Oakmoore Pty Ltd v ARB Corporation Limited
[2019] APO 29
•21 June 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Oakmoore Pty Ltd v ARB Corporation Limited [2019] APO 29
Patent Application: 2013251243
Title:Utility Vehicle Tub Canopy Attachment Assembly
Patent Applicant: ARB Corporation Limited
Opponent: Oakmoore Pty Ltd
Delegate: Dr W.E. Guinea
Decision Date: 21 June 2019
Hearing Date: 30 April 2019, in Canberra
Catchwords: PATENTS – s59 – novelty – inventive step – lack of novelty not established – lack of inventive step not established – split award of costs
Representation: Counsel for the applicant: Chris Burgess
Patent attorney for the applicant: Stuart Campbell of FB Rice
Counsel for the opponent: Marcus Fleming
Patent attorney for the opponent: Ernest Graf of Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013251243
Title:Utility Vehicle Tub Canopy Attachment Assembly
Patent Applicant: ARB Corporation Limited
Date of Decision: 21 June 2019
DECISION
The Opposition is unsuccessful. None of the grounds of opposition were made out.
Subject to any appeal, I direct that the opposed application should proceed to grant.
I award costs according to schedule 8 of the Patents Regulations 1991 against the Applicant, ARB Corporation Limited, up to 16 August 2018. I award costs according to schedule 8 of the Patents Regulations 1991 against the Opponent, Oakmoore Pty Ltd, from 16 August 2018 onwards.
REASONS FOR DECISION
Background
Patent application 2013251243 (the “specification”) was filed on 31 October 2013. The specification has an earliest priority date of 31 October 2012, and the applicant is ARB Corporation Limited (the “Applicant”)
On 20 June 2014 Oakmoore Pty Ltd (the “Opponent”) filed a request (the “request”) with respect to the specification under s36 of the Patents Act 1990 (the “Act”). This request asserted that the Opponent was either the sole applicant or in the alternative the co-applicant of the specification.
The outcome of the request was determined in Oakmoore Pty Ltd v ARB Corporation Limited [2015] APO 66 (“Oakmoore1”), whereby the Delegate decided that the Opponent was not entitled to the specification, either solely or in part.
Examination was requested on 26 February 2016, and the specification was advertised as accepted on 6 July 2017. A notice of opposition to the specification, under s59 of the Act, was filed by the Opponent on 6 October 2017. The Opponent filed a statement of grounds and particulars (“SGP”) on 5 January 2018.
On 17 April 2018 the Applicant filed voluntary amendments under s104 of the Act. These amendments were to the claims only. Ultimately these amendments were allowed on 16 August 2018.
The filing of evidence in support (“EIS”) was completed on 4 April 2018. This consisted of:
· a first declaration by Andrew Edward Irving (“Irving1”), dated 29 March 2018, with supporting exhibits AEI-01 to AEI-05.
The filing of evidence in answer (“EIA”) was completed on 5 July 2018. This consisted of:
· A first declaration by Mr William Samuel Hunter (“Hunter1”), dated 30 May 2018, with supporting exhibits WSH-01 to WSH-04; and
· A second declaration by Mr William Samuel Hunter(“Hunter2”), dated 4 July 2018, with supporting exhibits WSH-05 to WSH-08.
The filing of evidence in reply (“EIR”) was completed on 5 September 2018. This consisted of:
· a second declaration by Mr Andrew Edward Irving (“Irving2”), dated 4 September 2018, with supporting exhibits AEI-06 to AEI-10.
On 17 April 2018, the Applicant filed a voluntary request to amend the specification under s104 of the Act. These amendments were ultimately allowed on 16 August 2018.
10. The Opponent filed amendments to the SGP on 5 September 2018, these amendments being allowed on 25 September 2018. Hereinafter where I refer to the SGP, it is to the SGP as amended unless otherwise indicated.
11. Both parties filed written summaries of submissions. The Opponent filed their written submissions (the “Opponent’s written submissions”) on 10 April 2019, while the Applicant filed their written submissions (the “Applicant’s written submissions”) on 18 April 2019.
12. The hearing took place on 30 April 2019 in Canberra.
The Invention as Described
13. The invention for this application relates to a means for attaching a rigid canopy to a tray or tub, such as those from utes and the like. The background to the specification discusses several issues in securing canopies to tubs in the following way at [0003] and [0004]:
“In the past, canopies have been secured over a vehicle tub by attaching a canopy to the side walls of the utility tub by various means, typically involving either mechanically fixing or clamping a rim of a canopy shell to a surface of a side-wall of the tub area. Most commonly a canopy is attached directly to a top surface of the vehicle tub by connecting a plurality of first extrusions bolted or screwed to the rim (sic) the canopy to a plurality of second extrusions bolted or screwed to the vehicle. Whilst this is a simple and secure arrangement to secure a canopy over a vehicle tub, the fixings that connect the first extrusions to the canopy rim protrude from the outer surfaces of the canopy and are generally considered unattractive. This is particularly the case when a canopy is affixed to a high-end, expensive vehicle, having a stylised, aerodynamic appearance. In order to address this issue, an additional trim is often affixed to the outer surface of the canopy to cover the visible fixings.
Furthermore, using the commonplace canopy attachment method described above, an attached canopy is arranged on top of the side walls of the vehicle tub inevitably creating a gap between the first extrusions and the exterior surfaces of the tub. This gap has been found to trap dirt and moisture, particularly when the vehicle is driven off-road, increasing the likelihood of corrosion of the extrusions and/or surfaces of the vehicle tub, thereby allowing dirt and moisture to penetrate into the vehicle tub cargo area.”
14. The consistory statement at [00015] reads as follows:
“The present disclosure relates to an assembly intended to be compatible with a variety of makes, models, sizes and geometries of vehicles and canopies.”
15. The specification goes on to describe several embodiments, all directed towards means for securing rigid canopies to the tub of a ute or the like. These are best understood by reference to the figures, all of which are reproduced at Annex A to this decision.
16. Figures 1, 2A and 2B illustrate a first embodiment. As can be seen from these figures, the means for securing the canopy shell 10 to the sidewall of the vehicle tub 11 comprises an attachment assembly 12 comprising an L shaped mount rail 17 and a bracket 22.
17. The mount rail 17 is fixed to the interior surface 13 of the sidewall 11 via mechanical fasteners 21 that pass through a second portion 20 of the mount rail 17, although the mount rail 17 could also be secured in a similar manner via a first portion 19, this extending across the top surface 14 of the sidewall 11. Other suggested attachment means comprise adhesives and clamps, although it stated to be desirable to secure the mount rail 17 such that it is removable. An optional flat seal 18 is placed between the first portion 19 and the top surface 14 to prevent ingress of dust or moisture and to reduce noise and vibration. Although it is not labelled on figure 1 the first portion 19 comprises a flange which extends towards the exterior surface 15 of the sidewall 11. At [00023] and [00024] the specification notes that:
“The rail (17) is a continuous metal strip, such as steel or aluminium, formed from bent sheet metal therefore being readily adaptable to side-wall geometry variations of different vehicle models. However other materials with an appropriate structural integrity may be used, such as plastics, or a metallic die-casting or extrusion…
…The rail may be formed as a continuous extrusion and cut to length according to the dimensions of the vehicle tub it is fitted to. This may involve trimming width from the rail, according to the width of the tub side-wall and/or cutting the rail to an appropriate length. However for common models of vehicles, preselected standard widths and lengths of rail are provided.”
