Lingner & Fischer GmbH v Colgate-Palmolive Company
[2001] APO 35
•27 July 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 700097 in the name of LINGNER & FISCHER GMBH
Title: TOOTHBRUSH HAVING A FLEXIBLY LINKED ZONE IN ITS HEAD
Action: Opposition under section 59 of the Patents Act 1990 by COLGATE-PALMOLIVE COMPANY
Decision: Issued .
Abstract
The opponent had raised grounds of novelty, inventive step and section 40/fair basis.
The opponent has been successful on the grounds of novelty and inventive step. The
opponent was unsuccessful on the ground of section 40/fair basis.
The opponent contended that "toothbrushes having flexible handles or flexible zones in
their handles for accommodating the orientation of the bristle-bearing head of the brush to
the profile of the user's teeth and gums during brushing" was well known in the art. Several
citations raised by the opponent illustrated this principle. However only one of the
citations, US 759490 disclosed a toothbrush with the features of:
· a space, which crosses the boundary between the handle and the head
· the said space containing an elastomeric material
· the said space and elastomeric material forming a resilient flexible link between the base of the head and the handle.
Claims 1 to7 were found to lack novelty and an inventive step in light of US 759490.
Claim 8 (embodying the invention shown in figures 1, 2 and 4) was found to be novel and
to have an inventive step over US 759490.
Costs were awarded against the applicant Lingner & Fischer GmbH and in favour of the
opponent Colgate-Palmolive Company.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 700097 by LINGNER & FISCHER GMBH and opposition under section 59 of the Patents Act 1990 by COLGATE-PALMOLIVE COMPANY.
BACKGROUND
Lingner & Fischer GmbH (L&F) filed patent application 60504/96 on 16 July 1996 as a further application of Australian patent application 13737/92. Patent application 13737/92 claimed priority from two British Applications 9106493 and 9126380 filed on 27 March 1991 and 12 December 1991 respectively. Patent application 60504/96 was advertised accepted on 24 December 1998 with Acceptance No. 700097.
Colgate-Palmolive Company (Colgate) filed a notice of opposition on 24 March 1999. During the opposition process L&F requested leave to amend the specification of patent application 700097 on 20 April 2000. Allowance of the amendments was advertised on 21 December 2000. I shall have regard to the specification as amended by the request dated 20 April 2000 for the purpose of this opposition.
Evidence in support was served in full by 24 January 2000. Evidence in answer was not served and consequently there was no evidence in reply.
The hearing was held in Melbourne on 1 May 2001. The applicant (L&F) did not appear at the hearing, having indicated earlier on (via their attorney, Davies Collison Cave of Melbourne, by a letter dated 18 April 2001) that they did not propose to appear at the hearing. Paul Kilborn, patent attorney, F B Rice & Co, Sydney, represented the opponent (Colgate).
STATEMENT OF GROUNDS AND PARTICULARS
Colgate filed a statement of grounds and particulars dated 24 June 1999. They contended that the invention claimed lacked novelty and did not involve an inventive step. They also submitted that the specification did not comply with the requirements of Section 40.
EVIDENCE
The only evidence filed was evidence in support, which consisted of the following declarations:
Martin John Tyas, dated 21 January 2000 and exhibits MJT-1to 4. He states that he has a Bachelor of Dental Surgery and a PhD from the University of Birmingham, a Doctor of Dental Science from the University of Melbourne and a Graduate Diploma in Health Sciences from the Curtin University of Technology. He states that he is currently Associate Professor and Reader, School of Dental Science, Faculty of Medicine, Dentistry and Health Sciences, at the University of Melbourne.
Paul Anthony Kilborn, dated 24 September 1999 and exhibits PAK-1 to 16 and another declaration dated 24 January 2000 together with exhibit PK-1. He states that he is currently a registered patent attorney with the firm of F B Rice & Co, Melbourne.
SPECIFICATION
The invention of the specification is directed to a toothbrush having a resilient flexible link between its head and its handle. The specification identifies the defects of the prior art as follows:
· When using a conventional toothbrush having a rigid head it can be difficult to reach all parts of the teeth to brush satisfactorily.
· It is difficult with conventional brushes to maintain an optimum angle between the teeth and the head of the toothbrush for effective brushing and cleaning, necessitating continual repositioning of the brush in the hand throughout the brushing process.
· As a result of the above there is a tendency to apply excess brushing pressure to some teeth and insufficient pressure to other teeth.
· The resultant combination of excess brushing pressure and inadequate/bad cleaning technique can result in damage to both teeth and gums.
· Angled-head toothbrushes do not satisfactorily meet all the requirements to overcome the difficulties outlined above.
and then states:
"In some circumstances it is desirable to further improve the flexibility of the head relative to the direction of the handle of the toothbrush."
The consistory statement defines the invention as:
"…a toothbrush having a handle and a bristle-bearing head integrally made of plastics material, wherein at the extreme head end of the handle there is a space in the plastics material, which crosses the boundary between the handle and the head, the said space containing an elastomeric material, the said space and elastomeric material forming a resilient flexible link between the base of the head and the handle about which the head can rock relative to the handle."
