has pursued turn to some extent on the construction to be placed on claim 1.

30. Claim 1 speaks of a template in the form of flexible sheeting having a periphery which is shaped so as to define a pattern. Mr Hyland submitted that the ordinary meaning of the word “periphery” allowed the pattern to be defined by the outer boundary of the flexible sheeting or, alternatively, by the boundary of a cut-out portion in the sheeting. He then submitted that, when read in this light, reference to the remainder of the specification shows that the language of claim 1 imports either a positive template or a negative template.

31. The principles to be applied in construing the claims of a patent specification are well settled in law. Of present relevance is the tenet that each claim must be read as part of the entire specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the meaning of the words used in a claim may be affected by what is said in the body of the specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69). However, if the words of a claim are clear and unambiguous, it is not permissible to resort to the body of the specification to vary the scope of the claim (Interlego AG v Toltoys Pty Ltd 130 CLR 461 at 478).

32. Leaving aside for the moment the words of claim 1, it is clear that the body of the specification envisages the embodiment of the invention in either a positive template or a negative template. As I have already indicated, the specification teaches that a positive template is prepared by cutting a shaped central portion from the flexible sheeting. In use, the positive template is placed over a part of the body, and a depilatory agent applied to the hair lying within the cut-out portion to effect its removal and leave an area of exposed skin surrounded by hair over which the template was placed. On the other hand, a negative template does not have a cut-out portion. The depilatory agent is instead applied to the hair around the outer edge of the flexible sheeting. This process leaves an area of hair (which was masked by the template) surrounded by exposed skin from which hair has been removed by the depilatory agent.

33. I do not think that any element of doubt attaches to the ordinary meaning of the word “periphery”. The word is defined by the Macquarie Dictionary to mean either “the external boundary of any surface or area” or “the external surface, or outside, of a body”. Furthermore, there is nothing before me to suggest that the word “periphery” has been used in some special sense so as to give it a meaning it would not otherwise bear. As there is no ambiguity to be resolved here, Mr Hyland’s recourse to the body of the specification to interpret claim 1 is impermissible.

34. Mr Hyland has argued that, on its ordinary meaning, the word “periphery” could refer to the boundary of the cut-out portion of a positive template. That might be so, but it must be borne in mind that in approaching the task of construction, the features of a claim should be considered collectively and not in isolation (Nesbit Evans Group AustraliaPty Ltd v Impro Ltd 39 IPR 56 at 80). Claim 1 stipulates that the depilatory agent is applied to the hair which is exposed around the periphery of the flexible sheeting. Mr Hyland submits that these terms are satisfied by hair exposed “inside” the cut-out portion. Put another way, Mr Hyland has maintained the view that the words “around the periphery” do not exclude a positive template. In my opinion, however, this construction departs from the plain meaning of the word “around” and as such is inconsistent with what the body of the specification has shown to be meant by a positive template.

35. I accordingly find that, when properly construed, the language of claim 1 embraces a negative template only. As a matter of logic, this finding must also apply to the balance of the claims.

36. Although not in contention, I observe from the specification as a whole that the word “applied” in claim 1 allows the depilatory agent to be applied to the hair to be removed either directly or as a coating on the flexible sheeting.

NOVELTY

37. The basic test for anticipation or want of novelty has been said to be the same as that for infringement (Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at [313]). This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at 549).

38. In my opinion, every feature of claim 1 can be considered essential. A feature is essential if the applicant has made it an essential feature by the terms of the claim when properly construed (Catnic Components Ltd v Hill and SmithLtd [1982] RPC 183 at 228), and this seems to me to be the case here. Neither party has advanced a contrary view.

39. According to authority, an alleged anticipation must be the same as the claimed invention for the purposes of “practical utility”. This means that a prior publication will only destroy novelty if it contains sufficient information to enable a person skilled in the relevant art to produce the invention. The matter was put in this way in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-6:

“… if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if a patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.”

40. The directions must be clear and unmistakable. As stated in Flour Oxidising Co Ltd vCarr & Co Ltd 25 RPC 428 at 457:

“But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier specification could have been used to produce this or that result. It must also be shown that the specification contains clear and unmistakable directions so to use it.”

41. I now turn to the prior art documents which the opponent alleges anticipate the claimed invention.

US 4977672

42. This document (see exhibit AH-1) discloses a hairstyling template. The template is made of flexible material so that it can be bent to the curvature of the head, and has an aperture formed therein in the shape of the design to be cut in the hair. In use of the template, the hair from within the template aperture area is removed by hair clippers so as to leave an exposed area of scalp which can be coloured if desired.

43. It is evident from this brief analysis that US 4977672 is concerned with a positive template. As this form of template does not fall within claim 1, I find that the claimed invention is novel when compared to US 4977672.