18. The bracket 22 comprises a groove portion 23 that engages the flange of the mount rail 17, thereby allowing for the bracket 22 to be secured to the mount rail 17 by friction and/or other means, such as adhesives or mechanical fasteners, or a combination of such means. The bracket 22 also comprises an outer portion 24, angled with respect to groove portion 23, and having upper 25 and lower 26 channels that run the length of the bracket 22. The channels 25, 26 are adapted to retain adhesive means, said to be double sided adhesive tape for upper channel 25, and glue for lower channel 26. A fixing cover 28 slidably engages the bracket 22, to cover the gap between the groove portion 23 and outer portion 24, thereby hiding any fasteners used to connect the groove portion 23 to the flange of the mount rail 17. The specification states (at [00032]) that:
“The bracket (22) may be made of any suitable material such as steel, plastics or aluminium, and is generally aluminium formed from an extrusion in order to simplify manufacture. The bracket is provided as a continuous strip, but may alternatively be provided as separate strips that abut together. Alternatively, the bracket may be discontinuous and arranged evenly along the edges of the canopy. Gaps may be provided where the sidewall has obstructions, for instance.”
19. The adhesive means is used to secure the canopy shell 10 to the outer portion 24, in a manner such that the rim 16 of the canopy 10 is spaced from the outer portion 24 and is suspended below the top surface 14. It is noted that any suitable means can be used to secure the canopy 10 to the outer portion 24, for example mechanical fasteners, however adhesives are said to be preferable to prevent fixings protruding through the canopy 10. A seal 27 is placed between the exterior surface 15 and the inner surface of the bracket 22 or canopy 10. The seal 27 is resilient, to prevent the entry of dust or moisture.
20. Although the mount rail 17 and bracket 22 have been clearly described as separate items which form the attachment assembly 12, a rather different embodiment is described at [00028]:
“In an alternative embodiment (not shown), the rail and bracket may be a single integrated part, such as formed from an extrusion. This alternative will generally only be appropriate with common models of vehicles, where the geometry of the sidewalls of the tub are known and a unitary bracket and rail can be mass produced.”
21. Further embodiments of an attachment assembly are discussed with respect to the figures. I will only outline these as far as they differ in a material sense from the first embodiment.:
22. The second embodiment (figures 3A and 3B) appears to differ from the first in that there is no fixing cover, and in that the flange 32 appears to merely comprise one end of the L shaped rail 31.
23. The third embodiment (figure 4) comprises a first rail 41, a second rail 42 and a bracket 44. The L shaped first rail 41 is secured to the inner surface 13, with the L shaped second rail 42 being secured to the first rail 41. A flange 43 of the second rail 42 extends towards the exterior surface 15, with the bracket 44 being secured to this flange in a similar manner as per the first and second embodiments. The seal 45 between the second rail 42 and top surface 14 has rather more depth to it than optional flat seal 18 of the first embodiment, resulting in the second rail 42 sitting somewhat further above top surface 14 than as for rails 17, 31. The specification observes (at [00038]) that:
“…The dual rail approach allows for the first rail to be a standard component, applicable to any vehicle, and the second rail having adjustment means, such as plurality of fixing apertures to secure a fastener between the first and second rail, to allow the assembly to be adjusted in width, according to the side-wall geometry of the vehicle model…”
24. The bracket 44 is similar to bracket 22, except that it comprises three channels (top 47, middle 48 and bottom 49) a wiring loom channel 50, an enclosed space for fasteners used to secure the bracket 44 to flange 43 (not labelled on figure 4), and, like the second embodiment, the flange 43 appears to merely comprise one end of the second rail 42. The wiring loom channel 50 is closed by a cover 52 which appears to operate in a similar manner to fixing cover 28 of the first embodiment.
25. The reasons for having three channels is explained at [00039] of the specification:
“…The bracket also includes a canopy fixing portion having three channels (47-49) which are utilised differently for different design requirements. For instance, top channel (47) may be adapted to house adhesive tape, forming a weak adhesion between the bracket and canopy shell to allow for position adjustment between these components during installation, bottom channel (49) adapted to receive glue to permanently affix the bracket to the canopy shell and middle channel (48) to provide a barrier between the top and bottom channels to prevent the glue from coming into contact with the adhesive tape. The barrier may simply be an air filled void or include foam tape to provide a physical barrier. Alternatively, top channel (47) and bottom channel (49) may be filled with different glue compositions, with middle channel (48) acting as a dam to prevent the different glues from mixing with each other. In a further alternative arrangement, top channel (47) and bottom channel (49) may both house the same or different adhesive tapes and middle channel (48) is filled with a glue.”
26. The fourth embodiment (figure 5) utilises as single L shaped rail 61 that is like rail 31 from the second embodiment in that the flange (not labelled) appears to merely comprise one end of the rail 61. The rail 61 also sits rather above the top surface 14 of the side wall 11 in a similar manner as per second rail 42 of the third embodiment. The bracket 44 is identical to that from the third embodiment.
27. The fifth embodiment comprises two variations represented by figures 6A and 6B. Figure 6A illustrates a L shaped rail 72 that is secured to the inner surface 13 and top surface 14 using the clamping action of one or more clamps 71, the positioning of rail 72 being otherwise as for the third and fourth embodiments. The bracket 44 is identical to that from the third embodiment.
28. The variation of figure 6B is very similar to that of figure 6A. However, the rail 81 is T shaped and comprises one or more apertures 82, through which pass one or more clamps 71. The clamp(s) 71 secure the rail 81 via clamping action to the top surface 14.
The Claims
29. The application as amended comprises twenty claims, of which claim 1 is the only independent claim. Claim 1 is reproduced below. The full claim set is given at Annex B to this decision.
“1. An assembly for attaching a rim of a rigid canopy shell adjacent to an exterior surface of a vehicle tub, the assembly comprising:
at least one rail adapted to be connected to a side-wall of the vehicle tub, the at least one rail having a flange arranged to extend, in use, towards the exterior surface of the vehicle tub; and
at least one bracket having a first portion secured to the flange to prevent movement of the first portion relative to the flange, and a second portion adapted to be affixed to an inner surface of the canopy shell;
wherein the second portion has one or more regions containing adhesive means configured to adhere the bracket to the canopy shell.”
The Opposition
30. In the SGP the Opponent pursued grounds under:
· s18(1)(a) – none of the claims are for a manner of manufacture;
· s18(1)(b)(i) – none of the claims are novel;
· s18(1)(b)(ii) – none of the claims comprise an inventive step;
· s18(1)(c) – the alleged invention is not useful;
· s40(2) – the claims do not define the alleged invention in light of essential features defined in the specification;
· s40(3) – the claims are not clear or succinct; and
· that the applicant is not entitled to the grant of the patent or is only entitled in conjunction with some other person.
31. I note that the ground under s40(2) appears a little unusual, as it is not entirely clear how the Opponent’s assertions here fit under s40(2). Nevertheless, this is moot as the Opponent abandoned all grounds in their written submissions and at the hearing except for novelty and inventive step.
Onus of and Standard of Proof
32. The request for examination in relation to the application was filed on 17 June 2015. Consequently, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Notably it is the Opponent who bears the onus of proving their case to the requisite standard during opposition proceedings.