A number of embodiments are described including some shown in drawings. The specification ends with eight claims as follows:
"1. A toothbrush having a handle and a bristle-bearing head integrally made of plastics material, wherein at the extreme head end of the handle there is a space in the plastics material, which crosses the boundary between the handle and the head, the said space containing an elastomeric material, the said space and elastomeric material forming a resilient flexible link between the base of the head and the handle about which the head can rock relative to the handle.
2. A toothbrush according to claim 1, wherein the handle is integrally linked to the head by means of a linking resilient spine.
3. A toothbrush according to claim 1 or 2, wherein the space extends inwardly from the outer surface of the handle and head and is filled with an elastomeric material.
4. A toothbrush according to claim 3, wherein the space is filled with an elastomeric material up to the full depth of the space.
5. A toothbrush according to claim 3 or 4, wherein the space extends across the whole width of the toothbrush handle over at least part of the length of the handle.
6. A toothbrush according to any one of the preceding claims, wherein the material of the handle and head is a plastics material, and the elastomeric material in the space is a natural or synthetic latex type elastomer.
7. A toothbrush according to any one of the preceding claims, wherein the material of the handle and head is a plastics material which is of a different colour to the elastomeric material in the space.
8. A toothbrush substantially as hereinbefore described with reference to the accompanying Figures 1, 2 and 4.
SUBMISSIONS
I have only the submissions of the opponent available to me and I shall refer to these wherever necessary in my decision.
DECISION
Section 40/Fair Basis
The opponent raised a number of matters and I shall address these on an individual basis. Professor Tyas referred to a number of inconsistencies and lack of clarity that he encountered in the description and claims. His declaration is based on the specification at acceptance. He raised the following issues:
1. The title and description refers to "toothbrush having a flexibly linked zone in its head", whereas claim 1 requires that the flexible link be between the base of the head and the handle.
2. The statement "improve the flexibility of the head relative to the direction of the handle" lacks clarity and no further explanation is provided in the description.
3. The description at page 3, lines 11-15 states, "The toothbrush head…can move in a rocking movement relative to the handle…Moreover the ability of the head to "float" relative to the handle enables a much more gentle brushing action". Claim 1 defines the feature of rocking movement but has made no mention of the head being capable of floating relative to the handle.
4. The description makes extensive references to the extended portion of the handle. However the consistory statement of the invention at page 3, lines 4 to 9 and claim 1 omit this feature when characterising the toothbrush.
5. Claim 1 requires that the toothbrush have "a space in the plastics material crossing the boundary between the handle and the head." However:
a) the embodiments of the invention shown in figures 1 to 3, do not appear to have a space crossing the boundary between the handle and the head.
b) the claim does not specify the dimensions or shape of the so-called "space'.
c) the space is said to contain an elastomeric material but the claim does not require the space to be fully occupied by the elastomeric material. Further if the space is filled with elastomeric material, there is no longer a space.
6. Claim 1 lacks clarity as it is not clear as to how a space can form a resilient link between the handle and the head. It would appear that it is the plastics material, within which the space is formed, that forms the resilient link.
7. Claim 1 defines a toothbrush wherein the head and handle are said to be "integrally made of plastics material". It is not clear if "integrally refers only to the head or to both the handle and the head. Further the claim does not specify the physical properties of the "plastics material". Therefore it would appear that claim 1 encompasses "plastics material" that is rigid and/or brittle, which material would not form a flexible link between the head and the handle.
8. Claim 8 is directed to a toothbrush substantially as described with reference to the drawings. However, figures 1 to 3 of the drawings show toothbrushes that are not in accordance with claim 1 of the opposed specification. This inconsistency renders the specification unclear.
Looking at item 1 I note that the expression, "toothbrush having a flexibly linked zone in its head" appears only in the title and on page 2, lines 8-9 of the description. Throughout the description, claims and drawings disclosure is made showing that the flexible link is between the base of the head and the handle. The embodiments in figures 1 and 2 clearly show a flexibly linked zone in the head of the toothbrush (but again it is a link between the base of the head and the handle). I consider that this is a minor inconsistency, which can be resolved from a proper reading of the specification as a whole (see Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69). I do not consider that it contravenes section 40.
In item 2, the specification at page 3, lines 1-2 states, "In some circumstances it is desirable to further improve the flexibility of the head relative to the direction of the handle of the toothbrush". Looking at the specification as a whole and in particular the embodiments I find the following:
· Figures 1D, 1E, 1F (and the related description) show the movement and flexibility of the head (44) relative to the handle (41).
· Figures 2D, 2E, 2F (and the related description) show the movement and flexibility of the head (51) relative to the handle (53).
Thus the description has provided a clear indication of the flexibility of the head relative to the handle. The statement in the description is merely expressing a desire of improvement over prior art flexibility. I do not consider that the specification offends section 40 in this regard. In particular the requirement of section 40 for a complete specification is that:
· there be a full description of the invention, including the best method known to the applicant of performing the invention, and
· that it end with a claim or claims defining the invention, and
· the claim or claims must be clear and succinct and fairly based on the matter described in the specification.
