Marshalltown Trowel Company v Neill Tools Limited

[2000] APO 61

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 695877 in the name of Marshalltown Trowel Company

Title:          A Plastic Molded Trowel Handle having Fingerguard and Palm Grip

Action: Opposition under Section 59 of the Patents Act 1990 by Neill Tools Limited

Decision:          Issued            .

Abstract

The invention defined by the claims possess an inventive step.  Although it was established that the use of overmolding forms part of common general knowledge, it was not established that it was obvious to make an overmolded two-part handle for a trowel with differing co-efficients of friction. 

The claims were directed to a manner of manufacture. The opponent argued that claim 1 was a mere collocation, was directed to a new use of a known substance and otherwise lacked inventive merit.  Although there were some merit in the opponent's argument about claim 1 being a mere collocation, there was also some evidence to indicate that the invention gave rise to a synergistic effect.  On balance, the opponent's argument was not persuasive.

However, in the context of manner of manufacture, "known" means publicly available; Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) 34 IPR 256 at 272. There was no evidence that demonstrated that both a trowel with a two-part handle and a trowel with a finger guard are known.

The opponent also argued that hard plastics materials and softer plastics were known and their properties would make them suitable for use as the outer grip member, the inner core and the finger guard.  There was no evidence filed that suggested the trowel was known.  The opponent also argued that it would be obvious to combine these new uses together, however there was no evidence to support this contention. 

In relation to inventive merit, there was nothing on the face of the specification itself, which suggested that the present invention would have been obvious to a person skilled in the art.

Costs were awarded against Neill Tools Limited.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 695877 by Marshalltown Trowel Company and opposition thereto by Neill Tools Limited under section 59 of the Patents Act 1990.

BACKGROUND

Patent Application 10039/97 filed on 6 January 1997 is a divisional application of 57516/94 that was filed on 2 March 1994.  The latter application has a priority date of 2 March 1993 based upon US basic application 25622.  The current application was advertised as accepted on 27 August 1998 and given serial number 695877.  Neill Tools Limited (Neill Tools) opposed the application on 26 November 1998.

On 24 July 1998, a further patent application No. 78426/98 to the current patent application was filed.  It was advertised as accepted on 25 May 2000 and given serial number 720190. 

Evidence in support was served 25 November 1999.  No evidence in answer was served.

A hearing on the matter was set down in Canberra on 29 May 2000.  Greg Gurr, Patent attorney of Spruson & Ferguson represented the applicant while Mr Benjamin Fitzpatrick of Counsel assisted by Mr Mark A. Wakeham, Patent Attorney of Carter Smith & Beadle, represented the opponent.

Grounds of opposition

At the hearing, only the grounds of lack of inventive step and manner of manufacture were pursued by the opponent.

Evidence

John W Petschel filed a statutory declaration with accompanying exhibits JP-1 and JP-2.  Exhibit JP-1 contained extracts from a material supplier, Advanced Elastomer Systems.  Exhibit JP-2 contained a number of separate documents.

Robert Wilson filed a statutory declaration with exhibit RW-1.  Exhibit RW-1 contained two documents.  The first document related to the Glee Exhibition held at the National Exhibition Centre, United Kingdom on September 26-28, 1993 by Moss Products Pty Ltd.  The second document detailed some brochures of screwdrivers from Stanley Tools, the brochures having a date of July 1993.  Mr Wilson is the managing director of Moss Products, a company producing garden watering products since the late 1970's.

Dennis Fieldhouse filed a statutory declaration with accompanying exhibits DF-1 and DF-2.  Exhibit DF-1 contained curriculum extracts from Royal Melbourne Institute of Technology (RMIT).  Exhibit DF-2 contained extracts from texts and references used in courses run at RMIT.

The specification

The specification states that the invention relates to a trowel handle and more particularly to a brick trowel handle in which the handle is injection molded from two separate types of plastic.  The handle also includes a finger guard, which is integrally molded from a smooth surface thermoplastic resin.  This serves to protect the user's forefinger and thumb during trowelling.  An outer palm grip is molded from thermoplastic rubber having a slightly soft, non-slip, and rubber-like feel.  This has a surface which provides favourable grippability to the handle and comfort to the user.

Prior art

The specification states that prior art trowels include:

"a flat towel blade made of metal and have a metal post formed integrally with the blade.  The post extends upward from the blade and extends horizontally to become a tang for connecting the handle.  The handle is typically made of wood, but in recent years some are formed of plastic.  The handle is typically cylindrical in shape."

The problems with the prior art are twofold.  Firstly, when the handle is made of plastics such as cellulose acetate butyrate, this gives rise to a smooth outer surface and slippage of the trowel in the user's hand occurs.  A firm grip is preferred as it allows the user to more firmly control the trowel so as "to prevent the trowel from turning when trowelling the mortar or when its edge is used for splitting or chipping bricks."  Secondly, "when trowels are used to spread the mortar or in breaking and trimming bricks, the user tends to position his thumb and forefinger against the metal trowel shank to provide better control in manipulating the trowel."  Thus the user's hand can become chapped and worn and callouses may develop on the finger and thumb due to the abrasive and chemical irritating effect of the mortar.