33. Although I did not take there to be any significant dispute as to the standard of proof, I observe that the Applicant asserted in their written submissions (at [16] to [18]) that:
“While s 60(3A) of the Act removed the former standard requiring ‘clear’ or ‘practically certain’ invalidity to be shown, it remains relevant to consider the forensic context of the present proceeding.
The forensic context involves a decision being made summarily about the validity of a patent. application. Neither the Delegate nor the parties can test the evidence by examining the witnesses orally. If the opposition is upheld, the application will not proceed to grant (unless the issue can be addressed by amendment). That is, subject to any appeal, an adverse decision finally determines the patent applicant's rights. Conversely, if the opposition is dismissed, the opponent will still have the opportunity of seeking to revoke the patent, or seeking re-examination.
The above considerations require an opponent to discharge its onus by cogent and compelling evidence. The present opponent has not done so.”
34. While I note the Applicant’s assertions, I observe that the Opponent need prove their case in relation to a ground of opposition on the balance of probabilities.
Who is the Skilled Addressee?
35. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular, in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
36. I consider that the skilled addressee is a person or team of persons involved in the design and manufacture of canopies and other exterior components for utes and vehicles in general.
37. I have reviewed the experience and qualifications of both Mr Irving and Mr Hunter. Mr Irving has a Honours Degree in mechanical engineering and has worked in the field since 2001. Consequently, he is clearly able to represent what the skilled addressee would know or do before the priority date. I do observe, however, that Mr Irving is not an independent witness, since he has worked for the Opponent since beginning full time employment in 2001 (Irving1 at [2] to [4]).
38. Mr Hunter has a Master’s Degree in mechanical engineering, and has over 25 years’ experience as a professional mechanical design engineer. It is apparent that Mr Hunter has extensive mechanical engineering experience across a wide variety of industries, including products used in vehicles (WSH-02 and Hunter1 at [6] and [10]). I consider that Mr Hunter is also able to represent what the skilled addressee would know or do as at the priority date, via his qualifications and experience, though I observe that his experience in the field is significantly less than that of Mr Irving, and he has not designed a canopy for a ute or the like vehicle.
39. The Opponent clearly puts forward Mr Irving as representative of the skilled addressee at [43] of their written submissions, there being nothing stated with respect to Mr Hunter, other than that he has not previously designed a canopy for a ute (at [11]). At the hearing Mr Fleming submitted that Mr Hunter did not have any relevant industry experience to comment on the CGK as at the priority date.
40. The Applicant proffers Mr Hunter as the skilled addressee at [11] and [12] of their written submissions. With respect to Mr Irving, the Applicant observes (at [13]) that he is not an independent witness and is apparently inventive, being named inventor on six patent applications. Mr Burgess reiterated similar concerns at the hearing and noted that Mr Irving reviewed the specification before providing his opinions.
41. I reiterate that I consider both Mr Irving and Mr Hunter can represent the skilled addressee, albeit with some reservations generally as noted by the parties. It will be up to me, as the decision maker, to determine if any part of any of the expert evidence that I might putatively rely upon is affected by factors that would impact the weight I should give such evidence.
Construction of the Claims
42. Both parties agree that the question of novelty in the present case turns on the construction of claim 1. The primary issue in contention is whether the rail and bracket of claim 1 are necessarily separate components that are brought together (as contended by the Applicant in written submissions at [32] to [44]), or whether they might be of unitary construction, i.e. formed as a single whole, for example by extrusion (as contended by the Opponent in written submissions at [18] to [25]). Another issue raised by the Applicant, in written submissions and at the hearing, is the construction of “flange”, while Mr Burgess also raised additional submissions with respect to the construction of “regions containing adhesive means”. I will firstly consider whether the rail and bracket are of unitary or separate construction. I will then consider the proper construction of the “flange” and Mr Burgess’s submissions on “regions containing adhesive means”.
43. In this respect I observe that rules of construction have been provided by the authorities to assist in determining the ambit of claims. These have been conveniently summarised in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (“Pfizer”) at [247] to [250]. These comprise, from (Re Décor Corporation Pty Ltd (Formerly Brian Davis and Company Pty Ltd) and Rian Tooling Industries Pty Ltd v Dart Industries Inc [1988] FCA 399), cited at [249] of Pfizer:
“1. The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
2. It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.
3. Nevertheless, in approaching the task of construction, one must read the specification as a whole.
4. In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
5. If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
6. A patent specification should be given a purposive construction rather than a purely literal one.
7. In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
8. The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
9. Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
10. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.”
44. Three additional principles were also cited in Pfizer (at [250]) from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56:
“1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).
2. The Court should avoid too technical or narrow a construction of claims.
3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.”
45. I note that claim 1 has been presented above. In construing this claim it is helpful to consider the definition of “assembly” from the Macquarie Dictionary Online, 2019, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, (“Macquarie Dictionary”). The most relevant of these is given below:
“…6. the putting together of complex machinery, as aeroplanes, from interchangeable parts of standard dimensions.
7. such parts, before or after assembling.”
46. Firstly, it can be seen that the recital of “assembly” in claim 1 presupposes a number of parts that are separate or distinct entities which are then brought together to form a complex entity of some kind. Secondly, the bracket is defined as having a first portion which is secured to a flange of the rail to prevent movement of the first portion relative to the flange. Such wording is congruent with an assembly whereby separate parts would be brought together to form a more complex entity.
47. In view of the above it is difficult to see how a unitarily formed rail/bracket (for example by extrusion) can be called an “assembly” in the ordinary use of the word. Secondly the fact that the bracket is secured to part of the rail (the flange) to thereby prevent relative movement with respect to the flange, would appear to be meaningless where the rail/bracket are formed in a unitary fashion.
48. Consequently, I consider that, on balance, claim 1 is limited to a separate rail and bracket that are put together to form an assembly for attaching a rim of a rigid canopy shell adjacent to an exterior surface of a vehicle tub.
49. The Opponent’s submissions to the contrary rested upon several assertions, as given at [18] to [25] of their written submissions, with further explanation given on some of these points at the hearing. These may be summarised as follows:
i.That there is nothing in claim 1 that requires the rail and bracket to be manufactured as two separate components. In this respect Mr Fleming submitted at the hearing that the Opponent’s position was that the claim was broad enough to encompass both a separate rail and bracket as well as an integrated rail and bracket. Mr Fleming asserted that “…provided the functional requirements of the claim are met…then that is sufficient for the purposes of the claim”. Mr Fleming asserted that the Opponent’s construction was not inconsistent with the definition of “assembly” as put forward by the Applicant. In this respect he asserted that “…the bracket and rail are still separate parts but they are integrally formed…”
ii.The fact that the bracket is secured to the flange merely refers to the physical relationship between the bracket and the flange. Mr Fleming reiterated this at the hearing also noting that there was no limitation in the claim as to how the bracket is secured to the flange. In this respect Mr Fleming asserted that “…in circumstances where the bracket and the rail, the bracket and the rail, the flange are welded together, from a practical perspective there would no difference in terms of the outcome what the assembly will ultimately look like if it is welded from two sperate components or if it is integrally formed from a single extrusion”;
iii.that the Opponent’s construction is supported by [00028] of the specification;
iv.that dependent claim 20 as accepted recited that the rail and bracket are integrally formed together, with specific reference to s116 of the Act. At the hearing Mr Fleming argued that based on a presumption against redundancy, and as claim 20 as accepted was appended to claim 1, it follows that claim 1 as accepted incorporated both an integrated rail and bracket and a rail and bracket formed from separate parts; and
v.when dependent claim 20 (as accepted) was deleted the Applicant did not delete [00028] from the specification.
