Milan Pilja v Rapidjoint Pty Ltd - [2013] APO 21

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Milan Pilja v Rapidjoint Pty Ltd [2013] APO 21

Patent Application: 2003246462

Title:Clamping assembly

Patent Applicant:  Rapidjoint Pty Ltd
Opponent:  Milan Pilja
Delegate:  R Subbarayan
Decision Date:  4 March 2013
Hearing Date:  10 September 2012 and 12 December 2012, in Canberra
Catchwords:  PATENTS - section 59 – opposition to grant of a patent – adjustable clamp assembly – claim 1 entitled to priority of provisional application - claims 1, 2, 4, 7-11 not novel – opposition successful – costs awarded against applicant

Representation: Patent applicant: Watermark Patent and Trade Marks Attorneys, Melbourne
Opponent:Davies Collison Cave, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003246462

Title:Clamping assembly

Patent Applicant: Rapidjoint Pty Ltd
Date of Decision: 4 March 2013
DECISION
The opposition is successful on the grounds of novelty. The applicant is allowed 60 days from the date of this decision to propose suitable amendments to overcome the deficiencies. Costs according to Schedule 8 are awarded against the applicant.
REASONS FOR DECISION
BACKGROUND

Patent application AU2003246462 in the name of Rapidjoint Pty Ltd was filed on
8 August 2003 as a PCT application and claims priority from Australian provisional application 2002950670 filed on 9 August 2002. The specification was advertised as accepted on 11 March 2010. Milan Pilja filed a Notice of Opposition on 10 June 2010 and followed it up with a Statement of Grounds and Particulars on 10 September 2010. Evidence in support was completed on 28 February 2011, evidence in answer was completed on 22 July 2011 and evidence in reply was completed on 24 April 2012. The opponent also filed further evidence on 21 September 2012.
The matter was first heard in Canberra on 7 September 2012. The opponent appeared at the hearing and was represented by Mr Ben Fitzpatrick of Counsel assisted by Mr Justin Negler of Davies Collison Cave. The applicant did not appear but instead filed written submissions from their patent attorney Mr Mark Summerfield of Watermark Patent and Trade Marks Attorneys. At the hearing the opponent admitted that exhibit MJ11 and MJ13 (Document DE 9010431.5 and a machine translation thereof) annexed to the declaration of Mark Johnson dated 24 April 2012 was not evidence in reply as they relate to a new document that had been raised for the first time. I granted them leave to amend the Statement of Grounds and Particulars and file the document as further evidence. Submissions on all matters other than in relation to this document were heard at this hearing.
The opponent subsequently amended the Statement of Grounds and Particulars and served document DE 9010431.5 and a proper English translation thereof as further evidence. The applicant chose not to serve any evidence in answer to this further evidence.
The hearing was reconvened on 12 December 2012 to hear submissions in relation to this further evidence. Representations of the parties were the same as for the first hearing.
GROUNDS OF OPPOSITION
The opponent has opposed the application on the grounds of novelty and inventive step.
EVIDENCE
Evidence in support includes the following statutory declarations:
- Declaration dated 12 November 2010 from Mark Johnson including exhibits MJ1 to MJ3
- Declaration dated 17 February from Mark Johnson including exhibits MJ4 to MJ9
Mr Johnson is a Design Engineer with over 25 years experience in product design. However there is nothing in his resume that would indicate that he has had direct involvement in the design of clamps or joiners for furniture.
Evidence in answer includes the following statutory declarations:
- Declaration dated 22 July 2011 from Greg Snaauw including exhibits GS1 to GS5.
Exhibit GS4 is a copy of a statutory declaration dated 1 October 2010 made by Dean Wildermoth, filed as expert evidence for the opponent in revocation proceedings in the New Zealand Patent Office for the corresponding New Zealand application.
Mr Snaauw is a cabinet maker by trade with around 25 years experience in cabinet making and has substantial knowledge of the clamps used in kitchen joinery.
Mr Wildermoth is a joiner by trade with over 20 years experience in the general joinery and kitchen manufacturing industry in New Zealand. Similar to Mr Snaauw, he has experience in the use of clamps in joinery.
Evidence in reply includes the following statutory declarations:
- Declaration dated 24 April 2012 from Mark Johnson including exhibits MJ4 to MJ14
- Declaration dated 24 April 2012 from Milan Pilja including exhibits MP1 to MP3
THE SPECIFICATION
The specification describes an adjustable clamp assembly which can be used to draw two surfaces together in a clamping action. It is particularly useful for clamping together two flat surfaces, end to end, for example kitchen tabletops or benchtops.
