Michael Lim v CTA Australia Pty Ltd - [2018] APO 5

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Michael Lim v CTA Australia Pty Ltd [2018] APO 5

Patent Application: 2013200754

Title:Improvements Relating to Tactile Ground Surface Indicators

Patent Applicant:                   CTA Australia Pty Ltd
Opponent:  Michael Lim
Delegate:  M. G. Kraefft
Decision Date:  17 January 2018
Hearing Date:  15 November 2017, in Melbourne

Catchwords: PATENTS – section 59 – opposition to grant of patent – whether specification complies with section 40 – whether claimed invention was novel – method of manufacturing tactile ground surface indicator – prior use considered – whether prior use disclosed method of manufacture – claimed invention novel – whether there was inventive step – whether prior document could be reasonably expected to have been ascertained – claimed invention has inventive step – opposition fails on all points raised by opponent

Representation: Counsel for the applicant: Mr Ben Fitzpatrick
Patent attorney for the applicant: Mr Robert Finn, Davies Collison Cave.

Patent attorney for the opponent: Mr Gavin Doherty, mdp Patent and Trade Mark Attorneys.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013200754

Title:Improvements Relating to Tactile Ground Surface Indicators

Patent Applicant: CTA Australia Pty Ltd
Date of Decision: 17 January 2018
DECISION
The specification complies with Section 40 on all points raised by the opponent. Moreover, the claimed invention is novel and has an inventive step.
The opposition fails on all points relied upon by the opponent.
Subject to appeal, I direct the application proceed to grant.
Costs in accordance with Schedule 8 awarded against the opponent, Michael Lim.
REASONS FOR DECISION
BACKGROUND

CTA Australia Pty Ltd (“the applicant”) filed patent application 2013200754 on 13 February 2013. The application is based on an Australian provisional application, 2012903258, filed on 30 July 2012 (“the priority date”). Application 2013200754 was advertised accepted on 30 July 2015.
Michael Lim (“the opponent”) filed a notice of opposition on 30 October 2015. A statement of grounds and particulars followed on 29 January 2016.
The parties completed the evidentiary stages on 8 November 2016.
On 1 December 2016, the applicant filed a statement of proposed amendments under Section 104 to amend the specification. The nature of the proposed amendment involved a minor change to claim 3 of the specification. The amendment was allowed on 27 March 2017.
SPECIFICATION
The specification describes the present invention as providing improvements in relation to tactile ground surface indicators (“TGSIs”). More particularly, the invention provides improved methods of manufacturing a tactile ground surface indicator, and indicators formed by such methods.
As background, the specification describes TGSIs comprising protuberances which are fixed over walking surfaces, including in particular footpaths, stairs and platforms. The purpose of the protuberances is to principally warn blind and vision-impaired pedestrians of hazards and/or provide them with directional information. The present invention is stated to provide improvements relating to TGSIs, particularly the manufacture thereof.
The specification, as amended, concludes with 23 claims. Claim 1 is the only independent claim and reads as follows.
1.A method of manufacturing a tactile ground surface indicator which comprises a head configured to lie fixed over a ground surface, the method comprising plastically deforming a section of metal plate to form a dish-shaped piece and machining an exterior of the dish-shaped piece whereby an external profile of said head is formed.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent listed five grounds of opposition. These were that the claims were not clear and succinct, not fairly based on the matter described in the specification, not novel, did not involve an inventive step and were not for a manner of manufacture. The statement included particulars against each of these grounds. At the hearing, the opponent did not pursue the last ground.
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr Gavin Peter Doherty, Mr Dean Alexander Homicki and Mr Celestine Patrick McCuskey. Mr Doherty filed two declarations.
Mr Doherty is the patent attorney acting for the opponent in the present matter. In his first declaration, Mr Doherty presented a dictionary definition of the term “plastic deformation” and discussed supposed conflicts that arose with the use of that term against other terminology in claim 1 of the application. In his second declaration, Mr Doherty challenged aspects of the applicant’s response to the examiner’s fifth report in respect to whether a skilled addressee in the field would have considered searching Japanese patent literature.