US 6336462

44. This document (see exhibit AH-2) discloses an eyebrow shaping template. The template comprises a flexible substrate having an adhesive coating on one side thereof for temporarily attaching the template to the skin of the user. An opening is formed through the adhesive coating and the template which defines the desired shape of a left or right eyebrow. The template is used to perform an eyebrow shaping or colouring procedure whereby eyebrow pencil, powder, or other suitable colouring cosmetic is applied through the opening to the eyebrow.

45. In another embodiment, the eyebrow shaping template may also be employed as an eyebrow waxing template by replacing the adhesive coating with a depilatory coating which is applied to the area of the substrate surrounding the opening.

46. Mr Hyland has suggested that the eyebrow waxing template creates a positive pattern. I do not think this is correct since the depilatory coating on the template removes any unwanted hair in the region of the eyebrow (see column 9 lines 62-65). Thus, for practical purposes, the eyebrow waxing template is equivalent to the negative template illustrated in Figures 3 and 4 of the specification. The depilatory coating may be heat-activated, such as a depilatory wax, or pressure-activated, such as a depilatory jelly.

47. In a further embodiment, the opening in the substrate is formed by a stamping process whereby a “chad” is produced having the shape of the opening. The chad is applied to an eyebrow when a further procedure, such as depilation of the skin around the eyebrow, is to follow (see column 9 lines 13-31). In other words, the hair surrounding the shaped periphery of the chad is removed by depilation. The chad thereby functions in precisely the same manner as the negative template depicted in Figure 1 of the specification. The clear inference here is that application of the depilatory agent leaves a region of remaining hair substantially coextensive with the chad. This is also the case with the eyebrow waxing template discussed earlier.

48. In view of the foregoing analysis, I find that US 6336462 deprives claims 1, 6, 9 and 11 of novelty. Although this document indicates that the depilatory coating may be chosen from a variety of compositions, it does not disclose the use of creams or mousse to the requisite level of certainty. The document additionally fails to disclose the particular shape of the template depicted in Figures 3 and 4 of the specification. I therefore do not concur with Mr Hyland that US 6336462 anticipates claims 7, 8, 12 and 13.

The web page advertisement

49. As prescribed by section 25 of the Acts Interpretation Act 1901, the web page advertisement (see exhibit AH-3) falls within the category of “document” for the purposes of section 7(1) of the Patents Act. Furthermore, Mr Hyland has submitted by reference to a commercial internet archiving database that this document was published well before the priority date. In the absence of evidence to the contrary, I accept his submission at face value.

50. The web page advertisement discloses a number of differently shaped negative templates for use with a battery-operated trimmer to remove unwanted hair in the pattern of choice from the pubic region.

51. Accordingly, I find that this document deprives claims 1, 2, 5 and 11 of novelty.

Summary on novelty

52. I have found that this ground of opposition succeeds to the extent that the invention as claimed in claims 1, 2, 5, 6, 9 and 11 is not novel.

INVENTIVE STEP

53. Broadly speaking, under section 7(2) of the Patents Act an invention is taken to involve an inventive step when compared to the prior art base unless it would have been obvious to a person skilled in the relevant art in the light of common general knowledge within Australia either when considered alone or together with information made publicly available anywhere in the world. Section 7(3) of the Patents Act restricts the information to that which could reasonably expected to have been ascertained, understood and regarded as relevant by the skilled person.

54. The law on inventive step was most recently reviewed in Lockwood Security ProductsPty Ltd v Doric Products Pty Ltd [2007] HCA 21. The general principles involved were set out as follows at [52]:

“… as a basic premise, obviousness and inventiveness are antitheses and the question is always “is the step taken over the prior art an ‘obvious step’ or an ‘inventive step’”? An inventive step is often an issue “borne out by the evidence of the experts”. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be “some difficulty overcome, some barrier crossed”. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which “any fool” could devise. It also accords with the requirement in the United States that for an invention to be “non-obvious” it must be “beyond the skill of the calling”.” (references omitted)

The person skilled in the relevant art

55. The question of inventiveness is to be determined through the eyes of the person skilled in the relevant art.

56. As observed in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 242, the person skilled in the art is “likely to have a practical interest in the subject matter of [the] invention”. The authorities also recognise that while the skilled person against whose efforts the claimed invention is to be tested may be assumed to be well-versed in the relevant art, such a person must be taken to be non-inventive (see, for example, Minnesota Mining & Manufacturing Co v Beiersdorf (Aust) Pty Ltd 144 CLR 253 at 293).

57. In the present case, the relevant art is the removal of unwanted hair from the human body in specific patterns. I agree with Mr Hyland that the skilled person is a person having experience in the field of decorative hair removal, such as a qualified beautician. I consequently also agree that Ms Montoya and Ms Mitchell can properly be regarded as a person skilled in the relevant art.

Common general knowledge

58. Common general knowledge consists of the background knowledge and experience that is available to all in the relevant art (Minnesota at 292).