A known approach for clamping two flat objects involves creating cut-out portions in the objects and using clamps to pull the cut-out portions together. Prior art clamps have been manipulated using spanners or by turning a small lever arm. However this involves moving the spanner or lever through an arc and this can be difficult when working on the undersurfaces of tabletops.
Another clamp mechanism known in the prior art is described in patent application
WO 2003/035992 and it includes two clamp members connected by an elongate threaded shaft with a first bevel gear member being provided at one end of the threaded shaft. A special tool comprising an elongated shaft with a second bevel gear member at one end is provided to actuate the clamp mechanism. The second bevel gear member can be brought into engagement with the first bevel gear member of the clamp mechanism so that its axis lies perpendicular to the axis of the clamp. Rotation of the tool about its axis in this engaged state using a power tool will cause rotation of the first bevel gear member and the threaded shaft to which it is attached. Rotation of the threaded shaft will draw the two clamp members toward each other and thereby clamp the objects together.
While this solves the problem of having to swing the tool through an arc, it requires the separate special tool with the second bevel gear member in addition to other tools that a tradesperson would normally carry. There is also the possibility that this separate tool could get lost or misplaced.
An object of the invention is to therefore develop a clamp mechanism that can be operated with a general purpose tool such as a screw driver or similar that a tradesperson will always have on hand and which does not require the tool to be swept through an arc.
The invention solves this problem by incorporating the second gear member into the clamp mechanism, the second gear member being in a constantly interengaged state with the first gear member of the clamp mechanism and having its axis perpendicular to the axis of the clamp mechanism. The second gear member has a recess that is shaped so that it can be engaged with a standard tool like a screwdriver or an Allen key to facilitate rotation of the second gear member.
The specification then describes various embodiments of the invention with reference to figures 1 to 6b. In the embodiments shown in figs 2-4 and 6 the two interengaged gears constitute a worm drive assembly with one of the gears being a worm gear and the other being a worm wheel. However the embodiment shown in figure 5 uses interengaging spur gear wheels.
The specification ends with 16 claims with claim 1 being the only independent claim. Claim 1 is as follows:
1. An adjustable clamp assembly including:
an elongated cylindrical connection member having a threaded portion proximate an end thereof and a longitudinal axis;
a gear assembly including a rotatable first gear member having an axis of rotation substantially perpendicular to said longitudinal axis and a second gear member cooperatively engaged with the first gear member; and
a first clamp member connectable by screw-thread engagement with the threaded portion of the connection member;
wherein the elongated connection member, the gear assembly and the first clamp member are arranged such that rotation of the first gear member results in rotation of the cylindrical connection member and a linear motion of the first clamp member parallel to said longitudinal axis.
PRIORITY DATE
The opponent submitted that the claimed invention is not entitled to the early priority date of the filing date of the provisional application because it is not fairly based on the provisional application.
Before I discuss the submissions from both parties on this issue, I will briefly discuss the disclosure of the provisional specification.
The provisional specification, similar to the complete specification, in the background to the invention discusses the known approach of using spanner operated clamps in cut-out portions in the objects to be clamped and the difficulties in moving the spanner through an arc because of obstruction from the walls of the cut-outs and the confined spaces underneath tabletops. However unlike the complete specification, it does not discuss the use of bevel gears as discussed in WO 2003/035992 as another known approach. This is understandable as patent specification WO 2003/035992 was published only after the filing date of the provisional application.
The consistory clause of the provisional specification reads as follows:
An adjustable clamp assembly including:
first and second clamp members adapted to co-operatively bring together a first and second surface,
the first clamp member having an inner surface adapted to abut against the first surface,
the second clamp member also having an inner surface adapted to abut against the second surface, both said inner surfaces generally adapted to face each other;
an elongated connection member having at least one threaded portion;
the first clamp member being rotatably connectable proximate an end of the connection member;
the second clamp member being connectable proximate the other end of the elongated connection member by screw-thread engagement with said at least one threaded portion of the connection member such that rotation of the elongated connection member causes the inner surfaces of the first and second clamp members to be drawn closer or further apart depending on the direction of the rotation,
wherein the assembly is provided with a worm-gear means adapted to provide the rotation of the elongated connection member.