The object of the invention is to overcome these disadvantages and in the solution proposed by the applicant, the handle is made of two separate types of plastic.  This is to provide both the improved grippability to the handle through the provision of improved grip and also to protect the user's forefinger and thumb during trowelling through the provision of a finger guard.  The outer layer of plastics provides the improved grippability by having a high coefficient of friction.  The inner layer forms in part the fingerguard.  This inner layer has a lower coefficient of friction, which provides a smooth surface so that in use it permits the "user's forefinger and thumb to freely slide along the surface during manipulation of the trowel without chaffing drag."

The claims

There are three independent claims including the omnibus claim.  Claim 1 reads as follows.

"1. A trowel, comprising:
a flat blade;
a shank extending upwardly from the top surface of said blade;
a tang extending from said shank; and
a handle secured to said tang and being disposed above the top surface of said blade, said handle including:

(i) an outer grip member formed of a first thermoplastic rubber material and providing a grip surface of a first coefficient of friction with the user's hand;

(ii) an inner core formed of a second more rigid plastic material, said inner core providing a front portion having an outer surface contiguous with said outer grip member at the interface of said outer outergrip member and said front portion providing a smooth surface transition across interface;

(iii) a protective finger guard formed in said front portion and spaced forward of said interface and providing an outer surface having a second coefficient of friction, lower than said first coefficient of friction, with the user's hand, said finger guard extending downwardly with respect to said grip surface of said outer grip member and covering the rear portion of said shank for preventing contact between the user's fore finger and said shank when the user grips the handle."

Claim 13 reads as follows:

"13.  A trowel having a shank, a handle tang, and a handle secured to said tang, said handle including:

(i) an outer grip member formed of a first thermoplastic rubber material and providing a grip surface of a first coefficient of friction with the user's hand;

(ii) an inner core formed of a second plastic material;

(iii) a protective finger guard formed of said second plastic material providing an outer surface having a second coefficient of friction, lower than said first coefficient of friction, with the user's hand, said finger guard extending downwardly with respect to said grip surface of said outer grip member for protecting the user's fore finger when the user grips the handle."

In addition to these independent claims, a further feature of a rear bumper is included into the characterisation of the dependent claims 8, 9, 12, 19, 22 and 25.  Claim 8 reads as follows:

"The trowel of claim 1 and further including a rear bumper secured to the distal end of said handle, said bumper protecting said outer grip member from impact upon the distal end of said handle."

Claim 19, which is appended to claim 13, is identical in its characterisation to claim 8.  Claims 9, 12, 20 and 23 add a further characterisation that the rear bumper is formed from a plastics material.

It was common ground that the issues applying to claim 1 also apply to claim 13.  Counsel for Neill Tools further submitted that the claims to the rear bumper raise similar issues of lack of inventive step and lack of manner of manufacture.  It was also common ground that overmolding (also called two-part injection molding) was implicit in the production of the two-part handle.

Before discussing the grounds of opposition in particular, I wish to refer to the opponent's argument regarding the absence of any evidence-in-answer.  The opponent suggested that I should draw adverse conclusions from the fact that the patent applicant 'failed' to file evidence-in-answer.  In particular, Counsel suggested that the evidence of the opponent was incontrovertible and that I should accept its statements about common general knowledge as established.  In my view, the opponent's evidence is not necessarily incontrovertible because the applicant has not provided any evidence-in-answer.  If the applicant wishes to solely argue that the opponent's evidence is not cogent or believable then it is entitled to do so.  The onus to establish its case still rests with the opponent.

DECISION

Inventive step

Counsel for Neill Tools contended that the preamble in claim 1 merely recited matters of common general knowledge in the art.  Specifically, Counsel submitted that the following features were considered to represent the trowel of the admitted prior art.  These features are as follows:

"a flat blade; a shank extending upwardly from the top surface of said blade;
a tang extending from said shank; and a handle secured to said tang and being disposed above the top surface of said blade".

This is consistent with the disclosure in the specification in the passage already referred to.  In my view, the recital in the specification of the prior art is of great weight.  I note that there was no suggestion by the patent applicant that contradicted this proposition; Gerber Garment Technology v Lectra Systems [1995] FSR 493.

Counsel for Neill Tools submitted that the evidence of Mr Petschel and Mr Wilson established that it was well known:

"to provide an outer grip on the handle of a variety of tools and other implements."

and that it was also well known to provide;

"the outer grip of thermoplastics material."

Hence it was submitted that features (i) and (ii) which define a two-part handle are well known in the art of plastics manufacturing. 

In regard to the feature (iii) of the claim, Counsel suggested that the inclusion of the finger guard would have been obvious to a person skilled in the art, evidence of that is detailed in the statutory declaration of Mr Petschel.

The opponent based its submissions on the alternatives provided under s7(2) and s7(3) of the Patents Act that a claimed invention will lack an inventive step if it is obvious in the light of:
(a) common general knowledge; or
(b) common general knowledge considered together with information in a single document, provided that the information contained in the document 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.

I will now refer to the various submissions made on these points.  But before doing this, I will consider whether forming two-part handle by overmolding forms part of the common general knowledge in the art or whether it is obvious to do so.

