Michael Stephen Frawley v Hunter Douglas Limited
[1992] APO 49
•1 September 1992
official notice
decision of a delegate of the commissioner of patents
Application : No. in the name of
Title :
Action :
Decision : Issued .
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 587900 by MICHAEL STEPHEN FRAWLEY and opposition thereto under Section 59 of the Patents Act 1952 by HUNTER DOUGLAS LIMITED
background
Patent application No.587900 was lodged on 18 June 1987 as a complete specification in respect of provisional specification No.PH 6990 lodged on 20 June 1986 and provisional specification No.PH 9438 lodged on the 10 October 1986.
Acceptance of the application was advertised on 31 August 1989. Hunter Douglas Limited lodged a notice of opposition on 23 November 1989.
The matter came to hearing in Canberra on 9 July 1992.
Mr. Michael J Grant, patent attorney of Patent Attorney Services represented the applicant and Mr Peter R Heathcote, patent attorney of Shelston Waters represented the opponent.
As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and Regulation 23.3, are applicable and therefore the opposition is in substance determined in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto.
Although the notice specified the grounds of opposition as those listed in paragraphs (a) to (i) inclusive of sub-section 59(1) of the Patents Act 1952, the submissions at the hearing were limited to the grounds specified in paragraphs (e), (f), (g), (h) and (i); i.e. prior publication, not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, obviousness, lack of novelty and non-compliance with section 40.
EVIDENCE
Prior to the hearing, the opponent had filed Evidence-in-Support and Evidence-in-Reply in the form of statutory declarations and accompanying documentary evidence provided by Mr. Peter Rex Heathcote, patent attorney and Mr. Allan Robert Pavey and Ms. Julie Somerfield, Projects Manager and Technical Products Manager respectively of Hunter Douglas Limited while the applicant, Michael Stephen Frawley, had filed Evidence-in-Answer in the form of a statutory declaration and accompanying documentary evidence.
THE SPECIFICATION
The specification commences by stating that
"This invention relates to the mounting of panels,
such as wall and ceiling panels, in buildings."
Then follows a discussion of the prior art and its associated disadvantages.
The objects of the invention are subsequently set out as follows:
"It is an object of the present invention to provide
an improved panel mounting system which can be
simple to erect and effective in operation.
It is a further object of the present invention to
provide a ceiling structure which is relatively
simple to erect."
Following the objects of the invention is a first consistory statement corresponding to the first independent claim, claim 1, with preferred features exemplified and a second consistory statement corresponding to the second independent claim, claim 19, again with preferred features exemplified.
Embodiments of the invention are followed by the claims which read as follows:
1. A ceiling structure erected within a building,
the ceiling structure comprising:
a plurality of non-intersecting elongated support
members spaced apart and lying generally within a
plane, each elongated support member being supported
by the building structure and having support means
provided integral therewith;
a plurality of mounting channels extending transverse
to and beneath the support members, each mounting
channel comprising in section a web and two opposed
generally upright legs extending upwardly from the
web, the upright legs being engaged and supported by
the support means of the support members so that the
webs of the mounting channels are suspended below
the support members and lie generally in a plane for
the ceiling to be mounted thereto; and
a plurality of ceiling panels forming the ceiling,
the ceiling panels being mounted to the webs of the
mounting channels.
2. A ceiling structure as claimed in claim 1 wherein
each elongated support member includes a lower edge
portion, the support means being integral with the lower
edge portion, the support means comprising support tabs
engaging with and supporting top edge portions of the
upright legs of the mounting channel.
3. A ceiling structure as claimed in claim 2 wherein
the top edge portions of the opposed upright legs of
each mounting channel are turned inwardly towards
each other, the support means comprising a neck
section extending downwardly, an enlarged head at the
lower end of the neck section and defining the
support tabs projecting laterally relative to the
neck section and fitting within the associated
mounting channel, the support tabs defining two
ledges where they join the neck section, the ledges
fitting under and supporting the inwardly turned top
edge portions of the upright legs of the support
channel, the upright legs having been separated by
a force applied thereto to a degree until the head
was received within the support channel after which
release of the separating force allowed the opposed
upright legs to move back towards each other and the
ledges to support the inwardly turned top edge
portions.
