Moore Paragon Australia Limited v Multiform Printers Pty Limited

[1984] APO 28

In the Matter of the Patents Act 1952

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In the Matter of Application No. 524885 for a Patent by MOORE PARAGON AUSTRALIA LIMITED

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In the Matter of Opposition thereto by MULTIFORM PRINTERS PTY. LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Application No. 524885 is based on a provisional specification lodged 25 May, 1978.  The applicant, Moore Paragon Australia Limited (Moore), lodged the complete specification on 18 May, 1979.  The application was duly examined and acceptance thereof was notified in the Official Journal of 7 October, 1982.
         On 5 January, 1983, Multiform Printers Pty. Limited (Multiform) lodged notice of opposition, the grounds being those specified in sub‑sections 59(1)(e), (g), (h) and (i).  Multiform completed service of the evidence in support on 14 July, 1983 and Moore served the evidence in answer on 4 January, 1984.  Multiform chose not to serve evidence in reply, and the Office set the matter down for hearing in the Melbourne sessions of August 1984.  The applicant was represented by Mr. Ross Macaw of Counsel instructed by Mr. L.J. Dyson of Edwd. Waters & Sons, Patent Attorneys, Melbourne, and the opponent was represented by Mr. David Shavin of Counsel instructed by Mr. A. Tatlock of A. Tatlock & Associates, Patent Attorneys, Melbourne.
The Specification
         The complete specification is entitled "Improvements in or relating to Business Forms Assemblies".

The description commences by stating that:

"The invention has reference to business forms assemblies which include a plurality of records sheets with interleaved transfer sheets usually of carbon paper.  Such business forms assemblies may be in the form of snap‑out sets, continuous stationery assemblies, autographic register sets or check books."

It goes on the explain that:

"Snap‑out set assemblies consist of a plurality of record sheets of which the top sheet is invariably the customer's copy and the underlying sheets correspond to the top sheet. Each record sheet is divided into data receiving areas so that the information recorded on an area on the top sheet by writing implements or typewriter type face is transferred to corresponding areas on the underlying sheets."

The description then acknowledges certain prior art in the following terms:

.It is known to provide transfer sheets which are selectively coated and the record sheets and transfer sheets are so registered that the data applied to the top sheet is select‑

ively transferred to the underlying sheets.

.It is also known to provide business forms stationery with coloured lines or blocks extending across the sheet to facilitate reading of the information typed on the form.

(British Patent Specification No. 1447965 is cited as an example).

.It is also known from British Patent Specification No. 1,501,628 to provide a business forms stationery printed with spaced groups of parallel blocks extending transversely of the web and a transverse line or lines between the groups of parallel blocks to assist the eye to follow the lines of recorded information across the web.

The problem with the prior art which the invention seeks to obviate concerns the selective readability of information for entry into a computer.  This is set out in the following terms:

"It is usual to have one of the parts of the sets of business forms assemblies include a so‑called ledger copy which is used by a computer input operator to extract information for entry into a computer.  Insofar as the computer is concerned some of the information included on the record sheet is relevant, some is irrelevant and some is useless, and the computer entry operator may have some difficulty in separating the relevant information from the irrelevant and/or useless information."

Then follows a statement of the objects of the invention, there being a general object and a specific object.  The latter is most relevant to this decision.  It reads:

"It is another object of the present invention to provide an improved business forms assembly embodying a part intended for extraction of information for computer entry, which part facilitates the reading of the form to enable easy extraction of information to be obtained."

Following this is a statement of invention in similar terms to those of claim 1, and a description of the preferred embodiment with respect to six figures of drawings.  The specification ends with five claims of which claim 5 is an omnibus claim and claims 2, 3 and 4 are appended to the broadest claim, claim 1.
         The latter reads:

"A business forms assembly comprising a plurality of record sheets with coloured transfer material between adjacent record sheets, each of the record sheets being divided into inform‑ ation receiving areas to receive information imprinted on the business forms assembly and the corresponding information receiving areas on the respective sheets being in register with one another, characterised in that at least one of the copy record sheets has a first information receiving area intended for extraction of relevant information and that said first area comprises a background colour constrasting with the colour of the transfer material for receiving and highlighting said relevant information, and said at least one of the copy record sheets having a second information receiving area comprising a background colour not significantly contrasting with the colour of the transfer material for receiving second‑

ary or irrelevant information which is readable yet not high‑

lighted."

