Oy Wartsila Ab v. Ogden Industries Pty. Ltd.

[1983] APO 22

In the Matter of the Patents Act 1952

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In the Matter of Application No. 498983 for Letters Patent by OY WARTSILA AB

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In the Matter of an Opposition thereto by OGDEN INDUSTRIES PTY. LTD.

INTERIM DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        Application No. 498983 by Oy Wartsila AB is for a patent for an invention entitled CYLINDER LOCK.   The application was lodged on 1 October, 1976 and advertised as accepted in the Official Journal of 29 March, 1979.  A Notice of Opposition to the grant of a patent was lodged on 28 September, 1979 by Ogden Industries Pty. Ltd.
        The opposition was heard in Melbourne on 5 August, 1982 with Mr. K. Callinan, Patent Attorney, of Messrs. Callinan & Associates representing the applicant and Mr. T. Collins, Patent Attorney, of Messrs. Phillips, Ormonde & Fitzpatrick representing the opponent.
        The grounds of opposition according to the Notice are those available under paragraphs (c), (d), (e), (f), (g), (h) and (i) of sub‑section 59(1) of the Act.   Mr. Collins indicated at the hearing however that the opponent was only relying on the grounds specified in paragraphs (e), (f), (g), (h) and (i), that is, prior publication, obviousness, want of novelty and non‑compliance with section 40 of the Act.
        The evidence in support of the opposition consists of a single declaration and associated exhibits GD1 to GD13 by Mr. G.F. Dunphy who is the Chief Design Engineer of the opponent company and who qualifies himself as

having had 35 years experience in the lock industry.   The applicant's evidence in answer consists of a single declaration by Mr. J.P. Winch, who holds a degree in Mechanical Engineering and is a Registered Patent Attorney.   Mr. Winch does not qualify himself as having had any experience in the lock industry.  A second declaration by Mr. Dunphy and associated exhibits GD14 to GD21 has been lodged in reply.
        Although the applicant questioned the weight which could be given to Mr. Dunphy's evidence because of him being an employee of the opponent, I am satisfied that his evidence concerning the state of the lock industry in Australia and its terminology, is valid.   His statements are made under oath and there is no conflicting evidence from the applicant challenging his veracity.
        The invention relates to a cylinder lock mechanism and to a method of manufacturing a cylinder for such a lock mechanism.   Cylinder locks of the type with which the invention is concerned comprise a housing having a cylindrical bore which receives a turnable hollow cylinder or barrel.   A groove in the bore of the housing and a slot through the wall of the cylinder extend longitudinally and receive a longitudinally extending locking bar which is radially movable.   A number of discs, each having a notch cut into its periphery, are contained within the cylinder and are turnable with respect thereto by means of a key.   When the notches are out of alignment the peripheries of the discs hold the locking bar in a radially outward position where it is contained within the slot in the cylinder and seated in the groove in the bore to thereby prevent turning movement of the cylinder ‑ this is the locked position of the lock.   By use of a key the discs are turned in varying degrees to bring the notches into alignment, thereby enabling the locking bar to move radially inwardly into the channel thus formed to disengage from the groove in the housing bore thus releasing the cylinder and allowing it to turn ‑ this is the unlocked position.
        The specification describes that in such lock mechanisms, the discs are usually inserted into the hollow cylinder in the axial direction of the cylinder.   It continues (page 2 line 8):

"Between the locking discs, non‑turnable separate inter‑

mediate discs are placed, with the object of preventing the turning movement of one locking disc from being transmitted to an adjacent locking disc by friction.   However, the use of intermediate discs in the set of locking discs gives rise to considerable disadvantages.   The number of parts to be manufactured increases, the set of locking discs becomes somewhat elastic and the smallest possible diameter of the lock is at least partly dependent in particular on the intermediate discs.   Additionally, it is very difficult to assemble the mechanism by a mechanised process, since the locking discs as well as the intermediate discs have to be inserted into the cylinder."

The invention very simply resides in making the cylinder in the form of a rigid, unitary structure including a plurality of axially spaced apart partition walls between which respective locking discs are received.
        The following advantages are described for a lock mechanism according to the invention (page 3 line 9):

"... the partition walls determine the position of each lock‑

ing disc, and hence the manufacture of the key is simplified and the working reliability of the lock mechanism is improved.  Additionally, the cylinder is especially suitable for mechanised insertion of the locking discs, because each locking disc has its accurately determined position wherein it can be placed from the side of the cylinder.  Furthermore, due to the invention, the pick‑proofness of the lock mechanism is improved compared with hitherto known lock mechanisms of the kind referred to."