Two-part handle: common general knowledge/obviousness

The evidence of Mr Petschel is crucial to the opponent's argument.  Mr Petschel is a consulting engineer and managing director of APS Plastics Pty Ltd.  Mr Petschel is an independent witness.

In relation to the allegations contained in the Petschel declaration, Mr Gurr submitted that Mr Petschel is not a man skilled in the art.  In Mr Gurr's submission, the experience of a person skilled in the art should relate to hand tools.  I think Mr Gurr is unnecessarily limiting the relevant field of expertise.  For the purposes of the art in question, the man skilled in the art comes from the fields of plastics molding.  This is Mr Petschel's expertise.  

Mr Petschel stated in his declaration that prior to the priority date of the application:

• techniques of using two polymer based materials in a composite format was reasonably well understood;

• since 1990, specialist equipment became available that enabled two materials to be injected into a common tool to produce a composite product; and

• injection molding has been common since the late 1930's.

As examples of the common general knowledge in the art of composite handles, Mr Petschel's exhibit JP-1 contained extracts from Advanced Elastomers Systems brochures which illustrated a vacuum handle having an insert injection molded Vistaflex elastomer , a clothes dryer drum tire having a Santoprene rubber inserted over polypropylene, a iron handle grip Santoprene rubber overmolded on polypropylene, and a vacuum cleaner castor wheels co-injection molded over polypropylene.  Mr Petschel declared that these were received in May 1993.  The brochure contains a copyright notice date 1993 and also a number 030593 that could relate to a date.  Prima facie this is later than the priority date.  However, Mr Petschel declared that these brochures were "printed well before the date received by APS."  But, there is no corroborative evidence that suggests a publication date earlier than the priority date.  Therefore as evidence of publication of the information contained in this exhibit, these extracts fail.

The exhibit also contained extracts of a publication from Advanced Elastomers Systems relating to injection molding.  Mr Petschel stated that these were in general distribution.  However there is no evidence of this fact.

Exhibit JP-2, contained a handle project design brief for Moss Products Pty Ltd.  I have some difficulty with this exhibit, as there is no indication that this design briefing became public knowledge before the priority date.  The exhibit also contained some design drawings dated 11 November 1992, but these appear to be of a one-piece molding.  The last items in this exhibit are copies of garden tools produced by Moss Products Ltd.  They refer to "easy to see, blue, soft-grip handles".  This brochure is undated.

Dennis Fieldhouse's evidence consists of extracts and references from textbooks on injection molding (published in 1983 and 1985).  Mr Fieldhouse attests that these textbooks form part of the curricular of courses run at RMIT since 1992. 

Robert Wilson's declaration refers to the showing of his products at the Glee exhibition in the UK in September 1993.  However this disclosure did not occur before the priority date of the application and hence does not assist me in deciding what was common general knowledge at the priority date of the application.  Mr Wilson also exhibited some extracts from Stanley tools, one page of which has a date of July 1993.  Again this publication appears to have occurred after the priority date. 

Notwithstanding these difficulties, Mr Wilson attested to the use of injection molding and overmolding techniques to produce soft feel handles for a variety of products.  In relation to the production of soft feel handles, Mr Wilson commented:

"The concept of soft feel handles to provide a consumer benefit and sales feature was attractive and our observations of the market showed there was a marketing opportunity."

However apart from one example (which is not in evidence) of the "Good Grip products from Oxo" that were stated to be produced by overmolding, there is no evidence that overmolding was used in the production of handles.

In relation to the disclosures close to a priority date, I note the decision in Roberts Mfg. Inc.'s Application, (1977) AOJP 2345 in which a declaration stating that certain brochures were available "early in January 1972", together with other evidence which failed to specify exact dates, was held to be insufficient to establish publication before the priority date of 14 February 1972.  At page 2346 it was said that:

"In view of the fact that the priority date is ... (close to the date of alleged publication) ... a more accurate indication of the date when any person may have received such a brochure by post, or otherwise, appears to me to be essential in order to establish publication for the purposes of taking a definite objection under section 48(3)."

This appears to be a sensible approach.  Accordingly, for the purpose of establishing common general knowledge, the evidence of Mr Petschel as detailed in his exhibits and Mr Wilson in his exhibits is not sufficient to establish that publication of the contents of these exhibits occurred before the priority date.

At this point, it is relevant to refer to one of the patent documents filed in support of the opposition and referred to by Counsel. 

US 4739536 (April 26, 1988) disclosed a screwdriver handgrip having harder and softer zones.  I was referred to the following paragraph:

"The balanced distribution of the hard and soft materials results in the balanced grip-sympathetic seating of the handle in the operator's hand and in the ability to apply greater torques."

It was submitted that this goes to show that plastics materials are used to form a handle for improved grippability.  Although this is relevant to the issue, I do not feel that it should be accorded a lot of weight.  It goes to show that there is some evidence, but not overwhelming evidence that forming handles of different type of plastics materials is part of the art.  This single example does not constitute evidence of common general knowledge.

Mr Gurr also submitted that the field of overmolding is not relevant to the invention.  In fact he appears to concede that overmolding is not new.