Thus I do not consider that the statement of item 2 renders the specification as lacking clarity in the light of the requirements of section 40.
Item 3 refers to " Moreover the ability of the head to "float" relative to the handle enables a much more gentle brushing action". I note that the term "float" has been placed in inverted commas, thus indicating that it may have a meaning other than its literal meaning. Reading the specification as a whole the emphasis appears to lie in the rocking movement. The floating aspect appears to indicate a gentle form of contact between the head and the handle, rather than a rocking motion based on a more rigid link between the head and handle. In particular the embodiments of figures 1 and 2 disclose the following:
An extended portion of the handle fits within a socket in a frame-shaped head of generally U or V shape. The relative sizes of the extended portion and socket are such as to leave a narrow gap between the extended portion and the head. The gap is open on its lower side - that is there is no seal between the base of the head and the base of the extended portion of the handle. However the gap's upper side is closed with a thin diaphragm of elastomeric material which is of a thickness such as to be flexible and resilient.
In light of the above, the head-which is linked by a thin strip of elastomeric material at the top end of the socket-may be said to "float" relative to the handle. I note that in this embodiment the head can also rock relative to the handle. Throughout the specification clear reference is made to the rocking movement of the toothbrush head relative to the handle. The claims, also, do not refer to any floating movement. The claims define the rocking movement. From a proper reading of the specification as a whole (see Rosedale v Carlton Tyre (supra)), the feature of the floating movement is not set out as an essential feature and the claims do not claim it. I do not consider that it offends against section 40.
Item 4 refers to an extended portion of the toothbrush handle. The consistory statement sets out the broadest form of the invention. I have to determine if the "extended portion of the handle" referred to by the opponent is essential to the working of the invention. The description and embodiments give examples where the handle has an extended portion. However the invention as set out in claim 1 and the consistory statement does not specify such a limitation. The relevant portion refers to:
"…wherein at the extreme head end of the handle there is a space in the plastics material, which crosses the boundary between the handle and the head, the said space containing an elastomeric material, the said space and elastomeric material forming a resilient flexible link between the base of the head and the handle about which the head can rock relative to the handle" (my emphasis).
Thus one can see that an extended portion of the handle is not an essential feature, but is an embodiment of the invention, falling within the scope of claim 1. The opponent has not provided any evidence to show that extended portion is essential to the working of the invention. I do not consider that claim 1 lacks fair basis in not defining the feature of the extended portion of the handle.
In Item 5 the opponent refers to the feature of a "space in the plastics material crossing the boundary between the handle and the head." Looking at the embodiments in figures 1 and 2 (figure 3 and the related description was deleted in the last amendment) I note that a space is shown between the handle and the head. In figure 1, there is a gap/socket 43 between the extended portion of the handle 42 and the head 44. In figure 2 there is a gap/socket 54 between the extended portion of the handle 52 and the head 51. As the gap extends from the surface of the handle to the surface of the head, the gap in fact extends across an imaginary boundary line drawn between the two surfaces. In both cases the gap/socket crosses the boundary between the handle and the head. Further the opponent indicated that the dimensions or shape of the space should be specified in the claim. There is nothing in the specification to indicate that the dimensions or shape of the space is essential to the working of the invention. The opponent has not provided any evidence to this effect. If the skilled addressee can determine the shape and dimensions of the space as a matter of routine, there is no requirement to specify the same in the claims (see No-Fume Ltd v Frank Pitchford and Co Ltd (1935) 52 RPC 231). The opponent also indicated that the claim did not require the space to be fully occupied by the elastomeric material. The description has disclosed embodiments wherein the elastomeric material partly occupies the space between the head and the handle. Consequently there is a real and reasonably clear disclosure of the said feature on which the claims are fairly based (see CCOM Pty Ltd v Jeijing Pty Ltd, 28 IPR 481 and Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis, 30 IPR 479). Further there are also embodiments in which the space is fully occupied by the elastomeric material. The opponent contends that if this is the case then there is no longer a space. However it still constitutes a space between the head and the handle which is filled with material (my emphasis). The description and claims indicate that the space is essential to the working of the invention. If the space itself were not defined then the claims would fail to define the invention described. Thus claim 1 in referring to "a space in the plastics material crossing the boundary between the handle and the head", does not lack fair basis, nor does it lack clarity.
Item 6 refers to claim 1 lacking clarity as it specifies that "the space forms a resilient link between the handle and the head". Current claim 1 clearly states "the said space and elastomeric material (my emphasis) forming a resilient flexible link between the base of the head and the handle…" Thus claim 1 does not lack clarity.
Item 7 refers to the matter of claim 1 defining "a toothbrush wherein the head and handle are said to be "integrally made of plastics material". The opponent contended that it was not clear if "integrally" refers only to the head or to both the handle and the head. The term "integral" as listed in the Macquarie Encyclopedic Dictionary (published by The Macquarie Library Pty Ltd in 1990) has the following meaning:
· "of or pertaining to a whole; belonging as a part of the whole; constituent or component."