The specification continues (pages 3 and 3a):

"The insertion of each locking disc in its own separate moving space is known per se in cylinder lock mechanisms in which the locking discs move radially.   The working principle of these lock mechanisms, however, considerably deviates from the working principle of a rotary‑disc cylinder lock mechanism, and also the problems occurring in manufacture are different. In spite of the fact that disc cylinder lock mechanisms in which the locking discs are turned into the release‑position have been known for about 60 years, there has never been used before, in this type of of lock mechanism, a construction in which each locking disc has its own closely defined turning space in a cylinder of rigid, unitary construction.

In explanation of the above, the two types of cylinder lock mechanism mentioned differ as follows.   In the one in which the discs are said to move "radially", the discs may be pivotally connected to an axially extending shaft which is offset from the axis of the cylinder (movement of the disc of this type is not truly radial) or they may be confined to slide in a true radial direction and simple insertion of the key causes the discs to move to positions where the notches are aligned to form the channel into which the locking bar can move to release the cylinder for turning.   In the other type of cylinder lock mechanism (which, according to both parties, is known as an Abloy lock) the discs are rotatable about the axis of the cylinder and simple insertion of the key does not align the notches on the discs.   Alignment of the notches is achieved by turning the key, the bittings of which interact with the discs to turn each of them by a different amount.   Clearly, from the last quoted passage of the specification, the invention is intended to relate to cylinder lock mechanisms of the second type.
        The specification continues by describing various preferred dimensions and shapes for the cylinder and the spaces into which the discs are to be inserted to provide adequate support for the discs whilst retaining favourable manufacturing practices.   The preferred structure is to have the circum‑
ferential portion of the cylinder cut away at the positions of the locking discs from approximately one half of the cylinder with the slot in the wall of the cylinder being substantially in the middle of the uncut part, that is, diametrically opposite the cut away part of the cylinder.   This is said to give the best possible solution having regard to the structural strength of the lock mechanism.
        The invention also relates to a method of manufacturing the cylinder which is described as follows (page 5 line 4):

... there is provided a method of manufacturing the cylinder of a lock mechanism in accordance with the invention, wherein portions of the wall of a hollow cylinder are first cut away along one side of the cylinder, preferably by a milling process, at least substantially to a central plane of the cylinder, leaving portions between the positions of the lock‑

ing discs uncut, and wherein internal grooves for the locking discs are then turned in the wall of the cylinder.   With this method efficient swarf removal is ensured during the machining operations, which leads to high quality of the finished mechanism.   It is of advantage to make the openings cut from the cylinder wall so much broader, in the axial direction of the cylinder, than the internal grooves which are turned out for the locking discs, so that reasonable manufacturing tolerances may be used.   A suitable difference in breadth is, for instance, 0.1mm.   For turning the internal grooves and for forming the cut away portions in the cylinder wall, it is of advantage to use a multi‑cutter, by means of which all areas which are to be machined are milled or turned simultaneously.   In the manufacture of the lock mechanism, the aim should be to obtain such tolerances that the positions of the locking discs are determined in an axial direction of the lock mechanism with an accuracy of +_- 0.1mm and the thickness of the locking discs is determined with an accuracy of +_- 0.03mm.

Other advantageous methods of manufacturing the lock mechanism are to make the cylinder either of plastics material, for example by an extrusion process, or of zinc by means of die casting.   In these cases cutting is not necessary."

The specification ends with 14 claims of which claims 1 and 6 are independent.   Claim 1 reads:

"A cylinder lock mechanism including : a housing provided with a cylindrical opening having a groove in its wall; a hollow cylinder turnable in the opening and containing a plurality of locking discs turnable within the cylinder by means of a key, the cylinder being in the form of a rigid, unitary structure including a plurality of axially spaced‑apart partition walls between which respective locking discs are turnably received; and a locking bar movable in a slot provided in the wall of said cylinder between a cylinder‑locking position in which it is also engaged in said groove and a cylinder‑releasing position in which the locking bar is disengaged from said groove and is received in a channel formed by the alignment of notches in the peripheral edges of the locking discs."