"Mr Petschel's comments are particularly directed to the specific manufacturing techniques for moulding a single product from two separate plastics materials.  The present opposed application, however, does not represent that there is anything new in moulding a single product from two separate materials."

Therefore, given the admission made by Mr Gurr, the statements of John Petschel, Dennis Fieldhouse and Robert Wilson, the evidence from the courses held at RMIT and of that disclosed in the US specification, I am satisfied that injection molding and overmolding form part of the common general knowledge in the art.

The next question to be raised is whether it would be obvious to use the technique of overmolding to produce a two-part handle?  As I have perviously stated the evidence of the use of overmolding to produce a two-part handle is less than convincing and hence I am not convinced that it was common general knowledge to form a two-part handle by overmolding.  This, however, does not answer the question on obviousness.

This question in effect asks whether it would be obvious to manufacture a two-part handle using two plastics materials of differing coefficients of friction.  According to Mr Gurr's submission, the Petschel declaration:

"has not provided any evidence that it was known to apply the manufacturing processes utilising two plastics materials to address the specific problems faced by the inventor of the present invention."

Mr Gurr continues with his point that:

"the use of two polymer-based materials in a composite form resulting from a desire to have a softer more tactile material over a more durable substrate.  Such an objective for providing two materials does not relate to the problems addressed in the current application."

As Mr Gurr states, Mr Petschel "has not provided any evidence that two plastic materials have been used to provide handle outer surface portions of differing coefficient of friction for any purpose for any tool." 

Upon reading Mr Petschel's declaration and listening to Counsel's presentation, I do not believe that Mr Petschel was able to view the invention from the point of view of the non-skilled worker.  His analysis leads me to believe that invention was involved in coming to his conclusions. 

On a similar note, I refer to the recent published case of Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 (1 August 2000), Finkelstein J in commenting on the evidence that the same Mr Petschel presented in that case stated:

"I will do him no disservice when I say that Mr Petschel is as far removed as one could be from the skilled but uninventive addressee whose mantle I am prepared to assume.  Mr Petschel may not regard himself as an inventor but the considerable skill and ability that he brings to bear on the work that he performs, shows him to be a man much more concerned with creative work than with mere labour and industry.  Mr Petschel did say that he has arrived at his solution to the problem associated with the modified Whitcomb panels from the standpoint of the uninventive workman.  My first impression is that this is precisely what Mr Petschel did not do.  I do not believe that Mr Petschel could ignore his own capacities and pretend to have much less skill than he actually has.  That task would have been far too difficult for Mr Petschel."

Although the court had the benefit of Mr Petschel's direct evidence and the field of the invention differs, there is commonality in the expertise that Mr Petschel brings to his work. 

The analysis of Mr Petschel appears to me to suffer from ex post facto analysis.  As stated in Palmer v Dunlop Perdriau Rubber Co Ltd, (1937) 59 CLR 30 at page 61:

"It is frequently possible to take, as it were, a patent to pieces, and then, beginning with one piece, to show how, in order to obtain one result, step A must be taken; in order to obtain another particular result, step B must be taken - and so on until one has the whole combination for which inventive quality is claimed. If the analysis is taken into sufficient detail, every single step in the development of an invention, taken separately, can be shown to be obvious."

"But, in the present case, the evidence of the expert witnesses for the defendant is really a reconstruction of an inventive process step by step, each step, when it is known that it must be taken in a certain direction, being obvious enough in itself."

See also Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd, 144 CLR 253, Meyers Taylor v Vicarr Industries Ltd, 137 CLR 228, British Acoustic Films Ltd v Nettlefold Productions, (1936) 53 RPC 221, British Westinghouse Electric and Manufacturing Co Ltd v Braulik, (1910) 27 RPC 209.

Mr Petschel begins his analysis on obviousness by describing the process for developing a solution.

"The process by which products are developed to solve a specific problem is quite straightforward.  It is a logical process of identifying the problem(s) and the underlying cause.  Once established, it is then a case of exploring options that are not only practical to the solution(s) of the problem(s) but also represent a manufacturing solution.  In some cases a solution to the problem may not be easily manufactured so alternative approaches are necessary.  Additionally, the marketing needs of the client and any associated standards requirement must be thought through.  As such, the overall cost of the solution must be equal to, or lower than the client wishes so as they may market the product in a commercially viable manner.  Other consideration such as consumer acceptance, durability, etc all come into play."

On the basis of this process, Mr Petschel's research would have revealed a wide range of hand tools that would be investigated.  Such tools include brick/ mortar tools as well as screw drivers and pliers.  He would have also identified the problems of slippage of the trowel and chaffing associated with the use of the prior art trowels.  From this, solutions to be investigated include:

• having a soft grip handle extending along the palm region to the shank but this would be unsuitable as the user's hand is unprotected.

• having a two part handle having different co-efficient of friction with the palm area having a high friction to grip the hand and the shank having a lower friction to protect the thumb and forefinger.

This analysis seems to fall into the problem alluded to in Palmer's case (supra).  In spite of what Mr Petschel states, I cannot see how the solution chosen is obvious on the basis of the problem when considered alone in the light of common general knowledge by a non-inventive person skilled in the art.