The opponent appears to indicate that the head is an entity by itself. However the description clearly indicates that the head and handle constitute the toothbrush. Thus the term "integrally made" in the claim refers to the handle and the head. Further, if a term in the claim lacks clarity it is permissible to resort to the specification to determine the meaning of that term (see Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479). The specification at page 6, lines 6 to 11 makes the following disclosure:
"The diaphragm or spines may be made integrally with the extended portion and/or head (my emphasis) or as separate parts. For example if the extended portion and/or head are made of a plastics material the diaphragm or spines may be made in the same moulding operation as the frame and/or head. If the diaphragm is made of an elastomeric material it may be necessary to make and fit this separately."
The extended portion refers to the portion of the handle which is linked to the head. Thus I conclude that the head and handle may be made in the same moulding operation. Hence, the description makes clear the meaning of the term "integrally made".
The opponent also stated that:
"the claim does not specify the physical properties of the "plastics material". Therefore it would appear that claim 1 encompasses "plastics material" that is rigid and/or brittle, which material would not form a flexible link between the head and the handle".
Current claim 1 specifies that it is the space and elastomeric material which form a resilient flexible link between the head and the handle. The specification is to be read as a whole (see Rosedale v Carlton Tyre (supra)). In particular the description at page 6, lines 13 to 33, specifies the various plastic materials that can be used to manufacture the head and handle of the toothbrush. It has also specified suitable elastomeric materials. Thus the plastics materials encompassed within the claim would be those that would satisfy the requirements of flexibility and resilience as specified therein (a case of claiming by result - see No-Fume Ltd v Frank Pitchford and Co Ltd (1935) 52 RPC 231). The opponent has not indicated whether other than ordinary routine experimentation would be required to determine suitable plastics material that satisfies the requirements of the claim.
In the matter of Item 8 I have considered the embodiments of figures 1 and 2 and find that they are clearly consistent with the definition of the invention in claim 1. In particular both figures 1 and 2 have shown the gap or space as well as the elastomeric material, which provide the resilient flexible link between the head and the handle. The opponent has not specified the features which are not in accordance with claim 1. I have not found any such features. I consider that claim 8 is fairly based on the matter disclosed in the specification. I consider that the specification does not lack clarity in this regard.
In conclusion I find that the opponent has not established that the opposed specification lacks fair basis and is non-compliant with section 40.
Lack Of Novelty
The reverse infringement test from Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1976) 137 CLR 228 at 235 sets out the basic test for anticipation or want of novelty:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
It follows from the reverse infringement test that if a citation discloses all the features of the claim, the claim will lack novelty. If the citation does not disclose all the features of the claim, the claim will still lack novelty provided the citation discloses all the essential features of the claim; but if the essential features are not disclosed in the citation, the claim is novel (Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith Ltd (1982) RPC 183).
The features of claim 1 as are follows:
1. A toothbrush
2. having a handle, and
3. a bristle-bearing head
4. integrally made of plastics material,
5. wherein at the extreme head end of the handle there is a space in the plastics
material,
6. which crosses the boundary between the handle and the head,
7. the said space containing an elastomeric material,
8. the said space and elastomeric material forming a resilient flexible link between
the base of the head and the handle
9. about which the head can rock relative to the handle.
I have to determine the essential features of claim 1. Feature 4 refers to two aspects of the toothbrush. The first aspect refers to the handle and head being made integrally. From a reading of the specification as a whole, I do not find this to be an essential feature as it does not impact on the working of the toothbrush. The second aspect refers to the head and handle being made of plastics material. The specification indicates that:
"The handle, head and bristles of the toothbrush of the invention may be made of materials which are conventional in the manufacture of toothbrushes, especially plastics materials."
Thus the material of the toothbrush bristles, head and handle is not essential to the working of the invention. I consider the following features to be the essential features of claim 1:
1. A toothbrush
2. having a handle, and
3. a bristle-bearing head
4. wherein at the extreme head end of the handle there is a space,
5. which crosses the boundary between the handle and the head,
6. the said space containing an elastomeric material,
7. the said space and elastomeric material forming a resilient flexible link between
the base of the head and the handle
8. about which the head can rock relative to the handle.
The opponent raised 12 documents in this matter. I have considered all these documents. I find that only 4 of these documents directly challenge the novelty of the opposed claims and I shall address them individually.
US 759490 (exhibit PAK-3)
The most relevant disclosure is claim 2 which states, "A toothbrush comprising a back, a handle and an intermediate neck of flexible resilient material, said neck having at the ends thereof projections which enter corresponding recesses in the back and handle, substantially as described." The description discloses that back refers to the head of the toothbrush. Further disclosures reveal the following aspects of the invention:
'The "neck" 2 by which I designate the connecting portion between the back 1 and the handle, is made from flexible material - such, for example, as rubber - which may be given the desired form by molding or in any other well-known manner. The neck may also include any resilient strip or wire or similar device. The precise length and shape of the neck are not material to my invention so long as its size and shape are such as to permit the back to yield relatively to the handle when pressure is applied. The material of the neck should have such a degree of resiliency as will cause the neck and handle to assume their normal position when the pressure which is applied to flex or bend the neck is removed.
The flexible neck should be securely joined or united to the back and handle, and this may be done in any well-known manner."