50. I will now outline why I reject each of these arguments as presented by the Opponent.
51. In relation to items (i) and (ii), I consider that the Opponent’s arguments simply ignore the plain meaning and consequence thereof of claim 1 deliberately reciting an “assembly” with the bracket being secured to the flange to prevent relative movement. It is not a matter of simply having functional equivalence as asserted by Mr Fleming, as the use of the word “assembly” provides particular structural limitations as I have discussed above. Further, as will be seen below, this structural limitation is not merely abstract in nature, but has important consequences.
52. With respect to item (iii) it is worth citing [00028] of the specification in whole:
“In an alternative embodiment (not shown), the rail and bracket may be a single integrated part, such as formed from an extrusion. This alternative will generally only be appropriate with common models of vehicles, where the geometry of the sidewalls of the tub are known and a unitary bracket and rail can be mass produced.” (emphasis added)
53. It is apparent from the specification that [00028] is describing an alternative embodiment to that described in figure 1, which comprises a separate rail and bracket. It is also clear from [00028] that there are practical consequences to having a unitary rail and bracket as opposed to a separate rail and bracket. One of these is that the unitary rail and bracket can be mass produced for common models of vehicles, as opposed to having to adapt the separate rail and bracket assembly to a variety of makes and models. This undermines Mr Fleming’s contentions at the hearing with respect to anything meeting the functional requirements of the claim falling within the scope of claim 1.
54. I also observe that all the described embodiments each comprise a separate rail and bracket, and indeed this appears to be central to the general thrust of the specification as is apparent at [00015].
55. The point of all this is that [00028], when the specification is read as a whole, represents nothing more than a briefly stated alternative embodiment that is rather tangential to the disclosure of the rest of the specification. There is thus no reason to believe that [00028] somehow fundamentally characterises the specification as whole and that somehow this reads onto claim 1.
56. In any case the Opponent’s approach here fundamentally results from illegitimately drawing glosses from the specification in order to expand the boundaries of claim 1 to include features that are simply not present on a plain reading of the same. Noting the fact that [00028] relates to what is a tangential alternative to the main thrust of the specification, the attempted gloss here by the Opponent is barely ephemeral.
57. With respect to item iv, the fact that claim 20 as accepted recited a unitary rail and bracket does not in my opinion alter the construction of claim 1 as it presently stands. It is true, as pointed out by the Opponent that s116 of the Act does allow me to consider the specification without amendment for the purposes of construing a specification as amended.
58. However, on this point the Applicant, in their written submissions at [42] cited Sachtler GMBH & Co KG v RE Miller Pty [2005] FCA 788; (2005) 65 IPR 605 at [145] (“Sachtler”):
“Section 116 of the Act provides that the Court may, in interpreting a complete specification as amended, refer to the specification without amendment. As noted by Tamberlin J in Baygol at [55], this could provide a basis for an inference as to what was intended by the patentee or at least cast some light on the construction of the claim. However, it is neither useful nor legitimate to do so where the amended specification is clear (Beltreco at [81] citing Martin & Biro Swan Ltd v Millwood Ltd [1956] RPC 125 at 135).”
I note that this principle was more recently cited by Besanko J in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [151].
59. Consequently, the Applicant argued that as claim 1 was clear, it was “…neither useful nor legitimate to refer to the specification before amendment…” (at [43]). These arguments were reiterated by Mr Burgess at the hearing, although he also argued that as claim 20 no longer formed part of the patent specification it was not available as an aid in construing claim 1.
60. I observe that at the hearing Mr Fleming expressly indicated that the Opponent was not alleging any lack of clarity against claim 1, nor is there any such attack apparent in the Opponent’s written submissions. I do not consider that claim 1 suffers in any way from a lack of clarity. Consequently, I agree with the Applicant, that as per Sachtler, it would not be either useful or legitimate to refer to the specification prior to amendment in construing claim 1.
61. In any case, I am of the opinion that even if claim 20 as accepted were still present in the claim set, then this would not alter the construction I have taken regarding claim 1. Rather the presence of this claim would, to my mind, result in other difficulties for the Applicant that are endemic to that claim only. In this respect Mr Burgess reiterated the Applicant’s contention in written submissions (at [44]) that claim 20 as accepted could not be properly appended to claim 1.
62. To my mind this amounts to a self-admission that claim 20 as accepted suffers from a lack of clarity. However, notwithstanding any putative clarity issues, it would seem to me that accepted claim 20, when properly construed, effectively defines the attachment assembly of claim 1 but in in the form of an integrated rail and bracket. That is, it would no longer be an assembly as such, but would define an alternative embodiment as discussed at [00028] of the specification. It may be that claim 20 as accepted would lack novelty in view of some of the prior art cited by the Opponent, and this may also be why the Applicant removed this claim via amendment.
63. With respect to item v, it is of no moment to claim 1 whether [00028] is deleted from the specification or not as it clearly relates to an alternative embodiment which does not fall within the scope of this claim. Arguments to the contrary by the Opponent result from impermissibly glossing in features as discussed above.
64. Turning to construction of the “flange”, the Applicant contends at [47] and [48] of their written submissions that the flange of claim 1 is limited to “…a cantilevered tab that overhangs the top outer edge of the vehicle tub”. The basis for this interpretation is said to be Hunter2 at [14], and it is asserted by the Applicant at [47] that:
“This construction is consistent with:
(a) The Patent Application’s use of the word ‘tab’ and the depiction of the ‘flange’ in the Figures: see (32) in Figs 3A-3B, (43) in Fig 4, and (73) in Fig 6A; and
(b) The dictionary definition of a ‘flange’ i.e. “a projecting rim, collar, edge, ridge, or the like, on an object, for keeping it in place, attaching it to another object, strengthening it etc”: Macquarie Dictionary (4th ed, 2005), p 536.”
65. Ultimately, I do not agree with the suggestion that Mr Hunter’s construction is correct. I do agree with the dictionary definition of “flange” (which is identical to the online version of the Macquarie Dictionary as cited throughout this decision). However, the assertion that Mr Hunter’s interpretation accords with the use of “tab” and how the flange is depicted in the specification appears to result from Mr Hunter believing that there is potential ambiguity in claim 1:
“Apart from the first and second portions noted above, the only potential ambiguity in the claims which would require reference to the specification is the ‘rail having a flange’ defined in claim 1. To clarify this I reviewed all of the flanges described in the specification and understand the flange of claim 1 is referring to an overhanging cantilevered tab which overhangs the top outer edge of the vehicle tub. Figure 1 of AU’243 shows a good example of such a flange.” (Hunter2 at [14])
66. It is to be noted that Mr Hunter has referred to “potential ambiguity” – he has not asserted that the “rail having a flange” is actually ambiguous in any way. I also observe that the Opponent has not contended that this feature is unclear, nor is any ambiguity apparent to me. Consequently, it is not entirely clear why Mr Hunter resorts to the specification to interpret the “rail having a flange”. In this respect the plain words of the claim define that the flange is “…arranged to extend, in use towards the exterior surface of the vehicle tub…”. While a “cantilevered tab that overhangs the top outer edge of the vehicle tub” may well fall within the scope of the flange as defined, I see no reason to limit the nature of the claimed flange to this as such.