In summary, it is by no means obvious that a non-inventive person would produce a two-part handle having differing co-efficients of friction.  Accordingly I cannot support the proposition of Counsel that it would be obvious to make an overmolded two-part handle for a trowel with differing co-efficients of friction.

Given my conclusions above, features (i) and (ii) do not from part of the common general knowledge prior to the priority date and are not obvious.

Two-part handle with the finger guard: s7(2) submission

Although I have found that features (i) and (ii) of claim 1 are not obvious, I shall briefly consider Counsel's further argument on the finger guard. 

Firstly, I note that there was no suggestion from Counsel that the finger guard was well known in Australia and formed part of common general knowledge in the art. 

Secondly, on the basis that features (i) and (ii) formed part of the common general knowledge in the art, Counsel submitted that the invention must therefore reside in the inclusion of a finger guard.  I was referred to the cases of Fallshaw Holdings Pty Limited v Flexello Castors and Wheels Plc (1993) 26 IPR 565 and Luscent Technologies Inc. v Krone AG (No 3) [2000] FCA 100 (15 February 2000) for examples of this approach.

Thirdly, Counsel argued that the statements made in the Petschel declaration support the conclusion that the inclusion of the feature of the finger guard did not give rise to an inventive step and was obvious in the light of common general knowledge alone. 

In relation to the finger guard, the Petschel declaration states the following:

• "the protection of the fingers from the metal shaft can be achieved by using the free form features of injection moulded plastic." [underlying mine]

• "Once the area of finger abrasion is established, the most economical, practical and aesthetically pleasing solution is to form the plastic handle into an ergometrically designed flange that insulates the hand from the metal shaft."

• "Such a flange could be designed to be in either the harder inner plastic or the outer softer material and positioned for contact with the users thumb and/or forefinger." [underlying mine]

• "A typical example of such a flange would be found on the handles of pliers to allow fingers to be restricted from sliding down the grips onto the working faces of the tool."

Counsel submitted that on the basis of the Mr Petschel's declaration, the evidence:

"clearly establishes that the claimed finger protector was one of several solutions that a skilled addressee would consider, that the options would suggest themselves to a skilled addressee, and that there would be no technical difficulties in implementing the normal course of enquiry to address the identified problem would be likely to come upon the claimed invention (see Elconnex Pty Ltd v Gerard Industries Pty Ltd 105 A.L.R. 247, at 262)".

The test for lack of inventive step was stated in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd, (1981) 148 CLR 262 at page 286 where Aickin J held that:

"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."

In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd, (1979-80) 144 CLR 253 at page 293 it was stated that:

"In the case of a combination patent the invention will lie in the selection of integers, a process which will necessarily involve rejection of other possible integers. The prior existence of publications revealing those integers, as separate items, and other possible integers does not of itself make an alleged invention obvious. It is the selection of the integers out of, perhaps many possibilities, which must be shown to be obvious."

On the basis of these authorities stated above, it is clear that the evidence of Mr Petschel does not support Counsel's argument.  What the evidence shows is that the finger guard as defined was one of a number of options, but there is no evidence that the particular solution of the finger guard would be chosen.  While the choice of a finger guard per se might well be obvious, the choice of the particular construction for the finger guard of the invention is not an obvious choice.  In other words, there is no particular imperative for choosing the solution chosen by the inventor.

Hence the inclusion of feature (iii) is not obvious.

Inventive step: two-part handle with the finger guard: s7(3)(a) submission

Alternatively, Counsel argued that the extension of the hard plastic of the trowel handle to form a protecting flange between the user's finger and the shaft was part of the prior art information available before the priority date. 

Counsel pointed to two catalogues from Spear & Jackson (Tools) Ltd, a United Kingdom company that disclosed a trowel with a finger guard.  One catalogue is subtitled "Spearwell/Spear & Jackson/Blades/Tyzack Catalogue 73" and has a date of September 1973.  The other catalogue is subtitled "Hand Tools Special Edition for Educational Authorities, Technical Colleges and Schools" and has a date of 2 April 1973.

Counsel submitted that the Spear and Jackson 1973 catalogues disclosed a trowel having a finger guard formed by the extension of the polymer handle.  Hence, Counsel's argument is foundered upon the public knowledge of the finger guard combined with the common general knowledge of an overmolded two-part handle.

A broad heel plastic handle is pictured in the copies of the Spear & Jackson catalogues, which illustrate a trowel of a configuration that is consistent with the description of the prior art.  The finger guard as illustrated in the catalogues appears as a continuation of the handle.  The extracts from the catalogues state:

"Patented finger-guard for clean handling.  New wood-grained plastic handle, attractively styled and unbreakable."

Counsel admitted that the extracts from the Spear & Jackson 1973 catalogues did not form part of common general knowledge.  But, it was argued that that the catalogues were clearly a document that a skilled addressee could have been reasonably been expected to have ascertained, understood and regarded as relevant to the art in Australia.  In other words, Counsel argued that the document was a public document and that information from it could be used in s7(3)(a) submission.  Mr Gurr in his written submissions contented on the basis of the decision of the hearing officer in DAP Enterprises Pty Ltd v Roberts Design Pty Ltd (1998) 41 IPR 192 that before a document can be ascertained it must be public knowledge. Although Mr Gurr argued that the public knowledge must have occurred in Australia, during presentation of his arguments he corrected himself on this point. However, the point remains that the document must be public knowledge before it can be reasonably expected to have been ascertained.