4. A ceiling structure as claimed in claim 2 wherein
each mounting channel has outwardly turned upper edge
portions of the channel legs, the support tabs being
defined by two facing hook sections provided at a
lower portion of the associated elongated support
member, the opposed legs of the mounting channel
having been moved towards each other to enable the
outwardly turned upper edge portions to pass
through the space between the facing hook sections
after which the legs were moved apart so that the
hook sections are located beneath and support the
outwardly turned upper edge portions of the opposed
legs.
5. A ceiling structure as claimed in claim 3 or 4
wherein each support tab has an upper edge which is
inclined so that the depth of the tab increases in
the direction towards its outer free end, the
inclined upper edge of the tab being engaged by the
upper edge portion of the associated mounting channel
leg and resisting inadvertent separation of the
mounting channel.
.
.
.
8. A ceiling structure as claimed in any one of the
preceding claims and further including suspension
means suspending each mounting means from the
building structure, the suspension means including a
suspension head co-operating with a suspension
aperture in the elongated support member, the head
passing through the aperture and, after relative
turning, to resisting disengagement so as to thereby
supportingly suspend the elongated support member.
9. A ceiling structure as claimed in claim 8 wherein
the suspension means comprises a suspension clip
mounted to the building structure, each suspension
clip being generally `C' shaped and having holes
provided through top and bottom arms of the `C' shape
so that a suspension rod passes through the holes
upon pressing of the arms of the `C' shape towards
each other, after which the arms of the `C' shape are
released to resiliently spring back and the edges of
the holes in the arms engage with the suspension rod
to resist sliding of the clip down the rod.
10. A ceiling structure as claimed in claim 8
wherein the suspension means comprises a two piece
suspension clip, the clip including a concave spring
piece having holes through which a suspension rod
suspended from the building structure passes and a
suspension piece in co-operative engagement with the
support member, the suspension piece being provided
with the suspension head co-operating with the
suspension aperture in the support member, the
arrangement being such that the spring piece is
mounted on the suspension rod and the suspension
piece has its head operatively associated with the
suspension aperture, the support member having been
then moved into its general desired position and the
suspension piece then secured to the spring piece.
11. A ceiling structure as claimed in claim 8, 9 or
10 wherein the suspended head is provided at the
lower end of a downwardly extending suspension leg,
the suspension head being defined by a neck section,
the co-operating suspension aperture comprising an
elongated slot in the support member through which
the suspension head is passed and subsequently
rotated so that the head cannot be vertically
withdrawn through the slot.
.
.
.
14. A ceiling structure as claimed in any one of the
preceding claims and further including a joining
member joining two mounting channels together in end
to end relationship, the joining member comprising
two opposite attaching means engaging with respective
legs of the two mounting channels and spacing means
holding the opposed attaching means in spaced
relationship, the attaching means co-operating with
the legs of the mounting channels to allow sliding
movement of the joining member along the mounting
channels whereby the joining member is engaged with
one length of mounting channel in the vicinity of the
end thereof, the other length of the mounting channel
being then abutted against the end of the first
mounting channel and the joining member then slid
longitudinally to engage with the second length and
to retain the two mounting channels against relative
movement in a direction other than the general
longitudinal direction of the mounting channels.
.
.
.
18. A ceiling structure substantially as herein
before described with particular reference to the
accompanying drawings.
19. A panel mounting system for assembly with a
building structure, the system including panel
mounting means for mounting building panels in
position, the panel mounting means including:
a plurality of elongated mounting channels each
having in section a web for mounting of a building
panel, each channel also having in section two
opposed legs extending away from the web and
terminating in respective longitudinal edges
which turn outwardly away from each other; and
a plurality of elongated support members for
erection within and support by the building
structure, each support member comprising support
means provided integral therewith, the support means
comprising a plurality of opposed pairs of support
tabs, each pair of support tabs comprising two tabs
which face each other across an intervening space,
the width of separation of the tabs being
substantially equal to the separation of the two
opposed legs of the mounting channel whereby the
opposed legs of the mounting channel can be moved
towards each other to enable the outwardly turned
edges to pass through the intervening space, the
tabs being located and arranged to engage and support
the outwardly turned edges after passing through
the intervening space and then being moved apart.