67. In view of the above I consider that Mr Hunter’s interpretation is tantamount to importing a gloss into the claim. Similarly, the Applicant’s citing of passages from the specification to support Mr Hunter’s interpretation is nothing more than the tidy closing of a circle that begins and ends with importing a gloss.
68. I will now turn to the nature of “…regions containing adhesive means…”. At the hearing Mr Burgess submitted that “claim 1 makes it clear that the bracket itself has a second physical portion that has one or more regions that contain adhesive”. It is worth considering the relevant definition of “region” and “containing” from the Macquarie Dictionary, which are given below:
region: “noun 1. any more or less extensive, continuous part of a surface or space.”
contain: verb (t) 1. to have within itself; hold within fixed limits…4. to have as contents or constituent parts; comprise; include.”
69. To the extent that the Applicant could be taken to submit that “containing” should be narrowly read as holding or having within, I reject such an assertion. In this respect I note that the plain meanings of both “region” and “containing” are broad enough to cover the situation whereby the adhesive means concerned is simply placed on a particular surface or area of the bracket, for example double sided adhesive tape. In addition, while all the preferred embodiments have the adhesive means contained in a channel, this feature is not introduced until claim 7. This further suggests that claim 1 extends to situations where the channels are not present i.e. where the adhesive is not contained in the sense of held within the region in some manner.
Novelty
70. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):
“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.”
71. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tire & Rubber”) as to what a skilled addressee would do based on the disclosure in question:
“…if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”
Consideration of Novelty in view of the Prior Art
72. In their written submissions, the Opponent has alleged that certain of the claims lack novelty in view of AU 2008100260 (D5) and photographs of the Vandapac canopy attachment as commercially sold in Australia with Mitsubishi Triton’s in 2009 (D6). I will now consider whether any of the claims lack novelty in view of either of D5 or D6.
D5
73. Similar to the specification, D5 relates to an assembly for attaching a canopy to the tray of a ute or the like. The assembly comprises a plurality of side rails and clamp assemblies which cooperate to attach a canopy to a tray or bed of a ute or truck. The assembly of D5 is best understood by reference to figures 2, 3 and 6, which are reproduced below.
74. Figure 2 illustrates a side rail 41 and clamp assembly 50 which are used to attach a canopy 30 to side wall 21 of a truck or ute. The side rail 41 comprises a top surface 43 and a wall 61 extending at right angles to the top surface 43. The top surface 43 comprises a series of serrated grooves 45, while an inner 62 and outer 63 surface of the wall 61 also comprise a series of respective grooves 64, 65. As can be seen from figure 6, the side rail 41 extends the entire length L2 of the side wall 21 of the truck bed.
75. The clamp assembly 50 comprises an upper part 52 and a lower part 53. The upper part 52 has first 54 and second 55 ends, while the lower part 53 also first 56 and second 57 ends. The upper 52 and lower 53 parts are secured together by a screw 70 that passes through hole 71 in the upper part 52 and engages tap hole 69 in the lower part 53.
76. As best seen on figure 2, the lower edge 32 of the canopy 30 bifurcates into inner 33 and outer 34 walls that are respectively adhered to the inner 63 and outer 64 surfaces using glue 66. A tapping screw 67 and washer 72 provides further securement of the inner wall 33 to inner surface 62. The overall effect of this arrangement is to secure the canopy 30 to the side rail 41
77. I will now describe the arrangement to secure the side rail 41 and canopy 30 to the side wall 21. A rubber seal 47 is placed between the upper side horizontal edge 23 of the side wall 21 and side rail 41. Serrations 58 of the first end 54 engage grooves 45, while grooves 60 of first end 56 engage the underside of horizontal edge 23, thereby clamping the side rail 41 and canopy 30 to the side wall 21.
78. On considering the assembly of D5, it is apparent that there is no rail and bracket assembly as defined in claim 1. Although the wall 61 could (and I stress could) be called a bracket it comprises an integrally formed part of the side rail 41. It is thus apparent that D5 does not disclose a rail and bracket assembly as defined in claim 1. It follows that D5 does not deprive claim 1 or any of the other claims of novelty.
D6
79. D6 relates to the Vandapac canopy and attachment means said to be used as sold with the 2009 and 2010 Mitsubishi Triton. The disclosure of D6 is best understood by considering the first page of D6 which is reproduced below.
80. The inset photo on the top left shows the canopy as said to be used on a 2009 Mitsubishi Triton. The three other photos illustrate various views of the canopy attachment means apparently prepared by cutting through the canopy; see Irving1 at [20]. From the photos Mr Irving has labelled what he considers to be a “rail” a “bracket” and “one or more regions containing adhesive means” as per claim 1.
81. The second page of D6 is an online advertisement for a 2009 Mitsubishi Triton. The wording “GENUINE MITUBISHI EXTRAS: Canopy, Tub liner” has been circled in green. The third page purportedly shows the Vandapac canopy from a brochure for the 2010 Mitsubishi Triton.
82. Before considering whether D6 is novelty destroying or otherwise, there are some issues with the evidentiary value of D6 that I need first consider.
83. The first of these is the fact that D6 is clearly marked, as the bottom of each page, “Copyright 2015”. It follows that D6 does not form part of the prior art base for novelty as it was published well after the priority date of the specification. Mr Fleming pointed out as much at the hearing, however he argued that D6 was in effect providing evidence of prior use of the invention.
84. It is perhaps worthwhile now to consider the relevant principles with respect to prior use. Where the question of novelty is considered in view of doing an act (“prior use”) the authorities have indicated that the test for novelty is the same as in Meyers Taylor, as per Von Doussa J in Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676 (“Old Digger”) at [152]:
“In order to deprive a patented invention of novelty, the use relied upon must be a use in public which discloses to a person skilled in the relevant art all the essential features or integers of the invention the subject of the challenged patent. The information must enable the notional skilled addressee at once to perceive and understand, and be able to practically apply the discovery, without the necessity of making further experiments: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71 at 75. The use must be such that the public were free to do whatever they wished with the information derived from that use. A disclosure to a person under an obligation of confidence, who is not free in law or equity to make use of the information acquired for their own purposes, is not use in public: Fomento Industrial SA, Biro Swan Ltd & Anor v Mentmore Manufacturing Co Ltd [1956] RPC 87at 99 per Lord Evershed.”
85. I also note that alleged prior uses need to be strictly proved as per Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 (“Aspirating IP”) at [199] and [200]:
“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
86. The first thing I note is that the mere existence and use of the Vandapac canopy before the priority date does not equate to a prior use for novelty purposes unless information equal to claim 1 was disclosed to a skilled addressee such that they were free to do whatever they wished with the information. In this respect it is apparent from D6 that the means for attaching the Vandapac canopy to the Mitsubishi Triton was covered in use with a dark material lining material (best seen on the third photo from the left on the first page of D6). This means that mere visual inspection of the of the canopy would reveal nothing to anyone about the canopy attachment means without either removing the lining or cutting through the canopy as per D6.