Mr Homicki owns a company specialising in universal access asset management and maintenance. This includes assessing access assets such as TGSIs. In his evidence, Mr Homicki principally discussed the development of the TGSI industry in Australia from initial foundations in Japan and subsequently elsewhere overseas. Mr Homicki also discussed some of his own design registrations in respect to TGSIs and his use of patent searches.
Mr McCuskey is principal of a company specialising in the design, development and installation of TGSIs and other related flooring solutions. In his evidence, Mr McCuskey principally discussed his development and installation of various TGSI designs at various locations in Sydney. He also presented exhibits describing and illustrating the relevant TGSIs.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Mr Michael Robert Finn and Mr Daniel DeDomenico.
Mr Finn is the patent attorney representing the applicant. His evidence disputes Mr Doherty’s position on the reading of claim 1.
Mr DeDomenico is a part owner of the applicant and the named inventor of the invention the subject of the present application. In his evidence, Mr DeDomenico discussed the development and adoption of TGSIs in Australia. He also discussed the various manufacturing processes of TGSIs in the industry and that the TGSIs presented in the opponent’s evidence either left the method of manufacture unapparent or would not have involved plastic deformation as claimed in the present case. Mr DeDomenico concluded by stating that he never used a patent search to develop a product.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr Doherty and Mr McCuskey.
Mr Doherty repeated his statements, with further support from attached exhibits, about the term “plastic deformation” in the context of claim 1. He challenged the clarity and fair basis of claim 1.
Mr McCuskey principally addressed Mr DeDomenico’s evidence by stating that the claimed plastic deformation and machining steps were common practice at the relevant time. He referred to one of the TGSIs presented in his evidence in support and stated the product was plastically deformed from a metal sheet with a pattern of concentric circles, on the top surface, formed during the pinching process. Mr McCuskey further stated that, in any event and irrespective of the manufacturing technique employed, it was common practice to use a computer numerically-controlled (“CNC”) machine to machine an anti-slip pattern in the upper surface of the TGSI.
EVIDENCE OF DRIVING FORCES FOR TGSI DEVELOPMENT
The evidence amongst the experts in this case is consistent on a couple of points on the driving forces in Australia behind TGSI development. The first was the enactment of the Disability Discrimination Act 1992 (“DDA”) in Australia in 1992. This legislation made it unlawful to discriminate against persons with a disability and, more specifically for the present matter, for public places to be inaccessible to persons with a disability. The second was the costs of raw materials and production. Mr McCuskey and Mr DeDomenico specifically referred to the cost drivers.
APPLICABLE LAW
As a consequence of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amendment Act”), there are substantial changes to the Patents Act 1990. The date of effect of those changes was 15 April 2013. The application of the Amendment Act in the present case depends on the date of the request for examination. The applicant filed its request for examination on 13 February 2013. Consequently the Patents Act as in force immediately before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that a valid patent could not be granted (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 18 of the Patents Act 1990 relates to patentable inventions. Relevant parts of subsection (1) appear below.
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a) is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b) when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
(c) is useful; and ………
Subsections 40(2)(a), (b) and (3) at the relevant time were as follows.
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent - end with a claim or claims defining the invention; and …
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
PERSON SKILLED IN THE ART
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, [2000] FCA 980, Finkelstein J stated at [70] and [71] that the skilled addressee is the person to whom the patent is addressed and who must construe it. Such person works in the art or science with which the invention is connected or is likely to have a practical interest in the subject matter of the invention. A variety of people may have that interest. Finkelstein J further noted various descriptions given to the skilled addressee. These included the “uninventive skilled worker in the particular field” (Leonardis v Sartas No 1 Pty Ltd, (1996) 67 FCR 126) and the “person skilled in the art” (Genentech Inc v Wellcome Foundation Ltd, (1989) 15 IPR 423).
The parties generally agreed that the relevant person skilled in the present field included persons working and experienced in the design and manufacture of TGSIs. The parties also generally agreed that the experts that provided evidence in this opposition were relevant persons skilled in the field. I would concur with that approach.