The similarity between this citation and the opposed invention lies in the feature of the neck when compared with the space which crosses the boundary between the head and the neck. The citation clearly indicates that the neck is "the connecting portion between the back (head) and the handle" and the neck appears to provide the necessary flexibility and resilience, between the head and the handle. The citation also indicates that the neck is made from flexible material such as rubber. Thus the features (4, 5) of "at the extreme head end of the handle there is a space, which crosses the boundary between the handle and the head" are disclosed in the citation. The space, in this particular instance - the neck, is fully filled with an elastomeric material (rubber) and provides "a resilient flexible link between the base of the head and the handle about which the head can rock relative to the handle". However, some other features of claim 1 have not been disclosed. In the matter of the head and handle being integrally made of plastics material the citation has disclosed that the head and handle may be made from bone, wood and the like. The citation also discloses that the head and handle may be made separately or using any well-known techniques. There is no disclosure both of the integral manufacture of the head and handle and of the use of plastics material in the citation. However I have considered that these features are not essential to the working of the invention. Consequently, I consider that the citation renders opposed claim 1 as lacking in novelty. Claims 2 to 6 do not add any features which are novel in light of the disclosures of the citation. Hence, I find that claims 2 to 6 are also not novel in light of the citation. Claim 7 defines that the plastics material of the handle and head is of a different colour to the elastomeric material in the space. I do not consider that this feature is essential to the working of the invention, though it may have some aesthetic appeal. Hence I consider that claim 7 lacks novelty in light of the citation. Claim 8 is an omnibus claim which refers to the invention "as hereinbefore described with reference to accompanying Figures 1, 2 and 4." Thus claim 8 is limited to the essential features of the invention as they are embodied in the figures. The embodiments of figures 1, 2 and 4 disclose the following:
An extended portion of the handle (which may also be bristle bearing) fits within a socket in a frame-shaped head of generally U or V shape. The relative sizes of the extended portion and socket are such as to leave a narrow gap between the extended portion and the head. The gap is open on its lower side - that is there is no seal between the base of the head and the base of the extended portion of the handle. However the gap's upper side is closed with a thin diaphragm of elastomeric material which is of a thickness such as to be flexible and resilient. In case of the embodiment of figure 4, the gap may be completely filled with an elastomeric material.
These specific features of the embodiments of figures 1, 2 and 4 are not disclosed in the citation. I do not find claim 8 when referring to figures 1, 2 and 4 as lacking in novelty. Consequently claim 8 is novel in light of the citation.
US 4520526 (exhibit PAK-7)
This citation discloses a brush that is flexible in the vertical plane. The brush has a shaped body having a handle portion, a head portion and a resiliently flexible portion between the handle portion and the head portion. The head portion has attached bristles. The head portion flexes in a vertical plane relative to the handle portion (when the handle lies in a horizontal plane) when excessive force is applied to the handle portion. The resiliently flexible portion has a shaped hollow extending completely through it from one side to the other side thereof in the horizontal direction.
The major difference between this citation and the opposed invention lies in the feature of the resiliently flexible portion between the handle portion and the head portion. The citation clearly indicates that the handle portion and the head portion are separated by a resiliently flexible portion which has a shaped hollow. Comparing this with the opposed invention I find that the features (4, 5) of "at the extreme head end of the handle there is a space, which crosses the boundary between the handle and the head" are disclosed in the citation. However there is no disclosure of the space containing an elastomeric material and of the space and elastomeric material forming a flexible resilient link between the head and the handle. Consequently claims 1 to 8 do not lack novelty in light of this citation.
AU 13665/88 (exhibit PAK-9)
This citation discloses a toothbrush with separate head and handle regions connected by a deflection region. The head of the toothbrush is arranged on the toothbrush handle in such a manner that when a predetermined pressure is reached the head is deflected suddenly so that it is possible to maintain an optimum applied pressure when brushing the teeth. Thus there is no disclosure of the features (4,5) of the opposed invention, wherein "at the extreme head end of the handle there is a space, which crosses the boundary between the handle and the head". Consequently claims 1 to 8 do not lack novelty in light of this citation.
US 4488328 (exhibit PAK-11)
This citation discloses:
A toothbrush with an elongated handle and a brush head supported at one end of the handle for a limited pivotal movement between opposed arms of a yoke structure, that is by torsion bar support elements joining the support arms to opposed edges of the brush head. A further resilient element may be employed between the brush head and the proximal end of the handle to provide additional resistance to pivotal movement.
The base of the brush head, the handle, yoke and resilient support elements may be integrally molded from a single mass of synthetic resin material and at least the resilient elements are preferably formed from polypropylene, or a polymeric material having substantially the same physical characteristics.
The gap between the yoke arrangement of the handle and the brush head appears to fall within the ambit of the feature, "a space, which crosses the boundary between the handle and the head". The space however does not contain an elastomeric material. The space has torsion bar support elements and a further resilient element formed from polypropylene, or a polymeric material having substantially the same physical characteristics. Polypropylene is a plastics material and does not fall in the category of the elastomeric material defined in the opposed specification. Hackh's Chemical Dictionary, 4th edition, published 1969 by McGraw-Hill, Inc. indicates that elastomer is a generic term for, "all substances having the properties of natural, reclaimed, vulcanized, or synthetic rubber". Thus the features "the said space containing an elastomeric material" and "the said space and elastomeric material forming a resilient flexible link between the base of the head and the handle" defined in claim 1 of the opposed specification have not been disclosed. Hence claims 1 to 8 of the opposed specification do not lack novelty in light of the citation.