87. It may be that the nature of the attachment means was made apparent to technicians and others who used such means to attach the Vandapac Canopy before the priority date. However, there is no evidence from any such persons to this effect, nor whether they were able to freely use the information so obtained.
88. It follows from the above that the mere existence of the Vandapac canopy before the priority date does not amount to prior use based on the evidence provided.
89. The final question is whether the cut away photos of D6 comprise valid evidence of prior use before the priority date. On balance it is not apparent to me that this is the case. In this regard Mr Irving states at [20] of Irving1 that:
“The photos on page 1 of D6 are of a cross section that I instructed an EGR workshop technician to prepare from a Vandapac canopy that EGR purchased from a Brisbane Mitsubishi” dealership.
Notably Mr Irving does not state when he bought the Vandapac canopy or when the technician prepared the photographs concerned. This alone means that I cannot, on balance, be satisfied that D6 comprises a prior use that forms part of the prior art base for novelty.
90. I also observe that it is not clear to me whether any information that was gleaned by persons at EGR from the preparation of D6 were free to do whatever they wished from such information. This is because the bottom of each page of D6 comprises the following statement: “Information presented on this page remains the intellectual property of EGR, Australia, and is not be copied, forwarded or prototyped without written consent from EGR. Copyright 2015”.
91. In view of the above I am not satisfied that, on balance, D6 forms part of the prior art base for novelty.
92. Nevertheless, even if D6 was available for novelty purposes, I do not consider that it comprises clear and unmistakable directions with respect to claim 1. The Opponent has primarily relied upon the evidence of Mr Irving, who has identified a separate “rail” and “bracket” in D6. However, I do not agree that the “bracket” is secured to a flange of the rail. Rather the bracket as identified by Mr Irving appears to comprise a flat rail like structure with a tubular pipe that is secured in some way to the flat plate like structure forming the main body of the rail. It is difficult to see how this main body of the rail would be understood as a flange in the ordinary use of the English language. It would seem that Mr Irving’s construction is infected ex post facto with a view to anticipation, noting that Mr Irving reviewed the specification prior to considering D6; see Irving1 at [7].
93. In summary, on balance, I am not satisfied that D6 deprives any of the claims of novelty.
Novelty – Conclusion
94. I am not satisfied that, on balance, any of the claims lack novelty. This ground of opposition is unsuccessful.
Inventive Step
95. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.”
96. Although not expressly referred to in the Act, it has been accepted by the authorities that lack of inventive step in the Act is commensurate with the previous concept of obviousness under the Patents Act 1952 (albeit relying on a different prior art base); see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
97. In situations where the invention may lie in a combination of features, it is appropriate to consider whether the combination is obvious, not whether each of the separate integers of the combination is obvious: Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd. [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293 and Aktiebolaget Hassle v Alphapharm Pty. Ltd [2002] HCA 59 at [119]; (2002) 212 CLR 411 at 455 (“Aktiebolaget Hassle”):
“In reaching these conclusions, the primary judge made it clear that he was not considering the irrelevant question of whether the individual integers of the combination were obvious. Instead, he was addressing the relevant question, namely whether the combination was obvious [157]. In this Court, the primary judge was criticised for applying the test of obviousness to the separate integers of the formulation. Had he done this it would indeed have been a mistake [158]. With inventions it will often be the case that particular steps in the right general direction, viewed in isolation and separately (and especially with the benefit of hindsight [159]), will be obvious although the combination of such steps (from all the others that would theoretically be possible) will constitute the "inventive step" and negate the claim of obviousness.”
98. The test outlined in Wellcome Foundation is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so-called problem-solution approach, which I will use in determining the inventiveness of the claims below.
99. It was not entirely clear to me from the Opponent’s written submissions whether it was pressing lack of inventive step under s7(2) and/or s7(3). On being asked about this at the hearing, Mr Fleming confirmed that the Opponent was only pressing lack of inventive step under s7(2) of the Act. I have confined myself accordingly in the following.
The Problem
In view of the specification, as discussed earlier in this decision, and the invention as claimed in claim 1, I consider that the problem to be solved is:
to create a canopy attachment means that allows for:
(i) the prevention of fixings protruding from the exterior of the canopy and
(ii) the prevention of dust or moisture ingress into the interior of the canopy by avoiding a gap between the canopy attachment means and the exterior surfaces of the tub;and is readily compatible with a variety of vehicles and canopies
I note that the background of the specification makes it apparent that issues with fixings protruding from the canopy, as well as dust and moisture ingress is known, and I do not consider that the general statement at [0005] as to “admissions” otherwise detracts from this. Mr Hunter’s evidence at [16] and [18] of Hunter1 also generally supports these issues as being well known in the art, albeit after Mr Hunter reviewed the background of the specification. As to a canopy attachment means that is compatible with a variety of vehicles and canopies, although this is not discussed in the background, it was an issue apparent to Mr Hunter based on his reading of the background of the specification alone; see Hunter1 at [19].
There is no evidence to the contrary on any of the above points. Consequently I am satisfied that the above formulation of the problem does not breach the principles laid down in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, to the extent that the problem does not comprise information that is not available to the skilled addressee from CGK or under s7(3).
I observe that I have referred to “allows for” with regard to certain aspects of the problems discussed in the specification. This is due to the fact that claim 1 extends to subject matter that may not necessarily solve the problems as outlined in the specification. For example, where a canopy is adhered to the bracket but also comprises mechanical fixings as well, which falls within the scope of the claim. Secondly, while claim 1 facilitates a solution to the dust and moisture ingress issue, claim 1 as it stands does not necessarily solve the gap problem as such.
For their part, the Opponent appears to adopt the problems as directly outlined in the specification (i.e. fixings protruding from the canopy and a gap that allows ingress of dust and moisture) at [53] of their written submissions. While similar to the problem as I have outlined it, it is not the same. In this respect I reiterate that the problem to be solved, based on the scope of claim 1 and the discussion of the specification is as given above.
The Applicant has not provided any indication of what it considers forms the problem to be solved. Rather at the hearing, Mr Burgess, in citing Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21 (“Lockwood”) at [65] emphasised that the problem solution approach is not mandated in Australia, and that this approach can be unfair to an inventor of a combination patent as per the specification. However, Mr Burgess has not specifically outlined how the problem-solution approach would be unfair to the Applicant in the present matter (other than pointing to Lockwood), and more to the point, how it is incongruent in the present circumstances with the inquiry of inventive step (i.e. obviousness) that stems from s7 of the Act. Consequently, I see no reason to eschew the problem-solution approach in the present matter.
Lack of Inventive Step in View of Common General Knowledge (s 7(2))
As observed earlier, the Opponent’s attack under inventive step in solely based on s7(2) of the Act and is given at [42] to [62] of its written submissions.
Before continuing it is worthwhile considering what comprised CGK before the priority date.
In this respect I consider that mounting a canopy using a canopy rail that is fitted to a bottom part of the canopy, the canopy rail sitting on the top side of a tub or tray, and itself being secured to a mounting bracket that fixed to the tray is known. This type of mounting is exemplified by diagram 47 from the guide for installing an EGR canopy on a Toyota Hilux (dated December 2011) from WSH-04 (hereinafter “Diagram 47”). Both parties accept that this was CGK based on Mr Hunter’s evidence at [22] to [24] of Hunter1; see the Opponent’s written submissions at [44] and the Applicant’s written submissions at [102].