The specification then describes an embodiment of the invention with reference to figures 1-3 which are identical to figures 1-3 of the opposed specification. In this embodiment the clamp is described as having two clamp members 20, 30 which are mounted on an elongated connection member 40 in such a manner that rotation of the connection member moves the clamp members towards or away from each other. Rotation of the connection member is achieved by means of a worm drive assembly comprising a worm wheel rigidly mounted on the connection member and a worm gear which cooperates with the worm wheel. The worm gear has a connection means that can be engaged by a socket or screwdriver in order to rotate the worm gear. Rotation of the worm gear causes a corresponding rotation of the worm wheel and therefore the connection member to which the worm wheel is mounted.
The provisional specification ends with five claims of which independent claim 1 is identical to the consistory clause.
The opponent argued that the complete specification is not entitled to the priority date of the provisional specification as it relates to a different invention to the device disclosed in the provisional specification for the following reasons:
·the worm gear is omitted from being an essential feature
·claim 1 and some of its dependent claims omit the feature of the second clamp member, and
·the gearing arrangement is not located at a central portion of the clamp assembly between the first and second clamp members.
The principles to be used in assessing whether a claimed invention is fairly based on matters disclosed in one or more priority documents have been well established in a number of authorities including CCOM Pty Ltd v Jiejing Pty Ltd [1994] 51 FCR 260 (FC) and Nicola Leonardis v. Sartis No 1 Pty Ltd Olympic General Products Pty Ltd (Trading As RMAX) [1996] 449 FCA.
In CCOM (supra) the court stated
“In Rhone-Poulenc (supra) at 11 Fullagar J emphasised that disclosure without claim is enough. Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, `essential integers' or `essential features' of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question: cf Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1986) 6 IPR 545 at 560-561, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification: cf Yamazaki (supra) at 93, 97. Fullagar J also pointed out that the requirement of `fair basing' on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be `a real and reasonably clear disclosure.”
In Nicola Leonardis (supra), the full court affirmed the following statement made by Lockhart J in Anaesthetic Supplies Pty Ltd v Rescare Ltd [1994] FCA 1065; (1994) 50 FCR 1 at 20:
"All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting an inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in its rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional."
Applying the principles stated above, it is clear that the correct approach to determining whether the claimed invention is entitled to the priority of the provisional application is to determine whether there is a real and reasonably clear disclosure in the provisional specification of the clamp assembly as claimed in claim 1 of the complete application rather than seek to isolate in the provisional specification the “essential integers” of the clamp assembly as disclosed therein and ask whether they correspond with the essential integers of claim 1 of the complete specification.
In my view all of the integers of claim 1 are disclosed in the provisional specification. Although the feature that the axis of rotation of the first gear member is substantially perpendicular to the longitudinal axis of the elongated connection member is not explicitly stated in the description of the provisional specification, it is clear from the drawings of that specification that the axis of the worm gear is indeed perpendicular to the axis of the connection member and it is this perpendicular orientation that facilitates the ability to rotate the worm gear despite the cut-outs and the limited confines under the tabletop.
While most of the embodiments of the complete specification also use a worm gear as the first gear member, it is evident that it is the perpendicular orientation of the first gear member that facilitates the ability to rotate the gear member despite the cut-outs and the limited confines. The worm gear is just a preferred way of achieving this perpendicular orientation.
At the hearing the opponent submitted that worm gears disclosed in the provisional specification have particular significance in that they provide an efficient drive, are able to hold their position once the clamp has been tightened and are relatively easy to manufacture and therefore by not limiting the complete specification to worm gears they have clearly omitted a feature that is essential to the invention. While I accept these general advantages of a worm gear drive, these are not mentioned or emphasized anywhere in the provisional specification. In my view it is quite legitimate for the applicant, having realised since the filing of the provisional specification that the key feature of their inventive concept is the perpendicular orientation of the first gear, to then promote this as the essential feature of the invention in the complete application rather than the preferred embodiment of a worm gear drive assembly. This is no more than development and precise expression of the invention foreshadowed in the provisional specification.
In relation to features of the second clamp member and the central location of the worm gear assembly, again I am not satisfied that the opponent had made out a case that the omission of these key elements of the invention would deprive the claimed invention of its earlier priority. The omission of these features does not in way change the character of the invention. I also note that the provisional specification does disclose on page 7, lines 22-23 that the worm drive can be positioned at different positions along the length of the elongated connection member.