The Evidence
         The evidence in support of the opposition consists of two statutory declarations, one by Walter Tichburn Edney and the other by Alfred Tatlock.  Mr. Edney declares that he has been engaged in the travel industry for a number of years and he is the principal of Archer Edney Travel.  He deposes that in May of 1977 a new airline ticket system was introduced which involved the use of one form of coupon which could be validated for each particular airline as required, and which included an Audit Coupon, an Agent Coupon, two to four Flight Coupons, and a Passenger Coupon.  Mr. Edney describes the various coupons and their colouring; and exhibits to his declaration photocopies (in black and white) of two Audit Coupons dated respectively 5 April, 1978 and 3 May, 1978 which were issued by his staff on those dates.  He makes no statement, however, about the colouring of the transfer material between the coupons.  He completes his declaration by stating:

"To the best of my knowledge since the introduction of the standard IATA ticket in my agency in May 1977, there has been no substantial variation in form from the ticket presently being used."

The underlining is mine, and note that qualification of the "variation" is with respect to "form", and not to "colour".

The declaration is dated 3 November, 1980.
         Mr. Tatlock provides two exhibits to his declaration, both being IATA airline tickets.  The first of these (AT1) is a traction feed ticket, the second (AT2), is not.  He deposes that he showed the exhibit AT1 to Mr. Edney who informed him that whilst the travel agency of which he is principal does not use automatic feed tickets, the ticket itself appeared close to identical to all IATA tickets which the agency has used since May 1977 ‑ in particular, the general arrangement and the colouring of the coupons appeared to be the same.  Concerning the second exhibit (AT2), Mr. Tatlock states that it is a sample of an individual IATA ticket having the same basic configuration as that of the first exhibit (AT1), and as described in Mr. Edney's declaration.  At this stage I note that AT1 bears the legend:
         "PRINTED BY WILSON BROS. (PRINTERS) PTY. LTD. SYDNEY,
         AUSTRALIA ‑ REV. OCT. 75"
AT2 bears the same legend with exception of the date, which is "Feb. 74".  Aside from any inference which may be made from the revision dates printed on exhibits AT1 and AT2, there is no indication in the evidence of their source or their date of publication.  The declaration is dated 3 May, 1983.
         The evidence‑in‑answer consists of two statutory declarations, one by John Bentley the other by Ronald D. Wadey, development manager and secretary, respectively, of the applicant, Moore.
         Mr. Bentley states that he has been employed by Moore for the past 20 years and that he is the actual inventor named in the opposed application: in mid‑1977 the invention was first conceived, and after some development work the application was filed by Moore.  He deposes that he has read the declarations by Mr. Tatlock and Mr. Edney which constitute the evidence‑in‑support and that he understands the evidence relies on public use of so‑called IATA air tickets in Australia before the priority date of the application.  He continues that he had inspected the IATA ticket, identified as exhibit JJB2 to his declaration which, Mr. Dyson (the patent attorney representing the applicant) has assured him, was similar to the original examples submitted as evidence for the opponent.  Mr. Bentley describes this ticket and presents a possible line of argument the opponent may use to show that earlier IATA tickets prior publish the claims of the opposed application and then gives his explanation as to why the ticket does not meet the requirements of the claims but leads away from rather than towards the invention claimed.
         Mr. Bentley finally identifies exhibit JJB3 annexed to his declaration as several business forms manufactured in accordance with the invention of the opposed application.
         Mr. Wadey's statutory declaration mainly identifies further examples of business forms, described as embodying the features of the invention of the opposed application, and letters of commendation written by commercial users of these forms.
Prior Publication ‑ Novelty
         I will first consider whether IATA tickets of the character exhibited can be considered as published before the priority date of the opposed application, and then if necessary determine whether such tickets would anticipate the invention as claimed.
         Mr. Macaw's criticism of the opponent's evidence, that it failed to establish proof that a ticket having the features in common with the IATA ticket originals produced as exhibits to Mr. Tatlock's declaration, existed before the priority date can be summarised as follows.  He submitted that the evidence provided by the opponent did not sufficiently identify the IATA ticket used by Mr. Edney's agency in April and May 1978.  He pointed out that whilst Mr. Edney described the background colours of the coupons in specified inform‑
ation receiving areas, he did not describe the colour of the transfer material, information which is essential in assessing the IATA ticket being described as a possible anticipation of the claims.  Further, only black and white photo‑
copies of the agent's coupons are exhibited to his declaration as evidence of the nature of the IATA tickets used by Mr. Edney's firm in April and early May 1978 ‑ reliance must be placed solely on the declarations of Messrs. Edney and Tatlock to associate the early tickets with those used at later times, e.g. presumably as exemplified by AT1 and AT2.  Mr. Macaw also criticized the last paragraph of Mr. Edney's declaration (set out earlier in this decision) on the basis that it was not a positive swearing with respect to the variation of the ticket in structure and colour as it refers only to "no substantial variation in form".  In addition, he submitted that Mr. Tatlock's declaration should be given little weight as it was largely hearsay.
         In my view, the evidence lacks substance.  Mr. Edney's description of the IATA ticket omits reference to the colour of the transfer material, which is vital information.  However, Mr. Edney has also declared that to the best of his knowledge, "there has been no substantial variation in form" of the standard IATA ticket from the ticket presently being used since the intro‑
duction of the new form thereof to his agency in May 1977.  I place no weight upon his use of the word "substantial", nor, like Mr. Macaw, do I read the word "form" literally.  I am of the certain opinion that as Mr. Edney's declaration is otherwise concerned with colouring, layout and general structure of the IATA ticket, by "form", he means to include these features.  Nevertheless, it is necessary for me to ascertain the nature of the IATA tickets as "presently being used" in order for Mr. Edney's statement to be definitive of the nature of the IATA tickets in use immediately prior to 25 May, 1978, which is the priority date of the claims of the Moore application.  By "presently being used", Mr. Edney, of course, must mean as at the date he made his declaration, i.e. 3 November, 1980.
Clearly, Mr. Tatlock's declaration, though largely hearsay, is admissable, e.g. see T.A. Miller Ltd. v. Minister of Housing and Local Government and Another (1968) 1 WLR 992. However, I find difficulty in placing much weight on the evidence supplied by this declaration. Thus firstly, AT1 which Mr. Tatlock presented to Mr. Edney for comment is a traction feed ticket, i.e. a type not used by Mr. Edney's firm. Mr. Tatlock has attempted to obviate this problem by exhibiting AT2, which has the same basic configuration at AT1, but is not a traction feed ticket. Secondly, about AT1, Mr. Tatlock reports Mr. Edney as saying that this ticket