.
.
.
25. A ceiling support system as claimed in any one
of claims 19 to 24 and substantially as herein before
described with particular reference to the
accompanying drawings.
SECTION 40
With respect to the non-compliance with section 40,
Mr. Heathcote made the following submissions:
(a) Although plurality is not a ground of opposition, claims 1
and 19, and their dependent claims, are directed to
different inventions with no common element of novelty.
Claim 1 is directed to a ceiling structure, while claim 19
is directed to a panel mounting system. As a consequence,
at least one of the claims does not clearly define the
invention and hence the claims as a whole are not clear.
(b) Claim 4 refers to a lower portion of the elongated
support member while claim 2 refers to a lower edge
portion, hence it is not clear whether these integers are
the same.
(c) Claims 3 and 4 appear to be a mixture of apparatus and
method claims hence it is not clear whether the applicant
is attempting to define a structure or, a method of putting
together the structure.
(d) Claim 5 is not fairly based on the description in that when
dependent on claim 3, there is no disclosure of the depth
of each tab increasing in the direction towards its outer
free end.
(e) Claim 9 is unclear in its relationship to claim 8. Claim 8
is directed to a suspension means with a suspension head
while claim 9 is directed to a suspension means comprising
a suspension clip. It is not clear how these two claims
relate.
(f) The scope of claims 10 and 11 is not clear due to the
combination of integers.
(g) Claim 14 is not clear due to a lack of antecedents. In
particular, there are no antecedents for "the opposed
attaching means" (line 6), "one length of mounting channel"
(line 10), "the other length of mounting channel" (line
11), "the first mounting channel" (line 12) and "the
second length" (line 12).
(h) Claim 25 is not clear in that it refers to all drawings,
when clearly, all drawings are not applicable.
Although not clearly mentioned by Mr. Heathcote, claim 25 is directed to "A ceiling support system as claimed in any one of claims 19 to 24" but claims 19 to 24 claim "A panel mounting system".
I also note that claim 1 defines "mounting channels" while claim 19 defines "elongated mounting channels".
In his counter submission, Mr. Grant made the following points:
(a) Claims 1 and 19 do in fact have a common novel feature or
concept unifying them and this is the elongated support
members having or comprising support means provided
integral therewith (my emphasis).
(b) While there may be a slight discrepancy in the wording of
claim 4 it is considered that a man skilled in the art
would, in the overall context of the claim, be able to
interpret it without any ambiguity.
(c) The assertion that Claims 3 and 4 are a mixture of method
and apparatus and are thus unclear does not follow. What
Mr. Heathcote is calling method is in fact defining
structural considerations and hence the claims are true
apparatus claims.
(d) While it is true that figure 5 does not disclose the depth
of tab increasing feature, figures 6 and 10 clearly do and
hence claim 5 is fairly based.
(e) The assertion that claim 9 is not clearly dependent on
claim 8 is not understood. Claim 9 is meant to define the
arrangement of figure 5 or figure 11.
(f) Mr. Grant did not offer any comment on claims 10 and 11.
(g) With regard to claim 14, while there may possibly be
ambiguities as to antecedents, the claim should present no
problems when read in the light of the specification as a
whole.
(h) Claim 25 should be construed as the features of claim 19
modified by the relevant text and thus should not present
any problems.
While I agree with Mr. Grant that some of the instances brought to attention by Mr. Heathcote are of a minor nature, it is nevertheless a requirement that the language of the claims be sufficiently unambiguous so that there is no uncertainty as to what competitors may not do.
Dealing with the points in the order they were raised by
Mr Heathcote:
Point (a)
I will consider this point after I have decided whether either claim 1 or claim 19 is anticipated.
Point (b)
I agree with Mr. Heathcote that there is ambiguity.