Mr Gurr pointed out that there was no evidence of publication of the catalogues.  The catalogues are dated 1973, but there is no independent evidence that they were published to the world at large.

Having said this, there was no suggestion that the catalogues did not illustrate a finger guard.  Thus there can be no suggestion that the document if ascertained would not be understood and regarded as relevant.  The crucial issue is whether the 1973 catalogues could have been ascertained. 

Mr Gurr referred to the decision of Burchett J in Tidy Tea v Unilever (1995) 32 IPR 405 at 441 and to the unpublished Patent Office decisions 646918 Rohm and Hass Company v Nippon Kayaku Kabushiki Kaissha and Sankyo Company Limited dated 4 September 1997and 678131 Instant Foundations (Aust) Pty Ltd v Steel Foundations Limited and Turson Products and Constructions Pty Ltd dated 23 February 1999. 

In Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited (an unpublished Patent Office decision on application 646918 dated 4 September 1997), the hearing officer took the approach that:

"a document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art."

In Instant Foundations supra, the delegate when considering the question of whether a document could be ascertained stated:

"Considering the latter of these criteria first, I do not think there is any doubt that the various documents and acts which the SFL and Turson have established as being in the public domain before the priority date of the claims would be "understood" and "regarded as relevant" by the person skilled in the art.  However I think considerable uncertainty surrounds whether those documents upon which an allegation of lack of inventive step might be sustained, namely, the Chance 1983 and 1988 catalogues, would also have been "ascertained."

In Dyno Noble Asia Pacific Ltd v Orica Australia Pty Ltd [1999] FCA 1369 (5 October 1999) at paragraph 189, it was stated that:

" Although the "mosaic" approach has been excluded, in connection with novelty and inventiveness, by subs 7(1) and (2) of the Patents Act it seems likely that subs 7(3) reflects Lord Reid's distinction between the respective prior art bases for the purposes of novelty and inventiveness by use of the words (in connection with inventiveness):-
... being information that the skilled person mentioned in subs (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.

The word "ascertained" poses some superficial difficulties of construction, although one would expect it to mean "discovered" or "found". The report of the Industrial Property Advisory Committee, Patents, Invention and Competition in Australia, dated 29 August 1984 (the "IPAC report"), and the Federal Government's response to that report (the "IPAC response"), both support this interpretation. The IPAC report and the IPAC response were referred to in the second reading speech when the relevant bill was first introduced in 1989 (Parliamentary Debates - House of Representatives - 1 June 1989 at 3479). See also the second reading speech for the relevant bill when reintroduced (Parliamentary Debates - House of Representatives - 10 October 1990 at 2565)."

There is simply no evidence to suggest that a person skilled in the art could have been expected to have located the United Kingdom 1973 catalogues.  Also given that there is no actual evidence of publication occurring, I am reluctant to accede to Counsel's argument.  Furthermore as previously decided, the opponent has not established that it was common general knowledge before the priority date to manufacture two-part handles by overmolding.  The onus clearly rests upon the opponent to prove its case.  In respect of the publication of the 1973 catalogues, the opponent simply has not proved its case.

Hence, Counsel's submission fails.

Inventive step: The rear bumper

A further argument submitted by Counsel related to the additional feature of the rear bumper.  Again, the evidence on this comes from Mr Petschel.

Petschel stated:

"Given the soft nature of the outer grip and the tendency for users of the trowel to strike the rear of the handle onto bricks, it would be obvious to incorporate a rear bumper on to the handle to protect the soft grip."

"Alternatively, the inner material protruding through the rear of the handle could also be suitable for this purpose to avoid unnecessary component and assembly costs."

There is no need for me to comment on this feature as it is appended to novel and inventive claims.  However I do note that there is no suggestion from Mr Gurr that the identification of the problem gave rise to an inventive step.

Manner of Manufacture:

The opponent argued that claim 1 at least was not directed to a manner of manufacture.  Counsel for the Neill Tools suggested that the invention was a mere collocation, was directed to a new use of a known substance and lacked inventive merit.

Collocation

A collocation comprises a number of known integers, process steps, or the association of materials or chemical substances in such a way that neither a working interrelationship nor a potential working interrelationship exists between its various constituent parts.  That is, each part performs its normal function, and is not functionally dependent on any other part.

In this context, "known" means publicly available.  This situation relies on a "collocation" of items of prior art, rather than a "mosaic" thereof in the patent law sense; Ramset Fasteners (Aust) Pty LtdvAdvanced Building Systems Pty Ltd and Anor 34 IPR 256.

In International Paint Co. Ltd.'s Application, (1982) RPC 247 the question of collocations was dealt with at page 275, in the following terms:

"certain of the specific grounds included in the broad head of "no manner of new manufacture", of which collocation is one, are really cases which may be characterised as "so utterly obvious that the Comptroller can even consider them of his own motion in the absence of an opposition", and this fits in with the line of authorities."