Inventive Step/Obviousness
Subsections 7(2) and 7(3) of the Patents Act 1990 indicate that a claimed invention will lack an inventive step if it is obvious to a person skilled in the relevant art in the light of:
(a) common general knowledge in the art; or
(b) common general knowledge considered together with information publicly available in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.
Aickin J set out the following tests for obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 270:
"It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge."
and at page 286:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
Application of these tests would require:
a determination of the non-inventive worker in the field (or the person skilled in the relevant art) in Australia
a determination of the common general knowledge in Australia at the priority date
The common general knowledge relevant to the question of obviousness was described by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited, (1980) 144 CLR 253 at 292 as:
"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."
The first step to applying the tests set out above for determining inventive step would involve the determination of those declarants who were persons skilled in the art of toothbrush design at the relevant date. I note that there is only one declarant with dental qualifications. I shall have regard to that declarant's evidence as well as other filed relevant evidence for the purpose of determining the common general knowledge in Australia at the priority date in question. Looking at exhibit MJT1 accompanying the declaration of professor Tyas I note that he has not published any papers with regard to toothbrushes. Further there is no indication of any direct involvement with toothbrush design. His closest involvement with toothbrushes appears to be through the International Organization for Standardization as part of Sub-committee 7, Manual Oral Hygiene Devices, 1986- and Working Group 1, Toothbrushes, 1995-. I shall now proceed to establish the state of the common general knowledge (hereinafter cgk) in Australia at the relevant priority date.
Professor Tyas makes the following observations;
"Prior to 27 March 1991, through my work as a dentist and in the Australian Dental Standards Laboratory, I was aware of toothbrushes having a head flexibly linked to the handle so as to allow a rocking motion of at least part of the head relative to the handle.
…the opposed specification concedes that there had been prior proposals for toothbrushes having flexible handles or flexible zones in their handles for accommodating the orientation of the bristle-bearing head of the brush to the profile of the user's teeth and gums during brushing."
The opponent indicated that these features were disclosed in various patents (a list of the patents has been provided). Before I proceed to assess the Tyas declaration I shall refer to the following teaching of the courts regarding the determination of whether material disclosed in various patents does or does not constitute common general knowledge. In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (supra) at page 294 it was stated:
"There may be some fields of endeavour in which those who work therein study and make themselves familiar with all patent specifications as they become available for inspection in one or in many countries so that what was contained therein becomes common general knowledge in that particular trade or field of manufacture in the country in question. Examples are provided by Vidal Dyes Syndicate Ltd v Levenstein Ltd (1912) 29 RPC 245 at pages 279-280 and British Celanese Ltd v Courtalds Ltd (1933) 50 RPC 259 at page 280."
I have considered the declaration of the person skilled in the art in Australia to determine if he had acquired knowledge of the features constituting the alleged common general knowledge through various means including study/knowledge of the patents and other technical/scientific texts/papers. My determination is based on the teaching from British Acoustic Films Ltd v Nettlefold Productions, (1936) 53 RPC 221 at page 250,
"In my judgement it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or a series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less merely because it is widely circulated. Such a piece of knowledge only becomes common general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art."(my emphasis).
and
"It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art."
This was affirmed in General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd, (1972) RPC 457 at page 482 with the qualification that "without question" should read "generally regarded as a good basis for further action"(my emphasis).
Professor Tyas indicates that it was well known in the art to have toothbrushes having a head flexibly linked to the handle so as to allow a rocking motion of at least part of the head relative to the handle. All the patent documents cited by the opponent appear to illustrate a similar principle. The opposed specification indicates that similar proposals ("toothbrushes having flexible handles or flexible zones in their handles for accommodating the orientation of the bristle-bearing head of the brush to the profile of the user's teeth and gums during brushing") had previously (prior to the earliest priority date) been made. Even though there is a single declarant, based on the above, I am willing to accept that the principle of "toothbrushes having flexible handles or flexible zones in their handles" formed part of the cgk in Australia at the relevant date.
The opponent submitted that the 12 documents raised under novelty formed part of the common general knowledge in Australia. The opponent's declarant, Professor Tyas has not made any statement to the effect that the teachings of all the cited documents formed part of the cgk in Australia. There is no evidence to show that the teachings of these citations had become part of the cgk in Australia before the relevant date. I do not consider that these documents constitute part of the cgk in Australia in the art of toothbrush design.
The opponent contended that the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in Australia before the priority date of the claims, whether considered separately or together with any of the cited documents.