Point (c)
I agree with Mr. Grant's submission and I am of the opinion that the method of drafting does not lead to ambiguity.
Point (d)
In my opinion, claim 3 is directed to the embodiment depicted in figure 5 and hence the dependency of claim 5 on claim 3 is not appropriate given that figure 5 does not disclose a tab that increases in depth towards its outer free end. I therefore agree with Mr. Heathcote's submission in this regard.
Point (e)
I agree with Mr. Grant on his submission regarding this point and I do not find that the dependency of claim 9 on claim 8 leads to any ambiguity.
Point (f)
I agree that there may be a minor source of ambiguity when claim 11 is read on to claims 8, 9 or 10 but not such as to render the subject claims invalid due to this reason.
Point (g)
I agree with Mr. Heathcote's submission with regard to claim 14 and therefore find the claim unclear.
Point (h)
I find that claim 25 is unclear in its reference to claims 19 to 24 which renders its scope unclear.
In the light of my consideration of the various points raised by Mr. Heathcote and Mr. Grant's counter submission I find that the complete specification does not meet with the requirements of section 40.
EXPERT EVIDENCE
In the course of the hearing Mr. Grant stated that caution should be used in relation to the evidence of Mr. Pavey and Ms. Somerfield with respect to whether or not they are experts in the field of ceiling structures and panel mounting systems.
I consider Mr. Grant's caution well founded. While Mr. Pavey states in his declaration that from 1979 to 1986 he was General Manager, Hunter Douglas Research and Development and that since 1986 he has been Hunter Douglas' Projects Manager, nowhere does he say what his involvement in the art of ceiling structures or panel mounting systems has been. Although at the hearing Mr. Heathcote stated that because of Mr. Pavey's duties he must have been familiar with the art, I do not consider this necessarily follows. Hunter Douglas makes a range of products and there is no evidence on file or presented at the hearing that would suggest Mr. Pavey, as part of his duties with Hunter Douglas prior to the priority date of the instant application, was working in the field of ceiling structures and panel mounting systems. I do not consider therefore that Mr. Pavey has established by his declaration that he was an expert before the priority date of the claims in the art of ceiling structures and panel mounting systems. Certainly, he is not competent to state, as he does, that features of the instant application are not inventive and do not confer novelty over the prior art (Brooks vSteele and Currie 14 R.P.C.46).
Ms. Somerfield declares that she joined Hunter Douglas in 1986 i.e., the same year as the priority date of the instant application. She does not say what she did prior to 1986 hence it may be that she had no experience of the ceiling structure and panel mounting systems art before the priority date of the instant application. She declares that she is at present the Technical Product Manager for Hunter Douglas but does not state what her involvement with regard to ceiling structure and panel mounting systems has been. In the light of the absence of any confirmation contained in Ms. Somerfield's declaration that she has actually had any experience with respect to the subject art I am inclined to the view that she cannot be considered an expert and hence I disregard her interpretation and comments about the prior art and what was known in Australia before the priority date.
Having discussed the Pavey and Somerfield declarations, it may be that one or both were working in the field prior to the priority date of the claims but, unless their declaration states this fact, I have nothing before me from which to conclude that they were experts during the relevant period. While it may be that given a further opportunity, both Mr. Pavey and Ms. Somerfield could establish their bona fides with respect to their status as experts in the relevant art, without the facts being clearly established by the evidence currently on file, it is not open to me to take any other course.
PRIOR PUBLICATION
Before I consider the evidence on file I should state that it is established law, following Ernest Scragg & Sons Ltd.'s Application [1972] FSR 219, that where evidence has been presented for the first time at the Evidence-in-Reply stage which is not strictly confined to rebutting the applicant's Evidence-in-Answer it is not admissible as part of the normal opposition proceedings. I will therefore treat such evidence, e.g. US4541216, as evidence I need to consider as a possible "bar to sealing" action in accordance with the judgement of the High Court in Tate v Haskins 53 CLR 594, notwithstanding that the applicant's attorney had the opportunity of making submissions against such evidence at the hearing.