The opponent further argued that the embodiment shown in figure 5a uses straight cut gears rather than worm gears and that this clearly establishes that the invention of the complete specification is fundamentally different to that of the provisional specification. Whilst I agree that there is no disclosure of the embodiment of figure 5a in the provisional specification, I note that there is no specific claim to this embodiment in the claims of the complete specification. The fact that the complete specification may have some additional embodiments is not reason for depriving the priority of claims that are fairly based on the priority document.
In summary, I am satisfied that there is a real and reasonably clear disclosure of the invention of claim 1 in the provisional specification. Claim 1 is therefore entitled to the priority date of the provisional application.
NOVELTY
The opponent has argued that the claimed invention is not novel over certain prior art documents. I will consider each one of them individually.
D1) US 5743670 (ADER)
D1 relates to a structural fastener that can be used to releasably join structural members and ready to assemble components in various equipment including furniture. It includes a threaded coupler shaft 10 that can be fixed in a first structural member and a threaded socket 80 that can be fixed in a second structural member. The threaded shaft can be made to engage the threaded socket by rotating it with a gear drive assembly that includes a first gear member 150 that meshes with and rotates a second gear member 120 fixed to the coupler shaft. The axis of the first gear member is perpendicular to the axis of the rotatable coupler shaft. These parts are arranged such that rotation of the first gear member will rotate the coupler shaft which will then cause a linear motion of the threaded socket so as to pull together and thereby join the first and second structural members.
One of the things that I noticed on reading D1 is that it uses the term “fastener” rather than “clamp” or “clamp assembly” to describe the device. However in terms of its functionality, the device is clearly used to bring together and join two structural members end to end and in that respect it works similar to a clamp. The opponent submitted that the meaning of the term “clamp” is “an appliance with opposite sides or parts that may be adjusted or brought together to hold or compress something” (Dictionary.com) and that the fastener of D1 clearly falls within this definition as submitted by their expert Mr Johnson. I note that even Mr Wildermoth, the applicant’s expert witness in the New Zealand proceedings agreed that this device could be called a clamp assembly and the applicant has not disputed this interpretation. I am therefore satisfied that the device of D1 can be termed a clamp assembly.

It is clear from the discussion above that the fastener of D1 is a clamp that works in the same manner as the clamp assembly of the claimed invention and this is not in dispute. However the applicant submitted that the claim 1 is not anticipated by D1 because of the following differences:
a)the clamp assembly is not adjustable
b)threaded socket member is not a clamp member
The applicant submitted that phrase “adjustable clamp assembly” should be interpreted to mean that the clamp assembly will have a “tolerance” to normal variations in size and configuration of the components to be joined or in other words the clamp must be capable of adapting to the components to be joined.
The opponent on the other hand argued that the word adjustable in this phrase should be given its plain meaning of “to change something that it fits” or “to bring to a proper state or position” (Dictionary.com definitions). For instance where the clamping force applied by the clamp assembly can be adjusted, the clamping assembly can be considered to be an adjustable clamp assembly.
While the clamp assembly of the application in suit is certainly capable of adapting to normal variations in size and configuration of the benchtops, I am not convinced that this is the only meaning that should be given to this phrase. There is nothing in the specification to suggest that this was what was intended. Nowhere in the specification does it define what adjustability is provided by the clamp. The only reference to what is an adjustable clamp is under the heading “Background of Invention” where it states “An adjustable clamp is a tool which is used, for example, to draw two surfaces together in a clamping action”. It would therefore appear from this statement that a fairly broad interpretation for this phrase is intended.
In my view a clamp assembly which has some form of adjustability, whether it is in terms of being able to adapt to variations in size or it is in terms of the ability to change the clamping force, can be considered an adjustable clamp assembly. I can also find no justification for the applicant’s argument that the adjustability has to be substantial. In my view even any minor adjustability will suffice to fall within the scope of this phrase.
In document D1, clearly the clamping force between the components joined by the clamp assembly can be adjusted by further tightening of the first clamp member. Even in relation to the tolerance to variations in size, while the device does not have the capability for adapting to any substantial variations in size due to the short length of the threaded coupler shaft, it is certainly capable of adapting to minor variations in size. Hence irrespective of what kind of adjustability that I ascribe to the term adjustable, in my view feature (a) is disclosed in D1.
In relation to feature (b), Mr Wildermoth for the applicant states that he is unable to form a firm opinion as to whether this feature is disclosed in D1, whereas Mr Johnson for the opponent is of the view that the threaded socket in D1 is a clamp member.