I have shown that the established cgk in Australia lay in the principle of "toothbrushes having flexible handles or flexible zones in their handles for accommodating the orientation of the bristle-bearing head of the brush to the profile of the user's teeth and gums during brushing". This cgk merely spells out that toothbrushes can have flexible handles. However this does not disclose or suggest all the ways in which this may be practically achieved. This cgk does not disclose the combination of all the essential features of claim 1 of the invention. There are several patents in the field where the toothbrushes have flexible handles (The opponent's citations for instance), but the manner in which this is achieved is unique to each patent. Thus the manner in which the principle has been put into effect varies for each citation. I do not consider that the opposed invention lacks an inventive step in light of the established common general knowledge alone.
I shall now consider the citations raised by the opponent. In the matter of whether "the documents could reasonably be expected to have been ascertained", I am satisfied that they would have been located as part of a patent literature search in the relevant art. Given the contents of the documents I have identified four documents (as under novelty considerations), which I am satisfied would be understood and regarded as relevant to the problem identified in the opposed application. The problems of the prior art identified in the opposed application are:
· When using a conventional toothbrush having a rigid head it can be difficult to reach all parts of the teeth to brush satisfactorily.
· It is difficult with conventional brushes to maintain an optimum angle between the teeth and the head of the toothbrush for effective brushing and cleaning, necessitating continual repositioning of the brush in the hand throughout the brushing process.
· As a result of the above there is a tendency to apply excess brushing pressure to some teeth and insufficient pressure to other teeth.
· The resultant combination of excess brushing pressure and inadequate/bad cleaning technique can result in damage to both teeth and gums.
· Angled-head toothbrushes do not satisfactorily meet all the requirements to overcome the difficulties outlined above.
US 759490 (exhibit PAK-3)
The most relevant disclosure in the citation is claim 2 which states, "A toothbrush comprising a back, a handle and an intermediate neck of flexible resilient material, said neck having at the ends thereof projections which enter corresponding recesses in the back and handle, substantially as described." The description discloses that back refers to the head of the toothbrush.
The similarity between this citation and the opposed invention lies in the feature of the neck when compared with the space which crosses the boundary between the head and the neck. The citation clearly indicates that the neck is "the connecting portion between the back (head) and the handle" and the neck appears to provide the necessary flexibility and resilience, between the head and the handle. The citation also indicates that the neck is made from flexible material such as rubber. Further, the neck may also include any resilient strip or wire or similar device. Thus the essential features (4, 5) of "at the extreme head end of the handle there is a space, which crosses the boundary between the handle and the head" are disclosed in the citation. The space, in this particular instance - the neck, is fully filled with an elastomeric material and provides "a resilient flexible link between the base of the head and the handle about which the head can rock relative to the handle". However, some other features of claim 1 have not been disclosed. In the matter of the head and handle being integrally made of plastics material the citation has disclosed that the head and handle may be made from bone, wood and the like. The citation also discloses that the head and handle may be made separately or using any well-known techniques. There is no disclosure both of the integral manufacture of the head and handle and of the use of plastics material in the citation. The skilled addressee, when given the disclosure of the citation, and facing the problems of the prior art would find a solution in the citation. In the matter of materials to be used and manufacturing techniques he would use conventional materials and methods (as at the priority date of the opposed specification) - some examples of these being set out in the opposed specification. Therefore the skilled addressee would use plastics material to manufacture the bristles, head, and handle. He could also manufacture the handle or head integrally or separately or in any other known manner. The opposed specification does not indicate, either explicitly or implicitly that the invention lies in the method of making the toothbrush. Consequently, I consider that the citation renders opposed claim 1 as lacking an inventive step.
Claims 2 to 6, which are appended to claim 1, define features which are disclosed in the citation. In the matter of the use of plastics material (to make the head and handle) in the appended claims, this feature is part of the cgk and well known in the art. Hence claims 2 to 6 lack an inventive step in light of the citation. Claim 7 defines that the plastics material of the handle and head is of a different colour to the elastomeric material in the space. I do not consider that this selection of differing colours for the different materials constitutes an inventive step, and is a clearly a non-inventive option available to all in the art. Hence I consider that claim 7 lacks an inventive step in light of the citation.
Claim 8 is an omnibus claim which refers to the invention "as hereinbefore described with reference to accompanying Figures 1, 2 and 4." Thus claim 8 is limited to the essential features of the invention as they are embodied in the figures. I shall address the embodiments of figures 1, 2 and 4. In particular the embodiments of figures 1, 2 and 4 disclose the following:
An extended portion of the handle (which may also be bristle bearing) fits within a socket in a frame-shaped head of generally U or V shape. The relative sizes of the extended portion and socket are such as to leave a narrow gap between the extended portion and the head. The gap is open on its lower side - that is there is no seal between the base of the head and the base of the extended portion of the handle. However the gap's upper side is closed with a thin diaphragm of elastomeric material which is of a thickness such as to be flexible and resilient. In case of the embodiment of figure 4, the gap may be completely filled with an elastomeric material.
These specific features of the embodiments of figures 1, 2 and 4 are not disclosed in the citation. As the elastomeric neck appears to give the necessary flexibility of the head relative to the handle, there is nothing to indicate why the skilled addressee would be led to the features of the embodiments of figures 1, 2 and 4. Hence I do not find that claim 8 lacks an inventive step in light of this citation.