The test for prior publication is set out in Flour Oxidising Co. Ltd. v. Carr & Co. Ltd. (1908) 25 RPC 428 viz:
"The information as to the alleged invention given
by the prior publication must, for the purposes of
practical utility, be equal to that given by the
subsequent patent. The patent must be shown to
have been made known. Whatever, therefore is
essential to the invention must be read out of the
prior publication."
Dealing first with the exhibits accompanying Mr. Pavey's
declaration submitted at the Evidence-in-Support stage.
Exhibit ARP-2 comprises Hunter Douglas LUXALON brochures
V100, 84B, 84R and associated price lists which I accept
were available prior to the priority date of application No. 587900.
Pages 2 and 3 of the V100 brochure discloses screen carrier rails of generally inverted U cross section having integral supporting tabs supporting vertically orientated screen panels. Comparing the disclosure of V100 with claim 1, even if the carrier rails are equated with the support members of claim 1, there is no disclosure of any mounting channels. With regard to claim 19, again, if the carrier rails are equated with the support members, there is no disclosure of "mounting channels each having in section a web for mounting of a building panel, each channel also having in section two opposed legs extending away from the web and terminating in respective longitudinal edges which turn outwardly away from each other".
Brochures 84B and 84R disclose punched and unpunched carrier rails to which are attached to what broadly may be described as C shaped panels. The panels are attached to the unpunched rails using clips while the panels are attached to the punched rails presumably through the medium of means provided by the punching. I say presumably since the relevant parts of the drawings are
so small it is not altogether clear just what the attachment means comprises. Here again, if the rails are equated with the support members, there are no disclosures of any mounting channels in relation to claim 1 or support members comprising support means which support means in turn comprise a plurality of opposed pairs of support tabs, each pair of support tabs comprising two tabs which face each other across an intervening space and "elongated mounting channels ....
each channel having in section two opposed legs extending away from the web and terminating in respective longitudinal edges which turn outwardly away from each other... the tabs being arranged to engage and support the outwardly turned edges", in the case of claim 19.
The price lists depict separate components and hence are not relevant to prior publication considerations.
None of the LUXALON brochures suggest that building panels can be mounted in turn to LUXALON panels or that they are suitable for such a purpose.
Exhibit ARP-3 is a LUXALON brochure dated October 1976 showing details of the Hunter Douglas SNAPFAST FACADE SYSTEM. This brochure discloses an elongated stringer having a generally U shaped cross section with the outer extremities of the arms of the U having generally T shaped cutouts to leave a series of tab pairs with each tab of each pair protruding outwardly from a necked portion left by the T shaped cutouts. Elongated panels, C shaped in cross section, are attached transversely to the stringer by the medium of the extremities of the C encompassing a pair of tabs.
With regard to claim 1, if the stringers are equated to the support members, there is no disclosure of mounting channels and, in the case of claim 19 there is no disclosure of "mounting channels .... having in section two opposed legs extending away from the web and terminating in respective longitudinal edges which turn outwardly away from each other" and support members comprising support means provided integral therewith, "the support means comprising a plurality of opposed pairs of support tabs, each pair of support tabs comprising two tabs which face each other across an intervening space, the width of separation of the tabs being substantially equal to the separation of the two opposed legs of the mounting channel ... the tabs being located and arranged to engage and support the outwardly turned edges ...". Here again the brochure does not suggest that building panels can be mounted in turn to the LUXALON system or that it is suitable for such a purpose.
Turning now to Exhibit ARP-4. This comprises 3 pages of Handford Industries Pty. Ltd. literature depicting Handford ceiling systems. Two of the pages are dated 1979 while one is not dated. All three pages depict elongated furring channels attached to cross rails by clips, there being no disclosure of support members having support means provided integral therewith as required by both claim 1 and claim 19.
Having considered all the exhibits provided at the Evidence-in-Support stage, I am of the opinion that none of them meets the Flour Oxidising Co. Ltd. v Carr test for prior publication.
Considering now the evidence provided at the Evidence-in-Reply stage. Most of the evidence accompanying Ms. Somerfield's declaration is new and not strictly in reply and I will therefore, as previously explained, consider it in the context of a possible "bar to sealing".