CLAIMS – TERMINOLOGY – SECTION 40
The opponent raised numerous clarity and fair basis issues with the claims. On the other hand, the applicant noted the role of evidence from relevant persons skilled in the art as to their understanding of the disclosures in applications and in the prior art. In Otsuka Pharmaceutical Co Ltd v Generic Health Pty Ltd (No 4), [2015] FCA 634, Yates J adopted the following proposition from The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd decision, [1972] RPC 457. At [124] of Otsuka and quoting from General Tire at 485:-
“The earlier publication and the patentee’s claim must each be construed as they would be at the respective relevant dates by a reader skilled in the art to which they relate having regard to the state of knowledge in such art at the relevant date. The construction of these documents is a function of the court, being a matter of law, but, since documents of this nature are almost certain to contain technical material, the court must, by evidence, be put in the position of a person of the kind to whom the document is addressed, that is to say, a person skilled in the relevant art at the relevant date.”
Plastic Deformation
At the outset it should be noted that the inventor Mr DeDomenico, at [66] of his evidence, succinctly described the application as disclosing a method of manufacture that involved coining and doming the tactile head, and machining the top surface of the head to form what may otherwise appear to be a conventional tactile indicator. Thus, coining and doming may be regarded as exemplary methods of plastic deformation in this case.
The opponent referred to the evidence in this case of the understanding of the term “plastic deformation” in science and industry. The opponent contended that it was well established that plastic deformation referred to a process whereby a body, under a load greater than the material’s yield point, experiences a change in shape that is permanent. By contrast, elastic deformation is a non-permanent deformation such that a material changes its shape on application of a load and returns to its original shape on removal of the load.
There appeared to be no dispute between the parties that plastic deformation was a permanent, non-recoverable deformation of a body after release of an applied load.
The opponent also contended that plastic deformation was a permanent deformation without fracture of the body. The applicant contested the opponent’s definition that required the body to be without fracture but also indicated that claim 1 did not offend against the opponent’s definition.
From the definitions presented in evidence in the present case, it is clear that plastic deformation is defined with respect to the permanent change to a solid body or a piece of metal. I think this context carries an inference that the solid body or piece of metal is not broken or fractured when a load is applied. In the alternative, I would regard a deformation generally as a change in the form of a body or piece of metal, not a break-up of it into a number of pieces. While some definitions of plastic deformation may not explicitly state “without fracture”, I would find that absence of fracture is inferred in the present context.
Metal plate, section of metal plate and dish-shaped piece
The opponent argued that the plastic deformation step in claim 1 of plastically deforming a section of metal plate to form a dish-shaped piece had adverse consequences against the clarity of the claim. The opponent stated that claim 1 clearly uses the term “piece” to define the result of the plastic deformation step. For this step to form a “piece” from “a section of metal plate”, the opponent contended the “piece” must be a lesser portion of the metal plate. Thus the step of plastically deforming a section of metal plate means separating the piece from the metal plate. According to the opponent, as separation requires fracture, the opponent stated that this step could not be performed by plastic deformation and thus the scope of claim 1 was indeterminate.
The applicant stated there were a number of difficulties with the opponent’s proposition. Firstly there was no reference in claim 1 to “the metal plate” but to “a section of metal plate”. The applicant submitted it is from this “section” that the “piece” is formed. Accordingly there was no separation. Secondly, the applicant stated this construction was reinforced by claims 2 and 3 which respectively required the “section” to be cut from the metal plate substantially at the same time as it is plastically deformed or before it is plastically deformed. As Mr Finn’s evidence at [14] indicated, it is of the “flat metal plate” in the method defined in claims 2 and 3, not the “section of metal plate” in the method of claim 1, that the “piece” must be a lesser part. Claim 1 allows for the “piece” to make up the entirety of the “section of metal plate”.
It would appear that the opponent has attempted to overlook the distinction between a section of metal plate and the metal plate overall in the context of the first three claims. While claim 1 is silent from where or how a section of metal plate is derived (my emphasis), it is clear that the subsequently defined cutting, in claims 2 and 3, of that section from the metal plate has nothing to do with the plastic deformation step of claim 1. The plastic deformation is of the section of metal plate, not of the metal plate overall. Thus there is no conflict in the claims between separation or fracture of the section of metal plate from a plate overall against the plastic deformation of that section.