Although I too had some initial doubts on this feature, it is clear that the threaded socket certainly functions to draw the structural member to which it is attached towards the other structural member and hold them in a connected state and in that respect functions like a clamp member. As I have already found that the device of D1 is an adjustable clamp assembly, it follows that the socket which performs the function of a “clamp member” can also be termed a clamp member of the clamp assembly. Feature (b) is also therefore disclosed in D1.
Therefore the clamp assembly of claim 1 is not novel over D1 as all of its claimed features are disclosed in D1.
D1 also discloses a second clamp member opposed to the first clamp member. It is also clear from the figures that the gear reduction between the first and second gear member is a reduction ratio. The embodiment shown in figure 9 uses a gear assembly comprising a worm gear and worm wheel. The first gear member also includes a recess in an end face that is shaped to engage with a hand or power driven tool.
Therefore dependent claims 2, 4, 7-11 are also not novel over D1.
D2) DE 9010431.5 (DANNATH)
As mentioned earlier, document D2 was re-filed as further evidence along with a proper English translation. The applicant did not file any evidence in answer to this further evidence and instead relied on written submissions at the reconvened hearing.
The opponent made the following submissions in relation to the disclosure of D2:
·It relates to an adjustable clamp assembly to clamp adjacent panels in a kitchen benchtops.
·It has an elongated cylindrical connection member in the form of the pinion 40. This pinion is internally threaded at one end thereof and has a longitudinal axis.
·It has a gear assembly including a rotatable first gear member constituted by the worm gear 50 that has an axis perpendicular to the longitudinal axis of the elongated connection member and a second gear constituted by the feed gear 140 on the outside of the pinion 40 and cooperatively engaged with the first gear member.
·It has a first clamp member constituted by the clamping plate 20 and the mushroom head bolt 10 which is connectable by screw thread engagement with the threaded portion of the connection member.
·Alternately it has a first clamp member constituted by clamping plate 20 alone and this is connectable by screw threaded engagement with the threaded portion of the connection member through the mushroom head bolt 10. There is no requirement in the claim that the first clamp member should be directly connectable to the connection member.
·The elongated connection member 40, the gear assembly and the first clamp member are arranged such that rotation of the first gear member 50 results in rotation of the connection member 40 and a linear motion of the first clamp member parallel to the longitudinal axis.
·This interpretation of D2 is supported by their expert declarant Mr Johnson in his statutory declaration of 24 April 2012 and this has not been challenged by the opponent through any expert declarations.
The applicant on the other hand submitted that the claimed invention is not disclosed by D2 for the following reasons:
·The elongated connection member claimed refers to the part which provides the connecting structure between the objects being clamped and is not merely some other component of the clamp assembly.
·The part corresponding to the elongated connection member in D2 is the mushroom head bolt 10 and not the pinion 40.
·The mushroom head bolt 10 is not capable of rotating as required of the connection member in claim 1.
·The opponent’s construction requires the pinion to act as both the elongated connection member and the second gear member, even though these are plainly distinct features of the claimed invention.
·Since all interoperable components of the clamp assembly contribute in some way to the connecting function, it would render the term “connection member” meaningless if it could be applied to any such component of the assembly.
It is clear that the question of whether claim 1 is anticipated by D2 hinges on whether I consider the corresponding feature of the elongated connection member in D2 to be the pinion 40 or the mushroom head bolt 10.
When I first construed D2, my initial view was that the mushroom head stud corresponds to the elongated connection member as it is the member that connects the two clamp members 20 and 30 similar to the connection member 40 in the opposed invention. However I am mindful that the applicant has chosen to couch the claim in fairly broad terms. There is no definition of the second clamp member and that it is also connected to the connection member. While it may be tempting to construe the term “elongated connection member” broadly as to encompass any part that in some way connects to a clamp member as argued by the opponent, the authorities have emphasized the need to construe the claims in a purposive manner. When I read the complete specification it is clear that the elongated connection member refers to that member which connects the first and second clamp members.
Pinion 40 in D2 is totally housed within the disc shaped housing 30 that also constitutes the second clamp member. While it can be considered elongated, it is not directly connected to the first clamp member 20 by a screw thread engagement. It is basically an elongated nut which receives the threaded end of the mushroom head bolt that interconnects the first and second clamp members. I also do not subscribe to the opponent’s argument that the clamping plate 20 and the mushroom head bolt 10 together constitute the first clamp member. A fair reading of D2 would not suggest this construction to a skilled addressee. In my view the part that is functionally equivalent to the elongate connection member is the mushroom head bolt and not the pinion.