I also accept, as asserted at [17] of Irving2, that the skilled addressee “…would readily understand that any component can be split into multiple discrete elements as a matter of course…”. Such knowledge appears to be logically probative given the nature of the skilled addressee.
I further accept that the use of adhesives to bond components together was well known in the art before the priority date, as evidenced at [42] to [44] of Irving1 and [19] to [24] of Irving2. While Mr Hunter has expressed some doubt about the longevity of using adhesives in the manner defined in the specification (see Hunter2 at [34] and [35]) that is not to say that the use of adhesives to bond components was not CGK in the art before the priority date. Similarly Mr Hunter’s statements on inventiveness from “CLAIM FEATURE TABLE C” in WSH-08 amount to, as best understood, to assertions that a combination of features, including the use of adhesive means as per claim 1, was not evident in the CGK, rather than the use of adhesives as such not being CGK. Finally I accept that an over the rail canopy design was CGK before the priority date, this being a design where no fixings are visible on the exterior of the canopy, and the canopy overlaps the vehicle tray (Irving1 at [12]). This feature is asserted as being CGK before the priority date at [33] and [34] of Irving1. On this point I note that the Applicant disputes whether such a feature was CGK before the priority date based on several arguments presented at [95] of its written submissions:
“To the extent that Mr Irving asserts canopy attachment mechanisms having an ‘over the rail’ design appearance was ‘common’ before the priority date:
(a) each of the D6 (Vandapac canopy), D7 (Snugtop canopy), and D9 (Sammitr canopy) documents annexed to his statutory delcaration (sic) are marked with ‘Copyright’ dates that fall after the priority date. As such, Oakmoore has not demonstrated that any of these documents were publicly available before the priority date. Nor does the evidence establish that any of the canopy attachment mechanisms depicted in these documents were ‘common’, ‘generally accepted’ or even publicly available before the priority date;
(b) To the contrary, Oakmoore's own evidence (in Oakmoore 1) was that the marketplace was ‘unwilling to accept the over-the-rail design’ before the priority date - see Oakmoore 1 at [46];
(c) Information cannot form part of the CGK unless there is ‘evidence of its general acceptance and assimilation’ by persons skilled in the art: Alphapharm Pty Ltd (2002) 212 CLR 411 at [31]. Oakmoore has not proved this.” (emphasis in original)
I do agree with the Applicant’s contentions at [95(a)] to the extent that there is no actual evidence demonstrating that each of D6, the Snugtop and Sammitr canopies comprised CGK before the priority date. Rather I take it that Mr Irving (at [34] to [36] of Irving1) has supplied these as examples supporting his contention that an over the rail design was CGK before the priority date. In this respect it is open to Mr Irving, as a skilled addressee, to assert that an over the rail design was CGK even without examples. Nevertheless, where supporting examples are provided, to my mind there is no requirement that these themselves comprise CGK (although it would clearly be more helpful to the Opponent if they did).
To at least nominally support his contention, these documents would need to comprise information that disclosed an over the rail design that was publicly available before the priority date. This is where the situation for D6 the Snugtop and Sammitr canopies becomes more interesting in that they are in effect purported evidence of prior uses (noting that D6 is dated 2015, while the Snugtop and Sammitr canopy documents are dated 2014). In this respect the photos of each of these canopies (exclusive of the cut away photos) clearly shows an over the rail design. That is a casual inspection of vehicles with these canopies mounted will reveal an over the rail design.
The remaining question is whether these were available before the priority date. In this respect each of D6 and Snugtop canopy documents indicate that the canopy concerned was OEM equipment on vehicle models predating the priority date, as does Mr Irving at [35] to [37] of Irving1. Although there is no evidence that any vehicles were actually sold with these canopies, the fact that they comprised OEM equipment for popular and well-known vehicles (Mitsubishi Triton and Nissan Navara) means that it is reasonable to conclude that, on balance, many of these vehicles were sold with the canopy concerned. The Sammitr canopy is not said to be OEM equipment, however the Sammitr canopy document and Irving1 at [37] indicates that it was purchased from the market before the priority date for benchmarking purposes. In this respect I note that photo “IMG_0939.JPG” was clearly taken well before the priority date. I am therefore satisfied that, on balance, each of D6 and the Sammitr and Snugtop canopies provide relevant examples of prior use canopies that comprise an over the rail design, thus providing some support to Mr Irving’s contentions of CGK.
I also observe that none of the above is disputed by Mr Hunter, which further supports my view in this regard.
With respect to the Applicant’s contentions at [95(b)], I observe that both parties have made much, at various points in their submissions, of findings and evidence from Oakmoore1, although it would seem, based on Mr Fleming’s and Mr Burgess’s submissions towards the end of the hearing that there was a desire by both parties to not over emphasise this decision. Whatever the case, I note that Oakmoore1 related to the question of entitlement and inventorship under s36 of the Act. Hence, I generally fail to see the relevance of Oakmoore1 to the present matter, especially as none of the evidence from Oakmoore1 has been incorporated into this opposition. Nevertheless, even if I were to consider this statement from Oakmoore1, an indication that the marketplace was hesitant towards an over the rail design does not preclude such a design being CGK as such.
Finally, with respect to [95(c)], I consider that the Applicant appears to have missed the point that Mr Irving has given evidence that an over the rail design was CGK before the priority date, such that there is evidence from a skilled addressee on this point. Mr Irving’s evidence in this regard has not been disputed by Mr Hunter, nor do I have any other reason to legitimately reject Mr Irving’s statements out of hand.
Besides the above items the Opponent alleges that the following items comprise CGK as such:
· US 5316366 (“Wilkins”, from AEI-06);
· D6;
· the “Snugtop” canopy attachment (from WSH-05); and
· the “Sammitr” canopy attachment (from WSH-05).
However, I do not consider that any these items actually comprise CGK. This is due to the fact that there is no evidence that any of these actually comprised CGK before the priority date. In this respect, as observed above, Mr Irving’s discussion with respect to D6, the Snugtop and Sammitr canopies at [34] to [38] of Irving1 is to the effect that an over the rail design was CGK, not that each of D6, the Snugtop and Sammitr canopies are CGK. I observe that Mr Fleming presented a similar argument as an alternative proposition towards the end of the hearing. Similarly, there is no indication in Mr Irving’s discussion, at [14] to [18] of Irving2 that Wilkins actually comprises CGK.
Turning now to the Opponent’s submissions on inventive step, it is argued, at [46] of its written submissions, and reiterated by Mr Fleming at the hearing, that “A side-by-side comparison of Diagram 47 and Fig 4 illustrates that the only practical difference between the assemblies is the manner in which the canopy is affixed to the second portion of the bracket.” I have reproduced the diagram alluded to by the Opponent below (complete with annotations by the Opponent in red), with Diagram 47 on the left and figure 4 from the specification on the right.
I agree with the Opponent to the extent that the method of fixing the second rail 42 to the canopy is different in diagram 47, being via a mechanical fix, there being no adhesive as used in figure 4 or as per claim 1. However, a further difference between diagram 47 and figure 4 (and claim 1) is that the “bracket” to which the canopy is attached is integrally formed with the second rail 42, meaning that it does not disclose a separate rail and bracket as defined in claim 1.