The opponent then more directly addressed the “section of metal plate” vis-a-vis the “dish-shaped piece” and submitted that a fair construction of claim 1 also allowed for the piece to be a lesser part of the section of metal plate (my emphasis). On the other hand, the reference by Heerey J in Welcome Real-Time SA v Catuity Inc, [2001] FCA 445, to statements from Barwick C.J in Upper Hunter County District Council v Australian Chilling and Freezing Co Ltd, [1968] HCA 8, is pertinent in the present case. Quoting from [9] of the Upper Hunter case,
“But a contract of which there can be more than one possible meaning or which when construed can produce in its application more than one result is not therefore void for uncertainty. As long as it is capable of a meaning, it will ultimately bear that meaning which the courts, or in an appropriate case, an arbitrator, decides is its proper construction: and the court or arbitrator will decide its application.”
At [168] of the Catuity decision, Heerey J indicated that the principle is equally applicable to the construction of a patent specification.
In the present case, the opponent’s approach may be a possible reading of claim 1. That may be the case if a “piece” were deemed to have been cut from something or otherwise a subset, as in a piece of cake for example. I consider that approach to be an unnatural reading of claim 1. That claim clearly defines that a section of metal plate is plastically deformed to form a dish-shaped piece (my emphasis). In the present context, the formation of the dish-shaped piece does not suggest a cut from the section of metal plate. Rather the formation suggests a shaping of the section of metal plate. It is also noteworthy that none of the experts in this case mentioned any such problems, as contended by the opponent, with understanding the claims. Noting also that plastic deformation is not a fracture, I think the natural reading of that passage of claim 1 is as Mr Finn put in evidence at [14]. That is, the “piece” makes up the entirety of the “section of metal plate”. I conclude that claim 1 is clear.
“Machining”
Some discussion took place at the hearing as to what was meant and what scope was covered by the process of machining in an industrial context. The opponent submitted that machining meant simply the use of a machine. That is, there was no limitation to just cutting or removal of material. The opponent supported this position by suggesting that Mr McCuskey’s evidence in reply at [5] indicated that a CNC machine was any controlling machine. On the other hand, Mr McCuskey’s evidence at this point does not appear to be indicative in this respect.
The applicant adopted the position that machining meant the removal of material, such as with a lathe as exemplified at page 3 lines 7-9 of the specification. In further support, the applicant referred to Mr McCuskey’s evidence in support at [17] and evidence in reply at [7] and stated that Mr McCuskey distinguished machining from a pinching process. Moreover, the applicant referred to page 8 of the specification which describes Figures 23 and 30 as depicting the machining of an assembly. The illustrations clearly depict a tool for cutting away a section of the head and/or stem of a TGSI.

CNC machines developed from the application of digital computer technology to the control of manufacturing processes. In principle, a CNC controller operates a series of motors and drives of a machine to control the motion of the machine along multiple axes, usually at least the x and y axes, in accordance with pre-programmed computer instructions. It should be noted that CNC machining may extend beyond translational motion control, such as along x, y and z axes, to also machine around one or more rotary axes. The concept has been applied to various types of machine tools such as milling machines, lathes, plasma cutters, laser cutters, welders, grinders, sheet metal stampers, 3D printers, etc. While it may be more common to think of machining as involving the cutting or removal of material, the above examples suggest that machining should not be thought of so restrictively. For example, welding involves the fusion of materials. Similarly, 3D printers deposit material, say plastic, in a programmed motion to produce a desired product.
In the context of the present claims and specification as a whole though, it should be noted that the field relates to the manufacture of TGSIs, and more specifically for present purposes, where machining an exterior of a dish-shaped piece forms an external profile of the head of the TGSI. The use of a lathe is specifically mentioned. I conclude in the present context that machining refers to the cutting or removal of material.
“Substantially simultaneously”
The opponent submitted that claim 2 was not clear in respect to the use of the term “substantially simultaneously”. The opponent contended that whilst the term “substantially” was found permissible in Leonardis, Nicola v Sartas No 1 Pty Ltd, [1996] FCA 449, to indicate that the term it qualified should not be read too literally, this generally related to uses of the term in a spatial context, such as substantially vertical or substantially co-axial. In a time context such as the present case, the opponent stated that either events happen simultaneously at the same time or they do not. There is nothing substantially simultaneously.