"Such cases are the cases - but only those cases where the ingredients of a mixture, or the parts of an article each (to use the modern vulgarity) "do their own thing". That is to say, howsoever juxtaposed to the other ingredients of the mixture or parts of the article, each part performs its own function and would do so even in the absence of the other parts.  The classic cases of collocation are those mentioned in Through the Looking Glass:  "Mix sand with the cider, and wool with the wine". However novel and unobvious in practice such mixtures may be, they are mere collocations and cannot be allowed to be patented for the ingredients do not react with each other and the mixtures are obvious in law."

A collocation is only unpatentable if all its integers are known.  Where one of the integers or steps is new and otherwise patentable the inclusion of such an integer in a collocation is not objectionable under sec 18(1)(a).  In B.U.S.M. v. Fussel, 25 RPC 631 at page 649, Fletcher-Moulton LJ states:

"if a patentee could rightly claim a general grant, but he limits that grant in any way - limits it, not extends it - no such limitation can destroy the validity of his grant.  Supposing the Patentee was entitled to claim this first group by itself, i.e., generally, and he chose only to claim it when used in combination with a special operating mechanism, his so claiming it has limited, and not extended, his grant; and no such limitation which amounts to a present to the public of his invention, excepting when used under such circumstances, can possibly injure the validity of the grant, though it may prevent doubts arising as to the validity of the grant."

This is similar to the well known case of Williams v Nye, 7 RPC 62 (the sausage machine case), in which the alleged invention consisted of a well known mincing machine which fed meat to a well known filling machine so as to include in one apparatus two machines which had formerly been used separately; the mincing part performed no more than its already well known functions and similarly with the filling part.

A patentable combination is a new combination of old integers having a working interrelationship or, in the case of chemical combinations, having a synergistic effect.  In British Celanese Ltd. v. Courtaulds Ltd., 52 RPC 171 at pages 193-194, it was said:

"It is accepted as sound law that a mere placing side by side of old integers so that each performs its own proper function independently of any of the others is not a patentable combination, but that where the old integers when placed together have some working inter-relation producing a new or improved result then there is patentable subject-matter in the idea of the working inter-relation brought about by the collocation of the integers."

In Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd, (1998) 152 ALR 604, (1998) AIPC 91-401), the High Court referred to Welch Perrin & Co Pty Ltd v Worrell, (1961) 106 CLR 588 on combinations as follows:

"Referring to the specification, their Honours [the court in Welch Perrin & Co Pty Ltd v Worrell] said:
'It was not seriously disputed that it is for a combination, in the sense that word bears in patent law. That is to say, what is described is a machine, the elements of which are all well known and simple mechanical integers, but combined so that they are not a mere collocation of separate parts, but interact to make up a new thing."

This notion of a 'new thing' includes a new result, 'that is, a new way of achieving an old purpose or the fulfilment of a new purpose' (Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 67), and 'a new combination of features to obtain an improved result' (Meyers Taylor v Vicarr Industries Ltd (1977) 137 CLR 228 at 249). The significance of the exclusion of a 'mere collocation of separate parts' appears from the statement by Aickin J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 266 that it is 'the interaction' between the integers which is 'the essential requirement'. It is this which supplies the inventive step and denies an allegation of lack of subject-matter in the case of a valid combination patent."

That is, for a combination to be patentable there has to be a working interrelationship or a potential working interrelationship between the component integers.

Mr Gurr for the patent applicant expressed his argument as follows:

"In the present invention, there is a working interrelationship between the specific features of the outer grip member, inner core and protective fingerguard, particularly their configuration and the relative coefficients of friction of the outer surfaces of these features which enables an improved result whereby the palm and first three fingers of the user's hand can firmly grip the handle without slippage of the trowel whilst the forefinger and thumb of the user's hand can slide across the outer surface of the fingerguard to provide better control in manipulating the trowel and protect the forefinger from mortar which is being trowelled and thereby prevent callusing of the hand."

While it is very clear that there is a working interrelationship between the outer grip member and inner grip member, the argument that there is a working interrelationship between these features and the finger guard is not so easily answered.  Mr Gurr emphasised that both features were needed to produce the improved result.  However, both the handle and the finger guard produce separate and distinct improved results.  The handle produces improved grippability while the finger guard protects the fingers from chaffing.  At first glance, there appears to be no functional interdependence between the handle and the finger guard; each part apparently does its own thing.  However, if each in doing its own thing produces an improved effect in control of the trowel in a "synergistic" sense then the invention is not a mere collocation.  Mr Gurr emphasised the effect that both features make to the operation of the trowel.  I tend to agree with Mr Gurr on this point.  It is at least plausible, although I am not totally convinced about it. 

I think Mr Petschel would tend to agree.  Mr Petschel when referring to the nature of the invention stated:

"… so as to provide high grip in one part and allow for slippage in another part where the thumb and forefinger rest on the shank of the trowel."

This seems to me to indicate a synergistic effect.  Given this statement by the opponent's declarant, I am more convinced that the claim defines a combination.

Although I have some reservations about claim 1, I do not feel that the opponent has clearly persuaded me that the claim is directed to a mere collocation.  Hence, for the above reasons, I conclude that the invention as defined by claim 1 relates to a combination.