Exhibit JS-1 is a copy of US patent specification No. 4541216 which was available for inspection in The Patent Office Library from 22 October 1985.
US4541216 discloses a suspended ceiling system comprising elongated inverted T shaped stringers. Depending from the arms of the T adjacent the outer edges thereof, lengthwise along the stringer, is a series of tabs or hooks struck alternately in the arms of the stringer with the nose of each lengthwise following hook facing the opposite direction. In other words, all the noses of the hooks on one arm face one way and all the noses on the other arm face the opposite way such that midway lengthwise between like facing hooks on one arm is an opposite facing hook depending from adjacent the outer edge of the other arm.
A series of panels is supported transversely beneath the stringers by a lengthwise series of clips secured to each panel. Each clip can be said to be U channel shaped with the wall legs of the U being parallel to the lengthwise edges of the panel. The upper edge margins of each clip leg is turned inwardly to form a lip so that a lip can engage and be secured by a tab nose. In the specification the addressee is referred to figure 5 of the drawings to illustrate how the clips are engaged by the tabs and this figure specifically shows that the length of a clip is less than the length of one of the T shaped stringer arms and hence each clip only engages one tab or hook.
Comparing now the features of claim 1 with the citation.
I note that claim 1 does not require elongated mounted channels as does claim 19, hence, the stringers can be equated with the claimed support members and the clips equated with the claimed mounting channels. Given that panels are shown mounted to the webs of the clips, the only thing left to consider is whether the citation discloses "each mounting channel comprising in section a web and two opposed generally upright legs extending upwardly from the web, the upright legs (my emphasis) being engaged and supported by the support means". Certainly, the citation discloses channels having a web and two opposed generally upright legs but what it does not show is both legs being engaged and supported by the support means.
Considering now claim 19. In my opinion this claim defines a number of features which are not disclosed by the citation these being:
(a) elongated mounting channels (figure 5 of the citation
shows that the width of the web of the clips
lengthwise of the panels is less than the width of
the web between the legs),
(b) each channel having legs .... terminating in
respective longitudinal edges which turn outwardly
from each other,
(c) each pair of support tabs comprising two tabs which
face each other across an intervening space and
d) the tabs (plural) being located and arranged to
engage and support the outwardly turned edges
(plural).
Because of the differences between claims 1 and 19 and the citation, I am satisfied that US4541216 does not prior publish either of these claims in accordance with the Flour Oxidising Co. Ltd. V Carr test.
The other three exhibits i.e. Exhibits JS-2, JS-3 and
JS-4 were submitted solely to illustrate clipping arrangements and are not relevant to the consideration of prior publication.
NOVELTY
One test for novelty is set out by Dixon J. in Griffin v. Isaacs [1942] AOJP 739 at page 740 viz:
" Where variations from a device previously
published consist in matters which make no
substantial contribution to the working of the
thing or involve no ingenuity or inventive step
and the merit if any of the two things considered
as inventions is the same, it is, I think,
impossible to treat the differences as giving
novelty."
At the hearing, Mr. Grant made the point that there was another test for novelty i.e. the "reverse infringement test" as set out by Aicken J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR at 235; 13 ALR 605 at 611 viz:
"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..."
Applying now the tests for novelty to the citations accompanying Mr.Pavey's declaration. With respect to claim 1, since exhibits ARP-2 and ARP-3 do not disclose mounting channels and exhibit ARP-4 does not disclose support members having support means provided integrally therewith, the inclusion of these essential features in the claim cannot in my opinion be said to consist in matters which make no substantial contribution to the working or involve no ingenuity or inventive step, even assuming the merit if any of the two things considered as inventions is the same. Similarly, because of the missing essential integers, the citations do not meet the "reverse infringement test".
Considering now claim 19. With regard to the citations contained in exhibits ARP-2, ARP-3 and ARP-4, I have already stated, when I considered prior publication, which essential integers were missing from the citations. Because of the essential integers missing from the citations I similarly do not consider claim 19 lacks novelty in accordance with either the Griffin v. Isaacs or the "reverse infringement" tests.