The reasoning behind the opponent’s distinction between the term “substantially” being used in a time-based context as opposed to a spatial context is not readily apparent. Specifically, it is not readily apparent why events could not be said to occur substantially simultaneously. Two local events occurring a few seconds either side of midnight on New Year’s Eve for example, and whilst occurring in different years, may still be said to have occurred substantially simultaneously. The term “substantially” was found permissible in the Leonardis case. I see insufficient reason in the present case to make a distinction in the term’s use in a time-based context. I conclude that claim 2 is clear.
TGSI head and stem
The opponent referred to a summary statement in the specification at page 16 lines 8-11 to state that it was clear that the described invention related to the manufacture of a TGSI that comprised both a head and a stem interconnected together. While the opponent also acknowledged a disclosed embodiment of an indicator head anchored to the ground directly without a stem, the opponent maintained there was a clear distinction drawn between that indicator head and the indicator which forms the invention. The opponent argued the method of forming an indicator in accordance with the invention is only described in relation to a process whereby a head portion and a stem portion are joined and further processed. In terms of the claimed method of manufacture, the opponent argued the claims were clearly directed to a method of manufacturing a TGSI, and the omission of a stem portion and the manner of its formation meant the claims lacked fair basis.
The opponent’s position is not readily apparent. The invention the subject of the application is clearly directed to improvements in TGSIs, principally as aids for blind or vision-impaired pedestrians to warn of hazards or to provide directional information (see page 1, lines 9-13 of the specification). While this same passage of the specification also requires the TGSIs to be fixed over walking surfaces, the crucial matter from this passage and the specification as a whole is the surface, or near surface, of the TGSI and not what is necessarily below the surface. More specifically, the method of fixing or anchoring the TGSI is secondary in the present case to that of shaping and profiling the surface of the TGSI to warn of hazards or provide directional information. The specification describes an embodiment of an indicator head without a stem. I conclude the present claims are fairly based.
Other Section 40 matters
In submissions, the opponent relied on numerous further clarity and fair basis issues as documented in the opponent’s statement of grounds and particulars without making further substantive submissions on any of those particulars. Having perused those particulars, it is clear that some of those relate to issues that have already been addressed above albeit the further issues were in respect to several dependent claims. For the other particulars I am not satisfied that any of the opponent’s objections have sufficient merit to invalidate any subsequent patent if granted in this case.
NOVELTY
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19 at [20]; 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co, [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable directions to do what the patentee claims to have invented" (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited, [1972] RPC 457 at 486). In a similar vein, what a prior art document teaches is to be distinguished from what might be “included” or “encompassed”. “A prior broad disclosure thus may not be sufficient ‘in the absence of the skilled addressee understanding or perceiving’ the later claimed invention therein” (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No. 3), [2011] FCA 846 at [180]).
Subsection 7(1) also refers to prior art information made publicly available through doing an act. Two types of actions may apply. They are prior use or prior oral disclosure.
Prior use requires a relatively high standard of proof. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. states:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation."
In terms of whether information was publicly available at the relevant time, in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd, [2008] FCAFC 139, the Full Federal Court listed several principles at [124] that emerged from a number of prior cases. Relevant to the present matter:-
“… information said to destroy novelty must be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention (cf RD Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 593-594)
… information said to destroy novelty must ‘enable’ the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point (Stanway Oyster at 581-582).”
At [125], the court further referred to Jupiters Ltd v Neurizon Pty Ltd, [2005] FCAFC 90, and stated as follows:-
“In Jupiters, there was mere observation of electronic gaming systems or devices. In the absence of direct evidence from a person skilled in the art of what could be gleaned from such observation, the Full Court was not prepared to conclude that it was sufficient to constitute an anticipation. Jupiters did not discharge its onus to establish an enabling disclosure (at [147]).”
Quoting more directly from [146] of Jupiters:-
“The question as to what information was made available by Jupiters to its customers remains. No direct evidence was given on the point. We have held that mere observation of the system in operation by a person skilled in the art would not disclose the features about it which would anticipate the invention claimed here.”
In the present case, the opponent relied on the following prior art.
Prior Use – Pathfinder
Mr McCuskey exhibited a brochure for a TGSI product having the product name “Pathfinder – Discreet Stainless steel cap with poly shaft tactile system”. Mr McCuskey stated that his company sold this product in 2008 and that it was installed for the City of Sydney in Domain in 2008. In evidence in answer, Mr DeDomenico indicated that he was well aware of this product around 2008. I am prepared to accept the product had been in public prior use before the priority date.