Consequently I disagree with the Opponent’s assertions at [52] of their written submissions “…that to the extent there is any invention as claimed in claim 1 of the Application (which the Opponent denies), it could only be in the manner in which the mounting assembly is connected or affixed to the canopy. As Mr Irving observes, ‘the primary invention claimed appears to be simply a bracket bonded onto the inside surface of a mating component’” (italics in original, references to footnotes removed)
While similar statements are made with respect to Wilkins (at [49] to [51]), the fact the Opponent has not established that Wilkins comprises CGK means that any s7(2) attack based on this document must fail, such that I need not consider Wilkins any further.
The Opponent makes further arguments, at [54] to [55] to the effect that an over the rail design was CGK before the priority date. The Opponent then argues at [56] that:
“The alleged invention in the Application is nothing more than the use of a commonly known means of mounting a canopy on the rim of a vehicle tub in conjunction with an “over the rail” design. Although Mr Hunter speculates as to potential difficulties with identifying appropriate means to adhere the bracket to the canopy shell, the evidence clearly establishes that the use of dual-adhesive arrangements in the automotive and construction industries was well-known before the Priority Date, including to connect an inner surface of a canopy with a rail/bracket assembly (e.g. the Vandapac Canopy Attachment).”(references to footnotes removed)
It would seem that “commonly known means of mounting a canopy on the rim of a vehicle tub…” is a reference to the mounting means of Diagram 47/Wilkins. That is, it would seem to be that the Opponent has asserted that the invention is simply Diagram47/Wilkins implemented as an over the rail design with the canopy attached to the bracket via adhesive.
However even if, in addition to the accepted items of CGK, all the Opponent’s alleged items of CGK were in fact so, there are still fundamental difficulties for the Opponent’s inventive step case. This is due to the fact that its arguments, and Mr Irving’s evidence, merely read like a grab bag of items of CGK that have been plucked from the shelf and thereby add together in some mysterious way to deprive claim 1 of inventive step. Despite adopting some of the problems apparent from the specification, there is no real attempt by the Opponent to string together a reasonable argument, grounded in evidence, that the combination of these items was CGK or would be arrived at from the CGK by the skilled addressee in the context of the problem to be solved, or indeed in any context for that matter.
In this respect there is no evidence outlining why the skilled addressee would specifically , as opposed to could, separate second rail 42 of Diagram 47 into two components (i.e. a bracket and rail), and then use adhesive means to attach the canopy to the bracket in the context of the problem to be solved, and so arrive at the claimed invention. While I can accept that separating structural features into several components would be well known to the skilled addressee, as well as the use of adhesives for bonding, it is not apparent from the evidence why the skilled addressee would do so on starting from Diagram 47. For example, separating rail 42 into multiple components would seem to add cost and complexity to the manufacturing and installation process, while it is not clear from the evidence that either replacing or augmenting the mechanical fix with adhesive would be beneficial over a mechanical fix alone in the context of a canopy mounting bracket. This amounts to a failure to establish a lack of inventive step as per the principles from Aktiebolaget Hassle. It follows that I am not satisfied that, on balance, claim 1 lacks inventive step in view of the CGK alone.
Finally, I observe that the Opponent also makes submissions (at [58]) that claim 1 is not limited to an over the rail design as such. That is true, however I fail to see how this point alone, in the absence of further compelling arguments and evidence, overcomes the difficulties with the Opponent’s inventive step arguments.
Inventive Step – Conclusion
I am not satisfied that, on balance, any of the claims lack inventive step. This ground of opposition is unsuccessful.
Conclusion
The opposition is unsuccessful. None of the grounds of opposition were made out. Subject to any appeal, I direct that the opposed application proceed to grant.
Costs
Costs usually follow the event. However, in the present case the Applicant filed amendments during the opposition that were allowed on 16 August 2018. In this respect it can be seen that the opposition comprised a degree of success up to this date, despite a lack of success overall. Consequently, I award costs according to schedule 8 of the Patents Regulations 1991 against the Applicant, ARB Corporation Limited, up to 16 August 2018. I award costs according to schedule 8 against the Opponent, Oakmoore Pty Ltd, from 16 August 2018 onwards.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Figures from the Specification
Annex B – Claims of the Specification
1. An assembly for attaching a rim of a rigid canopy shell adjacent to an exterior surface of a vehicle tub, the assembly comprising:
at least one rail adapted to be connected to a side-wall of the vehicle tub, the at least one rail having a flange arranged to extend, in use, towards the exterior surface of the vehicle tub; and
at least one bracket having a first portion secured to the flange to prevent movement of the first portion relative to the flange, and a second portion adapted to be affixed to an inner surface of the canopy shell;
wherein the second portion has one or more regions containing adhesive means configured to adhere the bracket to the canopy shell.
2. The assembly of claim 1, wherein the first portion has a groove adapted to receive the flange.
3. The assembly of claim 1 or 2, wherein the first portion is secured to the flange by one or more of an adhesive and mechanical fixing.
4. The assembly of any one of the preceding claims, wherein the second portion has two separate regions containing adhesive means.
5. The assembly of claim 4, wherein one of the regions contains a different adhesive means.
6. The assembly of claim 5, wherein the adhesive means are selected from: double-sided tape, adhesive tape, glue and epoxy resin.
7. The assembly of any one of claims 4 to 6, wherein each of the regions defines a channel, wherein the channel of one region contains double sided tape and the channel of the other region contains glue.
8. The assembly of any one of the preceding claims, wherein the second portion of the bracket is configured to be affixed to the inner surface of the canopy shell in a position spaced apart from the rim, so that the rim is suspended below the bracket.
9. The assembly of any one of the preceding claims, wherein the rail is configured to be directly connected to the side-wall by one or more of an adhesive and mechanical fixing.
10. The assembly of any one of claims 1 to 8, further comprising one or more intermediary components configured to connect the rail to the side-wall.
11. The assembly of claim 10, wherein the one or more intermediary components comprise a second rail, the second rail adapted to be connected to the side-wall.
12. The assembly of claim 11, wherein the rail is configured to connect to the second rail in a plurality of positions relative to the exterior surface of the vehicle tub.
13. The assembly of claim 12, further comprising a fastener for securing the rail to the second rail, and wherein the rail defines an array of first apertures dimensioned to receive the fastener, and the second rail defines a second aperture dimensioned to receive the fastener.
14. The assembly of claim 1, wherein the rail is connected to one or more clamp mechanisms, each clamp mechanism adapted to grip the rail and the tub.
15. The assembly of claim 14, wherein the rail defines one or more apertures, each aperture dimensioned to receive one of the one or more clamp mechanisms.
16. The assembly of any one of the preceding claims, further comprising a first seal affixed to the bracket and arranged to extend between the bracket and the exterior surface of the vehicle tub.
17. The assembly of any one of the preceding claims, further comprising a second seal adapted to be affixed to the inner surface of the canopy shell and extend between the inner surface of the canopy shell and the exterior surface of the vehicle tub.
18. The assembly of any one of the preceding claims, further comprising a third seal affixed to the rail and arranged to extend between the rail and the exterior surface of the vehicle tub.
19. The assembly of any one of the preceding claims, wherein the bracket has a wiring loom channel adapted to receive a cover, the channel defining a volume separated from the first and second portion.
20. The assembly of any one of the preceding claims, wherein each of the rail and bracket are extrusions.
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