I have already considered the exhibits accompanying Ms. Somerfield's declaration with respect to prior publication. With regard to Exhibit JS1, i.e. US4541216, I concluded that it discloses all the essential features of claim 1 except that in the citation only one leg of the mounting channel is engaged and supported by the support means whereas claim 1 defines that the upright legs, i.e. both legs, are engaged and supported by the support means.
In accordance with the consistory statement the engagement of the upright legs by the support means is an essential feature and, being essential is more than the substitution of a "mechanical equivalent" for an inessential integer: Nicaro Holdings Pty Ltd v Martin Engineering Co supra at 527-31 as reiterated by Gummow J in Yamazaki Mazak v Interact Machine Tools 22 IPR 79 at 91. Nowhere in US4541216 is there any suggestion of both legs of each clip being supported. Hence, in applying the "reverse infringement" test, in the absence of any disclosure of both legs of each clip being supported, the device of the citation would not constitute an infringement and so does not deprive claim 1 of novelty.
Alternatively, considering claim 1 in the light of the Griffin v Isaacs test. Having identified the difference between this claim and the citation i.e. the supporting of both legs rather than one as disclosed in the citation I need to decide whether this difference makes no substantial contribution to the working of the thing or involves no ingenuity or inventive step. Clearly, by arranging for both legs to be supported rather than one, the support must be more positive and thus contributes to the working. Claim 1 therefore does not fail when the Griffin v Isaacs test is applied. In my opinion, in the light of the citations, claim 1 does not lack novelty and it therefore follows that its dependent claims, i.e. claims 2 to 18, similarly do not lack novelty.
Although I have identified a number of differences between US4541216 and claim 19, both Mr. Pavey and Ms. Somerfield attack this claim on the basis that features defined in the claim, in relation to the prior art, are a mere non-inventive workshop variation, mechanical equivalent or trade variation well within the skill of any competent workman in the field. However, having found that neither Mr. Pavey or Ms. Somerfield have established that they are experts in the relevant field, their opinion is not applicable in deciding whether the differences of claim 19 when compared with the disclosures of the prior art confers novelty or otherwise on claim 19. As a consequence, I do not have evidence before me to deprive claim 19 or its dependent claims of novelty.
Returning now to the point (a) argument considered under the section 40 ground. Having decided that claims 1 and 19 are novel and since both claims include the feature of both legs of the mounting channel being supported, claims 1 and 19 do have a common novel unifying feature. Consequently, I do not agree with Mr. Heathcote on this point.
OBVIOUSNESS
In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claims. (See the judgement of Aicken J in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253). I have decided that, based on the evidence provided by their declarations, Mr. Pavey and Ms. Somerfield cannot be considered experts in the relevant field and thus cannot say what is or is not common general knowledge. The exhibits provided with their statutory declarations, being trade literature and patent specifications, in the absence of evidence to the contrary, has not been established as constituting common general knowledge and thus cannot be considered in determining the question of obviousness. I therefore have no evidence before me which establishes what was the common general knowledge in the art at the priority date, and hence, I am not in a position to conclude that the invention claimed is obvious.
NOT A MANNER OF MANUFACTURE
Mr. Heathcote submitted that the invention claimed was not a manner of new manufacture since the claims were directed to a mere collocation of known integers. I do not agree. All the claims define a novel combination with a clear working relationship between the integers.
SUMMARY
I find that the specification of Application No. 587900 as accepted does not meet the requirements of section 40 of the Patents Act 1952.
I allow MICHAEL STEPHEN FRAWLEY 60 days from the date of this decision to ask leave to amend the specification to overcome the defect.
COSTS
Having decided that the opponent succeeds on the non-compliance with section 40 ground by evidence provided at the Evidence-in-Support stage, I award costs against the applicant.
J.M.Sellars
Delegate of the Commissioner of Patents.
Patent Attorney for the applicant: Patent Attorney
Services, Box Hill.
Patent Attorney for the opponent : Shelston Waters,
Sydney.
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