Mr McCuskey stated the product was formed from a sheet or strip of metal that was passed through a series of punches to form different stages of the cap portion. The pattern of concentric circles, on the top surface, was formed during the pinching process. In submissions, the opponent equated the punching and the pinching processes with plastic deformation. Mr McCuskey further stated that, to get a cleaner finish and to remove any excess material, it was not uncommon to machine finish the product, which was done by way of a CNC machine. On the other hand, machining a product to get a cleaner finish or to remove excess material does not equate to machining to form an external profile as claimed in the present case. In evidence in reply, Mr McCuskey further advanced the position that the pattern formed during the pinching process was of sufficient quality such that there was no need to machine the surface. If he had thought it necessary at the time, Mr McCuskey stated that he would have done so as it was very common practice to machine the upper surface of the TGSI to generate the concentric pattern. He again referred to CNC machining.
A further exhibit from Mr McCuskey illustrated the tooling punch used to form the cap portion. It appears the tool punch has a patterned surface for forming the concentric ring pattern on the top surface of the TGSI, and thus may support the opponent’s contention that the punching process and the pinching process are part of the same plastic deformation step.
There would appear to be significant setbacks for the opponent with the Pathfinder evidence in this case. Even if the above description of manufacture were so, there is no evidence in this case that the contents of both exhibits were publically available before the priority date. Moreover and in turning back to the point of prior use, in Sydney for example, it would appear difficult in this case to align the evidence of the finished Pathfinder product with the claimed invention which is to a method of manufacture. In this context, it may be noted that the opponent has not presented any evidence from persons skilled in the art or others, for example, that viewing or examination of the Pathfinder installation in Sydney for example would have led them to conclude that the Pathfinder product had been manufactured in the way claimed in the present case. The present situation appears to be similar to the situation in Jupiters. The evidence in this case is short on establishing that the Pathfinder prior use had publically disclosed the method of manufacture as claimed in this case.
Moreover, the Pathfinder evidence in totality is absent of the claimed feature of machining an exterior of the dish-shaped piece whereby an external profile of the head is formed. On the contrary, Mr McCuskey stated the pattern of concentric circles was formed by a pinching process. The opponent’s assertions of the commonality of machining a finished product with a CNC machine are irrelevant in the present case. There are no clear and unmistakable directions of the Pathfinder product having been machined to form the concentric pattern.
On the available evidence in this case, I conclude the claimed invention is novel.
INVENTIVE STEP
Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art. A document, or two or more related documents if a person skilled in the art would treat them as a single source of information, is prior art for this purpose if "a skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded [the document] as relevant" (Subsection 7(3) at the relevant time).
The test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"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."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53], appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [No. 2], [2007] HCA 21, (2007) 235 ALR 202, general principles regarded to be of continuing relevance, at [50] – [52], were that “obvious” means “very plain”, a scintilla of invention remains sufficient to support the validity of a patent, there must be some difficulty overcome, some barrier to be crossed, and an invention must be beyond the skill of the calling.
Where the invention lies in a combination of integers, the question is not whether each individual integer was obvious but rather whether the combination as a whole was obvious when compared to the prior art base. In Alphapharm at [41], the High Court stated:
“The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of ‘perhaps many possibilities’ which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers.”
Common General Knowledge
The evidence from both sides suggests that TGSIs were first widely adopted in civic spaces in Japan (for example Homicki at [15] and [17], and DeDomenico at [28]). With the enactment of the DDA in Australia and the development of an Australian standard in respect to TGSI design in the early 1990s (Homicki at [13], [19] and [30], and DeDomenico at [46]-[51] and [57]), the adoption of TGSIs had become widespread in Australia before the priority date. I would conclude that TGSIs were common general knowledge in Australia at the relevant time.
The opponent submitted the common general knowledge around TGSI design and manufacture included the use of conventional machining processes as well as plastic deformation processes for forming the shape of the head of the TGSI. More specifically, processes such as coining and doming, and machining the top surface of the head to form the tactile indicator were well known in the TGSI industry at the relevant time (McCuskey #2 at [9]).