Furthermore in this context of manner of manufacture, "known" means publicly available; Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) 34 IPR 256 at 272. As there is no evidence before me to demonstrate that both a trowel with a two-part handle and a towel with a finger guard are known, I cannot agree with Counsels' argument of this point. This proposition can be put in the alternative as follows. Even if I were of the view that claim 1 were to be directed to a collocation, there is no probative evidence before me that either a two part overmolded handle or a finger guard are known features on trowels. Hence this ground of lack of manner of new manufacture is not made out.

New use of known substance

Counsel for the opponent argued that claim 1 did not define a manner of new manufacture because it was directed to a new use of a known substance.  Specifically, Counsel argued that hard plastics materials were known and their properties would make them suitable for use as the handle (ie the inner core) and the finger guard.  Furthermore as softer plastics were also known, their properties would make them suitable for use as the outer handle (ie the outer grip member).  Counsel further submitted that it would be obvious to combine these new uses together.

In Commissioner of Patents v Microcell Ltd, 102 CLR 232 at page 251, (rocket projectors comprising tubes of reinforced synthetic resinous plastic material), the High Court held that there was:

"in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable.  A claim for nothing more than that cannot be subject-matter for a patent, and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do".

The use of a known material in the manufacture of known articles for the reason that it possesses a known property which renders it useful for that purpose is not a manner of new manufacture. Thus, claims for a safety razor having a handle made entirely of soft rubber were refused, it being known to provide flexible handles for such devices, though not of soft rubber; Axien's Application, 53 RPC 127.

However this is not the case here.  Just as in this context as in the case of collocations, "known" also means publicly available.  There is no evidence before me that the features of the trowel are known.  For this argument to be accepted it must be shown that the features of the trowel, ie the two-part handle and the finger guard are known.  This has not being done.  Furthermore there is no evidence to suggest that it would be obvious to combine these new uses together.

Consequently this ground of manner of new manufacture is not made out.

Inventive Merit

As an alternative to the above submissions on lack of manner of new manufacture, Counsel for Neill Tools raised the issue of lack of inventiveness.

"To put it a slightly different way, the claimed invention must have a sufficient degree of inventiveness to warrant the granting of monopoly rights."

Counsel submitted:

"In Griffin v Isaacs (1942) 12 AOJP 739 at 241, Starke J. stated "a development which any competent workman in the trade might have made if he needed it is not an invention and is wanting in … subject matter."  Similarly, Justice Lockhart stated in R D Werner & Co Inc v Bailey Aluminium Products (1989) 13 L.P.R. 513, at 523 "…through small, there must be some difficulty overcome some barrier crossed."

On the basis of these authorities, Counsel suggested that in view of the admissions of the acknowledged prior art contained in the specification together with the evidence filed by the opponent that:

·    "The use of softer, more grippable polymer, overmoulded onto a harder more durable polymer for handles was well known at the priority date.

·    The use of hard plastics acting as a finger guard on a trowel was well known.

·    It would be obvious to the skilled addressee to combine the overmoulded handle with the extended hard plastic fingerguard."

Mr Gurr referred to the case of Bristol-Myers Squibb Company v F.H. Faulding & Co. Ltd. 46 IPR 553 in which the court held:

"it is not easy to envisage circumstances in which a claimed invention may lack the threshold requirement of inventiveness, but yet involve (for the purposes of s 18(1)(b)(ii)) an inventive step.  This is not a case, like Philips, where there was no attack on the patents on the ground of obviousness.  It was, instead, a case where expert evidence, including evidence as to common general knowledge, was available (and was given).  Where the Court has evidence on the basis of which it can make a finding about common general knowledge, and the other information referred to in s 7(2) and s 7(3), and about what would or would not have been obvious to persons skilled in the relevant art, it must be only rarely that it will be appropriate to find (by resort to a "threshold test") lack of inventiveness on the face of a specification.  In our opinion this is not a case where such a finding is justified."

As noted by Mr Gurr, the ground of lack of inventive step has been supplemented by evidence of common general knowledge.  Counsel's argument rests on this evidence.  As I have already commented, the ground of lack of inventive step was not made out.  There is nothing on the face of the specification itself, which would suggest that the present invention would have been obvious to a person skilled in the art.

Accordingly, this ground of opposition is also not made out.

Manner of manufacture: The Rear Bumper: claims 8, 9, 12, 19, 22 and 25.

Counsel argued that the inclusion of a rear bumper renders these claims mere collocations.  I do not need to consider this argument in detail, as these claims are dependent upon appropriate independent claims, which I have already found to be directed towards a novel and inventive combination.

Hence these claims are directed to a manner of manufacture. 

CONCLUSION

The opposition fails.  No ground of opposition was successful.  In light of the evidence served in this opposition, the claims possess an inventive step and are directed to a manner of manufacture.  Hence, I direct that the application be sealed after 30 days from the date of this decision.  If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

COSTS

Costs normally follow the event.  I see no reason to depart from this practice.  Hence costs are awarded against Neill Tools Ltd.

G.M.Cox
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  : Spruson & Ferguson

Patent attorneys for the opponent   : Carter Smith & Beadle