"appeared close to identical to all IATA tickets which have been used by his agency since May 1977, and, specifically, the general arrangement of each Coupon and the colouring of the Coupons, specifically the differential of colour, appears to be the same."

It is not clear at what time Mr. Tatlock showed AT1 to Mr. Edney, however, the former's declaration is dated 3 May, 1983, so I conclude that this event may have occurred up to three years after Mr. Edney made his declaration, which is itself some three years after the time of introduction of the new form of IATA tickets to Mr. Edney's agency.  I am not surprised, therefore, particularly in view of the complex nature of the IATA tickets, that Mr. Edney's evidence (both direct, and indirect, as reported by Mr. Tatlock) lacks the feature of "positive swearing" to which Mr. Macaw referred.  Furthermore, in view of the time lapse, the two declarations fail to make a positive comparison between the nature of the IATA tickets as introduced in May 1977 and as exemplified by AT1 and AT2, whatever may have been the publication dates of these two tickets.
         There remains to be decided the significance of the revision dates printed on AT1 and AT2, respectively October 1975 and February 1974.  While the printing of these dates on the tickets might indicate that on those dates a ticket type was revised respectively into the forms exemplified by AT1 and AT2, this is not necessarily so, and in any case those dates are not evidence of the dates on which any particular ticket form became available to the public.  I might comment here that I am surprised that there is no corroborating evidence available from the printers of the tickets, Wilson Bros. (Printers) Pty. Ltd. Sydney.
The question of the degree to which an opponent (appellant) has to establish the ground of want of novelty was considered in Montecatini Edison S.p.A. v. Eastman Kodak Company ((1971) 45 ALJR 593 at 595). On this question Gibb J. said:

"I ought not to find in favour of the appellant on the issue of want of novelty, or that of obviousness, unless I were satisfied that the appellant's case had been clearly made out; it was said that I should adopt a similar approach to that which must be followed in considering whether to accept an application and specification, namely, that the application should only be rejected in a clear case where it is obvious that a patent cannot be granted : see Commissioner of Patents v. Microcell Ltd. (1958‑59), 102 CLR 232, at pp.236, 244‑245."

In the present situation I am not satisfied that the opponent has discharged the onus laid upon it, based on the evidence presented to me.
Manner of New Manufacture
         Firstly, the invention claimed is an article which has a functional purpose, and therefore it is clearly a manufacture.
         Secondly, as to whether the manufacture can properly be said to be new the invention claimed is a business forms assembly comprising a plurality of record sheets, which assembly clearly has a mechanical purpose.  This purpose is facilitating easy extraction of information for computer entry by an operator through use of contrasting colours for recording relevant information and using non‑significantly contrasting colours for recording irrelevant information on the assembly.  Consequently I reject the allegation that the invention claimed is not a Manner of New Manufacture.
Obviousness
         For the opponent to show that the invention claimed is obvious, it must establish what matters constituted the common general knowledge in the art in Australia at the priority date of the claims.  Clearly, the opponent has failed to do so, and the opposition fails on this ground.
Conclusion
         I have found that the opponent has not established any of the grounds of the opposition, consequently I dismiss the opposition and award costs against the opponent.  Subject to any appeal which may be lodged, I direct that the application is to proceed to sealing.

(J.L. ROVETA)