The applicant submitted that Mr McCuskey’s statements were unsupported and made with the benefit of hindsight. Moreover the applicant stated that the opponent’s evidence did not provide a basis for asserting the combination of plastic deformation and subsequent machining as claimed was part of the common general knowledge or obvious at the relevant time.
I am prepared to accept the processes of plastic deformation and the machining of materials may have been well known in various industrial environments at the relevant time. In the present case, the test is whether such processes were common general knowledge in the manufacture of TGSIs. The opponent’s evidence on this point principally rests with Mr McCuskey. He stated, at [9] in evidence in reply, that the processes were well known in the TGSI industry. On the other hand, Mr McCuskey’s only example is that of the work of his own company. At the hearing, the opponent indicated the TGSI manufacturing field was a relatively small field with only a handful of operators in Australia. Nonetheless, I am not satisfied that the operations of only one company in this case would have amounted to having been common general knowledge at the relevant time. It may also be noted that Mr McCuskey acknowledged that his company adopted an exception to the supposedly well-known processes of coining and doming, and machining the top surface of TGSIs. That is, rather than machining the top surface, the company formed the top surface as part of the plastic deformation step which was sufficient for the purposes at the time.
At [32] of his evidence, Mr Homicki stated that his registered designs (exhibit DAH-2) were intended to receive a top face machined in a CNC lathe machine to cut concentric circles or other patterns in the surface. This would suggest the shaped body, for which the method of manufacture is not evident, and machined top face were separate bodies to be subsequently joined. In any case, those designs do not illustrate such a machined top face nor is there any evidence before me that such intent was followed through before the priority date, and followed through to the extent of having become common general knowledge at the relevant time. Moreover, the presently claimed invention relates to plastic deformation and machining of a section of metal plate, that is, a single body, to form the TGSI head, not to the manufacture of a TGSI head from two separate bodies.

From the available evidence in this case, I conclude that plastic deformation for forming the dish shape of the head of a TGSI and then machining the top surface was not common general knowledge at the relevant time. Consequently the claimed invention has an inventive step when considered against the common general knowledge alone.
Subsection 7(3)
Under subsection 7(3), the opponent principally relied on the following Japanese patent document.
JP 09-250113 – Daido Steel Co Ltd (“Daido”)
Ascertaining Daido
The applicant submitted that the person skilled in the art could not be reasonably expected to have ascertained the Daido document before the priority date.
Mr DeDomenico, at [93] of his evidence, indicated that he did not use patent searches to develop a product. Mr Homicki, at [35] of his evidence, indicated that he conducted and used patent searches, and consistently found Japan to be the place of innovation in the field of TGSIs. This would suggest that Mr Homicki was a searcher of Japanese patents, or at least of English language abstracts or translations of Japanese patent literature. At the same passage, Mr Homicki also stated that, when researching and innovating TGSIs between 2000 and 2011, he filed a number of patent applications and design registrations, some of the latter of which were exhibited with Mr Homicki’s evidence. Mr Homicki appears to have been a capable user of the intellectual property system. As such, I need to treat Mr Homicki’s evidence about his use of patent searches with some caution as to whether that is what the uninventive, ordinary person skilled in the art would have done. Mr McCuskey, while also being a patent filer (for example, exhibit CPM-1), did not comment about patent searches in his declarations. Overall, I think the evidence before me is insufficient to demonstrate that the ordinary person skilled in the art would have looked to patent literature at the relevant time as a source of information on TGSIs.
I find the person skilled in the present art could not be reasonably expected to have ascertained the Daido document before the priority date.
Daido Disclosure
For the sake of completeness, I will nonetheless discuss the Daido document.
The opponent relied on a Japanese Patent Office machine translation of the Daido document. The translation described a guidance rivet, equivalent to a TGSI. The rivet has a flat metal top and a circumferential, downward tilt edge around the flat top surface. Underneath is a recessed bottom surface. For the prevention of skidding, the top surface has an uneven, patterned surface.
The machine translation is rather non-idiomatic and unstructured in numerous places. It would thus appear that the Daido disclosure is somewhat compromised in translation. For example, paragraphs [0005] and [0006] of the translation may suggest the process of shaping the TGSI to form the peripheral tilt edge is followed by knurling or press working to form the uneven surface pattern. In this respect, it may be noted that Figure 5 of Daido illustrates a top surface with the uneven pattern while the tilt edge appears smooth. On the other hand, the description in these paragraphs appears inconclusive on the TGSI production sequence.