In D2 the bolt 10 does not rotate, but is instead drawn axially into the housing 30 which constitutes the second clamp member in order to vary the distance between the first and second clamp members. Hence while there may be some similarities in terms of the gear assembly having a first gear member with an axis of rotation perpendicular to the longitudinal axis of the connection member, the mechanism of D2 operates differently to that of the claimed invention. Claim 1 is therefore not anticipated by D2.
It follows that dependent claims 2-16 are also novel over D2.
D3: US 5295756 (YAZAKI)
This document relates to a screw tightening type connector between a male connector housing and a female connector hood in an electrical connector. The connector comprises a bolt 41 mounted in the male housing which is then inserted into the female housing where the bolt is brought into screw threaded engagement with a nut 13 mounted in the female housing. A bevel gear arrangement in the male connector is used to rotate the bolt which in turn draws the nut and the male and female housings are thereby connected to each other.
Mr Wildermoth states that the connector of D3 is not a clamp assembly and I tend to agree. While the connector may use a drive arrangement with a perpendicular oriented gear to rotate the bolt similar to the claimed invention, in my view it is not a clamp assembly. Each of the parts like the bolt and the drive gears is individually mounted within and held in place by the male housing of the electrical connector. Unlike the clamp assembly of D1, they do not form an integral unit that could be termed a clamp assembly.
Although Mr Wildermoth has argued that that the device of D3 is not adjustable, I note that similar to D1 it is likely to be able to adapt to slight variations in size of the connectors and the connecting force is also variable depending upon the amount of tightening. Hence in my view the connector is an adjustable connector. However as it is not a clamp assembly, it follows that claim 1 is not anticipated by D3. Claims 1-16 are therefore novel over D3.
D4: AU2002332982 (PILJA)
This document was published on 6 May 2003 and has a priority date of 24 October 2001. I have earlier found that the application in suit is entitled to the priority date of 9 August 2002. Although document D4 was published after the priority date of the application in suit, it has an earlier priority date and therefore forms part of the prior art base for Novelty according to Schedule 1, (b)(ii) of the Patents Act (colloquially referred to as “whole of contents” novelty).
The opponent submitted that D4 discloses all of the features of claim 1.
D4 is admitted prior art in the complete specification. It has an elongated connection member 2 with a threaded portion, a second gear member connected to the connection member and a first clamp member 4 which is connectable by screw thread engagement with the threaded portion of the connection member. Also it has a shaft provided with a first gear 12 that can be made to mesh with the second gear in order to rotate the second gear and consequently the connection member which then draws the first clamp member to effect the clamping action.
D4 therefore works in a similar manner to the claimed invention and that is not in dispute. What is in dispute is whether the first gear member is part of the clamp assembly. In D4 the shaft 10 with the first gear 12 is provided as a separate tool that is only engaged with the clamp assembly when it is required to operate the clamp assembly. Gear 12 is not in permanent engagement with the second gear 9.
The applicant submitted that as the shaft with the first gear member is brought into cooperative engagement with the second gear of the clamp assembly only when the clamp needs to be operated, the shaft with the first gear member cannot be considered to be part of the gear assembly or the clamp assembly. The shaft with the gear is clearly disclosed as being a separate tool which is removed from the clamp once the required clamping action has been achieved. The disadvantage with this arrangement is that the separate tool can be misplaced and also requires a worker to carry this tool in addition to other tools. It is this very deficiency that the claimed invention overcomes by making the first gear permanently fixed to the clamp assembly and rotating it with standard tools like screw drivers when the clamp needs to be operated.
The opponent on the other hand argued that while the tool with the gear is separable it becomes part of the gear assembly when it is used to operate the clamp and in that respect it is part of the gear assembly. Also the meaning of the term “assembly” according to Dictionary.com is “a group of components before or after fitting together” and applying this plain meaning the shaft with the gear is part of the gear assembly.
I am not convinced. While words in a claim should ordinarily be given their plain meaning, I am also mindful that one must read the specification as a whole and that a patent specification should be given a purposive construction rather than a purely literal one. Claim 1 clearly requires that the clamp assembly has a gear assembly that includes first and second gear members that are cooperatively engaged. I note that the first and second gears are defined as cooperatively engaged and not merely engageable. In my view the proper construction of this term is that the first and second gear members of the gear assembly are permanently cooperatively engaged at all times. This construction is also fully consistent with what is described in the complete specification. I can find no basis to come up with the alternate construction proposed by the opponent. In my view the shaft with the gear is a separate tool for operating the clamp and cannot be considered to be part of the gear assembly of the clamp assembly.