59. Based on the unchallenged evidence of Ms Montoya and Ms Mitchell, I accept that it was commonly known by those engaged in the art in Australia at the relevant date that hair from all parts of the body, and in particular the pubic region, could be removed utilising a range of depilatory agents. These agents included hand razors, hair clippers, electric shavers, depilatory waxes, depilatory creams, depilatory sprays, depilatory mousse, and depilatory gels.

60. I am also persuaded by the evidence that strip-type depilatory techniques formed part of the common general knowledge. Specifically, it was known that where a strip of material coated with a depilatory agent is applied to the skin, and then removed by pulling, the skin will become denuded of hair in a shape approximating the shape of the strip.

61. Mr Hyland has indicated that the opponent is “not presenting the argument that templates, while not unknown in the field in Australia at the priority date, were part of the CGK at that time.” There is, in any event, insufficient evidence to support the contrary view. The reasons for this are two-fold. First, the depilatory strips referred to by Ms Montoya and Ms Mitchell do not seem to meet the general description of a “template”, let alone a template having a shaped periphery around which a depilatory agent is applied as recited in claim 1. And second, Ms Mitchell has stated that she once trialled a negative template but eventually abandoned its use as it was easier to shape the hair “free-hand” to meet the individual needs of clients. It could hardly be said on the basis of this trial that templates had entered the realm of common general knowledge in the art.

62. There is also no evidence to show that any of the prior art documents on which the opponent relies had assimilated into common general knowledge.

63. As the use of templates has not been proven to be common general knowledge in the relevant art, I am unable to find that the claimed invention does not involve an inventive step in the light of common general knowledge alone.

64. This leaves me to consider whether the position is changed when the common general knowledge is considered together with the prior art documents on which the opponent has placed reliance.

Prior art information

65. Mr Hyland has contended that manufacturers of depilatory products, such as the opponent:

“… regularly survey the marketplace to gauge the activity of potential competitors. This includes scanning databases for relevant information and engaging the services of patent attorneys to perform searches and watches on competitor intellectual property, including patents and designs.”

66. Again in the absence of rebutting evidence, I am satisfied that the prior art documents in question prima facie were all reasonably ascertainable in the sense required by section 7(3). There can be no doubt that these documents would be understood by the skilled person, and regarded as relevant as they are all concerned with the removal of unwanted body hair in a shaped pattern.

US 4977672

67. I have already found that the disclosure of this document is confined to a positive template. There is no evidence whatsoever to suggest that the common general knowledge would have led the skilled person as a matter of course to replace the positive template disclosed by US 4977672 with a negative template.

68. Accordingly, I find that the claimed invention involves an inventive step when this document is brought together with the common general knowledge.

US 6336462

69. This document has been earlier found to disclose all the features of claims 1, 6, 9 and 11. Furthermore, the evidence has established that the depilatory agents specified in claims 4, 5, 7, 8 and 10 were common general knowledge in the art in Australia at the relevant time. I am therefore of the view that the use as appropriate of any one of these agents in conjunction with either form of negative template disclosed by US 6336462 would naturally occur to the skilled person.

70. The evidence additionally establishes that the effectiveness of these depilatory agents in removing hair from all parts of the body was also well known in the art. The skilled person would as a result immediately perceive the applicability of the negative templates disclosed by US 6336462 to the removal of hair from areas of the body other than the eyebrows, such as the pubic region (as in claim 2) or the chest (as in claim 3).

71. Claims 12 and 13 essentially differ from the combination of this document and the common general knowledge only in respect of the shape of the periphery of the template. However, this difference is merely a matter of design choices which would naturally suggest themselves to the skilled person.

72. Overall, then, I find that the invention as claimed in claims 1 to 13 does not involve an inventive step in light of the common general knowledge when considered together with US 6336462.

The web page advertisement

73. For the same reasons I have discussed in relation to US 6336462, I find that the invention as claimed in claims 1 to 13 does not involve an inventive step in light of the common general knowledge when considered together with the web page advertisement.

Summary on inventive step

74. I have found that this ground of opposition succeeds in respect of all claims.

CONCLUSION

75. I have found in favour of the opponent on the grounds of novelty and inventive step. In light of my findings, I am unable to identify any patentable subject matter disclosed in the specification that could form the basis of a valid claim.

76. For completeness I observe that even if, contrary to my findings on construction, a positive template could be read into claim 1, or, alternatively, claim 1 was amended to expressly avoid US 6336462 and the web page advertisement, the invention as claimed in claims 1 to 13 would still lack novelty and inventiveness when compared to US 4977672 and the common general knowledge.

77. Accordingly, I refuse the application.

COSTS

78. I see no reason to depart from the usual practice that costs follow the event and, consequently, I award costs under schedule 8 against the applicant.

O L Haggar
Delegate of the Commissioner of Patents

15 September 2008

Patent attorneys for the applicant: Slaters Intellectual Property Lawyers, Sydney
Patent attorneys for the opponent: Watermark, Sydney