Figure 9 of Daido is the figure illustrating the production sequence. With reference to Figures 9A – 9E, and [0014] of the translation, the method of manufacturing the rivet comprises the knurling or press working of a circular section of sheet metal to apply the uneven surface pattern. Then, press working of the sheet metal is carried out to form the peripheral edge in a downward, oblique direction.
The applicant submitted that the TGSI produced by the method illustrated in Figure 9 could not be patterned by machining as there was no removal of material. On the other hand, knurling is a process to form a pattern of straight or angled or crossed lines into a material by cutting into the material or rolling a reverse-patterned roller across the material. A lathe may typically be used. I am satisfied that Daido discloses the machining of the upper surface of a material to form an external profile of the head of the material as claimed in the present case.
The opponent indicated that the product illustrated in Figures 1, 3 and 5 was produced by the method of manufacture shown in Figure 9. As mentioned above, the latter figure illustrates sequentially the knurling or press working of a circular section of sheet metal to apply the uneven surface pattern and then press working of the sheet metal is carried out to form the peripheral edge in a downward, oblique direction. Compared to the present claim 1, the opponent thus noted that Daido disclosed the method defined by claim 1 albeit with the plastic deforming and machining steps being reversed in sequence. The opponent submitted there was no inventive step in the reversal of steps.
The applicant referred to Mr DeDomenico’s evidence, particularly at [70], to highlight the difficulty with the opponent’s submission. The applicant submitted there were technical issues to combine plastic deformation and machining of a TGSI, and thus it was not obvious to combine these processes, and moreover not obvious to reverse the steps from that disclosed in Daido.
At [70] of his evidence, Mr DeDomenico mentioned an issue of achieving the “doming” operation with enough material to still allow machining over the top surface. On the other hand, in the same paragraph, Mr DeDomenico also stated that was a task he worked on over merely a few days. Moreover, Mr DeDomenico stated it was a task he had perfected in previous employment. Similarly Mr McCuskey, at [9] in evidence in reply, made light of the combination of coining and doming, and machining of the top surface of the head of the TGSI. Aside from describing the processes as well known in the TGSI industry at the relevant time, Mr McCuskey also mentioned the need to use thicker material if the CNC machining step was used during the manufacturing process, although that step was rejected for cost reasons. Clearly, options in terms of the amount of material to use were under consideration if the machining step were to be employed.
Daido clearly discloses a method of manufacturing a TGSI by a combination of machining and plastic deformation. Thus, such a combination was not new at the relevant time. Accordingly for the present claims, I need to assess whether there was inventiveness in the particular order of performing the steps of manufacturing the TGSI.
The evidence in this case indicates that TGSIs with a dish-shaped appearance and with a profiled top surface were known at the relevant time. Daido is illustrative. On the other hand, the evidence on the claimed steps in the method of manufacture is relatively light. The opponent referred to Mr McCuskey’s evidence in reply at [9] to state that the coining and doming, and machining processes to form the TGSI were well known in the TGSI industry at the time. Mr McCuskey cited his own company’s activities more than four years earlier. On the other hand, in the same passage Mr McCuskey indicated that, rather than machining the top surface, his company formed the top surface as part of the plastic deformation step.
On the evidence before me, I am not satisfied that the method of manufacturing a TGSI by plastic deformation of a section of metal plate to form a dish-shaped piece and by machining of the exterior thereof to form an external profile, in that order as claimed in the present case, would have been done as a matter of routine or as a matter of course at the relevant time.
I conclude the claimed invention has an inventive step over the Daido disclosure.
CONCLUSION
I have found that the specification complies with Section 40 on all points raised by the opponent. Moreover, on the evidence before me, I have found that the claimed invention is novel and has an inventive step.
The opposition fails on all points relied upon by the opponent.
Subject to appeal, I direct the application proceed to grant.
COSTS
Both parties sought their costs. It is normal for costs to follow the event. I see insufficient reason to depart from that approach in the present case. The opposition is unsuccessful. I award costs in accordance with Schedule 8 against the opponent, Michael Lim.
M. G. Kraefft
Delegate of the Commissioner of Patents