It follows that D4 does not disclose all the essential features of the claim 1 and the claimed invention is therefore novel over D4.
D5: JP 2000-130414
This document was not formally pressed at the hearing by the opponent. The applicant submitted that although the device of D5 could be considered a clamp assembly, the threaded elongated connection member 19 is not rotatable as required by the claims. I agree. An important feature of the claimed invention is missing. Claims 1-16 are therefore novel over D5.
INVENTIVE STEP
D1) US 5743670 (ADER)
Claims 1, 2, 4, 7-11: Document D1 clearly relates to a clamp assembly for use in joining structural members and ready to assemble components including furniture and is therefore a document that would have been ascertained, understood and regarded as relevant. I have earlier found that the features of the clamp assembly of these claims are disclosed in document D1. A person skilled in the art would have therefore arrived at the invention defined in these claims without any inventive ingenuity. Claims 1, 2, 4, 7-11 consequently also lack an inventive step.
Claim 3: This claim requires that the second gear member is integral with the cylindrical connection member. In D1 the second gear member 120 is not integral with the threaded coupler shaft 10, but is instead rotationally coupled to the shaft in such a manner that the shaft can axially translate with respect to the second gear. This translation is required for the device to work in the manner it was intended for and there is no hint or suggestion that the device would work if the second gear was made integral with the shaft. There is also nothing in evidence to suggest that this would have been an obvious thing to do. Claim 3 is therefore inventive.
Claims 5, 6: In D1 the second clamp member would have to be the outside edge 72 of the housing 70 and this is not located at an end of the cylindrical connection member opposed to the threaded end as required by claim 5. I have been provided with no evidence to suggest that this would be an obvious improvement or workshop variation. Claim 5 and its appended claim 6 are therefore inventive.
Claims 12-15: I am unable to find a specific retaining member for holding the clamp assembly in place in D1 and there is nothing to suggest that it would have been obvious to provide one. These claims are therefore inventive.
D2) DE 9010431.5 (DANNATH)
The opponent submitted that Dannath is a document that a person skilled in the art would have ascertained, understood and regarded. I agree as it clearly relates to an adjustable clamp assembly for clamping benchtop panels.
I have earlier found that the elongated connection member in D2 is the mushroom head bolt which does not rotate as required by claim 1.
At the hearing the opponent submitted that to the extent that D2 does not disclose each and every essential integer of the claimed invention, it would be a matter of routine to arrive at the invention from D2.
However I have been provided with no evidence from them to support this assertion. I have therefore no basis to conclude that a skilled addressee would have as a matter of routine combined the pinion and the mushroom head bolt into one unit and then connect the clamping plate 20 to the mushroom head bolt by a screw threaded connection.
The claimed invention therefore involves an inventive step over D2.
D3: US 5295756 (YAZAKI)
As discussed earlier, this document relates to a screw tightening type connector between a male connector housing and a female connector hood in an electrical connector and I have found that it is not a clamp assembly. I have been provided with no evidence to satisfy me that a skilled addressee trying to address the problems of clamp assemblies for joining furniture parts would have ascertained, understood or regarded as relevant a document that relates to holding parts together in electrical connectors. There is also nothing in the document itself which would suggest such an application. In my view claim 1 is therefore inventive over D3.
D4: AU2002332982 (PILJA)
This document was published after the priority date of the claimed invention. D4 therefore is not part of the prior art base for inventive step considerations.
D5: JP 2000-130414
There is nothing to suggest that a skilled addressee would have modified D5 to arrive at the claimed invention, which is therefore inventive over D5.
CONCLUSION
I have found that claims 1, 2, 4, 7-11 are not novel over patent specification US 5743670 (ADER). The opposition is therefore successful.
As the specification clearly contains patentable subject matter, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings. If suitable amendments are not proposed within that time, I will refuse the application.
COSTS
In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that usual approach on this occasion. Milan Pilja has been successful in its opposition to the grant of a patent. I therefore award costs according to Schedule 8 against the applicant Rapidjoint Pty Ltd.
R Subbarayan
Delegate of the Commissioner of Patents