US 4520526 (exhibit PAK-7)
This citation discloses a brush that has a shaped body having a handle portion, a head portion and a resiliently flexible portion between the handle portion and the head portion. The head portion has attached bristles. The head portion flexes in a vertical plane relative to the handle portion (when the handle lies in a horizontal plane) when excessive force is applied to the handle portion. The resiliently flexible portion has a shaped hollow extending completely through it from one side to the other side thereof in the horizontal direction.
The citation clearly indicates that the handle portion and the head portion are separated by a resiliently flexible portion which has a shaped hollow. Comparing this with the opposed invention I find that the features (4, 5) of "at the extreme head end of the handle there is a space, which crosses the boundary between the handle and the head" are disclosed in the citation. However there is no disclosure of the space containing an elastomeric material and of the space and elastomeric material forming a flexible resilient link between the head and the handle. I have to determine if the skilled addressee would be led in the direction of discarding the shaped hollow in favour of a space in the plastics material, which crosses the boundary between the handle and the head. As the shaped hollow appears to give the necessary flexibility of the head relative to the handle, there is nothing to indicate why the skilled addressee would be led to try the space of the opposed invention along with added elastomeric material. Hence I am satisfied that claims 1 to 8 do not lack an inventive step in light of this citation.
AU 13665/88 (exhibit PAK-9)
This citation discloses a toothbrush with separate head and handle regions connected by a deflection region. The head of the toothbrush is arranged on the toothbrush handle in such a manner that when a predetermined pressure is reached the head is deflected suddenly so that it is possible to maintain an optimum applied pressure when brushing the teeth. Thus there is no disclosure of the essential features (4, 5) of the opposed invention, wherein "at the extreme head end of the handle there is a space, which crosses the boundary between the handle and the head". As the toothbrush of the citation has overcome some of the defects of the prior art, I need to determine whether the cgk and/or any remaining defects would point the skilled addressee in the direction of the opposed invention. I have no evidence before me which shows that such is the case. Consequently I find that claims 1 to 8 do not lack an inventive step in light of this citation.
US 4488328 (exhibit PAK-11)
This citation discloses:
A toothbrush with an elongated handle and a brush head supported at one end of the handle for a limited pivotal movement between opposed arms of a yoke structure, that is by torsion bar support elements joining the support arms to opposed edges of the brush head. A further resilient element may be employed between the brush head and the proximal end of the handle to provide additional resistance to pivotal movement.
The base of the brush head, the handle, yoke and resilient support elements may be integrally molded from a single mass of synthetic resin material and at least the resilient elements are preferably formed from polypropylene, or a polymeric material having substantially the same physical characteristics.
The gap between the yoke arrangement of the handle and the brush head appears to fall within the ambit of the feature, "a space, which crosses the boundary between the handle and the head". The space however does not contain an elastomeric material. The space has torsion bar support elements and a further resilient element formed from polypropylene, or a polymeric material having substantially the same physical characteristics. Polypropylene is not an elastomer. Hackh's Chemical Dictionary, 4th edition, published 1969 by McGraw-Hill, Inc. indicates that elastomer is a generic term for, "all substances having the properties of natural, reclaimed, vulcanized, or synthetic rubber". Thus the features "the said space containing an elastomeric material" and "the said space and elastomeric material forming a resilient flexible link between the base of the head and the handle" defined in claim 1 of the opposed specification have not been disclosed. I have to determine if the skilled addressee, using the cgk available, would, as a matter of course, discard the arrangement of the citation in favour of the arrangement of the opposed invention. As the toothbrush of the citation provides the sought after flexibility between the head and the handle, I do not see why the skilled addressee would discard this arrangement in favour of the opposed invention. There is no evidence which indicates that the skilled addressee would be led to try the arrangement of the opposed invention over that of the citation. Hence I do not find that claims 1 to 8 of the opposed specification lack an inventive step in light of the citation.
SUMMARY
The opponent had raised grounds of novelty, inventive step and section 40/fair basis. I have found that claims 1 to 7 of the opposed specification lack novelty in light of US 759490. I have found that claims 1 to 7 of the opposed specification lack an inventive step in light of US 759490 and the relevant common general knowledge. I found that Claim 8 is novel and possesses an inventive step over US 759490. The ground of section 40/fair basis has not been established.
I allow the applicant, L&F, sixty (60) days from the date of this decision to propose amendments to the specification to overcome the defects stated above.
If suitable amendments are not proposed within that time I will refuse the application.
COSTS
The opponent submitted that costs should follow the event and if the application was found to be invalid, then they were entitled to costs. Further they stated that as the applicant had the opportunity to attend the hearing but did not, the opponent was therefore entitled to full costs.
The opponent has not provided any material to show that the case was exceptionally difficult to prosecute, or required special expertise over and above the normal requirements of a substantive opposition. There is no circumstance or situation that I can see which justifies the award of full costs. The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The opponent has been successful in this matter. Accordingly I award costs in accordance with Schedule 8 against the applicant Lingner & Fischer GmbH and in favour of the opponent Colgate-Palmolive Company.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : F B Rice & Co, Sydney
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