Claim 6 reads:

"A method of manufacturing the cylinder of a lock mechanism according to any one of the preceding claims, wherein portions of the wall of a hollow cylinder are first cut away along one side of the cylinder at least substantially to a central plane of the cylinder, leaving portions between the locking disc positions uncut, and wherein internal grooves for the locking discs are then turned in the wall of the cylinder."

I will set out the remaining appended claims later in this decision when necessary.
        Considering firstly claim 1: in the context of the specification as a whole and considering the functional requirements of cylinder lock mechanisms, it is possible to arrive at a meaningful construction for the claim even though it is not perhaps as clearly expressed as it might have been.   Thus, for example, the term "opening", from the construction of known lock systems together with the embodiment described, defines a bore within the housing in which the cylinder is received.   Of contention between the parties, is the wording:

"locking discs turnable within the cylinder by means of a key."

In relation to the term "discs", the evidence (paragraph 19 of second Dunphy declaration) is that this is a general term which is used in the art to describe the plate‑like elements to which it relates, it does not necessarily confine the elements to being circular.   Various peripheral configurations are possible and are dependent on whether the "disc" moves in a linear path (radially), whether it is pivotted, or whether it rotates about its centre.  The general nature of the term as used in the art is also indicated in the specification at page 3 lines 20‑22 where the term is used in relation to an element which moves radially.
        The word "turnable" has a very broad scope, it simply means "able to move in a curved path" (Webster's Third New International Dictionary ‑ 1976), there being no restriction on the position of the axis about which the movement may occur.   Thus a body which is rotatable about an axis through its centre is one example of a "turnable" body, similarly a body which is pivotable about an axis offset from its centre is also turnable and claim 1 encompasses both possibilities.   As indicated above it is apparent that the invention is intended to relate to locks having discs which rotate about an axis through their centres, however the invention as claimed in claim 1 is not so confined.
        Finally, the definition in question places no restriction on the mode of movement of the key which causes the locking discs to turn within the cylinder.   The evidence shows the existence of prior art constructions where simple axial insertion of a key causes the locking discs to turn, that is, to pivot about an axis offset from their centres (e.g. exhibit GD5 which is GB patent specification No. 641,072) ‑ claim 1 does not exclude this mode of operation.   It also includes the situation shown in the embodiment where the key must itself be turned in order to turn the locking discs.
        Mr. Collins for the opponent argued that claim 1 is not fairly based; firstly because it is not confined to a construction wherein sideways insertion of the discs into the cylinder, in contrast to their axial insertion, is necessitated (such sideways insertion being he said an "inherent" object of the invention and indicated by the description at page 3 lines 9 to 19) and secondly because claim 1 places no restriction on the size of the space in the cylinder in which each locking disc turns whereas according to the description, each locking disc is to have its own "closely defined turning space" (page 3a line 3) with it being "essential that the locking discs are supported axially mainly all around their edge portion" (page 3a line 13), additionally it is stated that each locking disc has "its accurately determined position" (page 3 line 15).   Mr. Collins supported his argument by reference to claims 2 and 13 (which add features to the construction to enable the objects to be met) and their effect on claim 1.
        I agree that claim 1 does not comply with section 40.   As is noted above the invention as described is confined to a lock construction of the type shown in the embodiment whereas claim 1 includes within its scope other types of locks and furthermore as was argued by Mr. Collins, the features of the space for, and the support of, each disc in the cylinder are not defined.   I do not agree however that the sideways insertion of the discs into the cylinder requires explicit definition in the claim because the description does not present such a method of assembly as an essential feature and in any event it is implicitly required by the cylinder's construction.
        Mr. Callinan, for the applicant, agreed that claim 1 does not comply with section 40.
        Claims 2 to 5 are appended either directly or indirectly to claim 1 and apart from the faults which claim 1 imports, they are I consider of sufficient clarity such as to comply with section 40.   They may however require amendment as a consequence of any amendment of claim 1.   Claim 6, which is set out above, does not comply with section 40 insofar as the features of the cylinder which it defines and which according to the appendancy are purportedly in any one of the preceding claims, are not in fact to be found in each one of the former claims as is shown, for example, by a comparison between claim 1 and claim 6.   There is thus a lack of clarity because the subject of the claim and the features which it defines do not definitely relate to the same invention.   The remaining claims, apart from omnibus claims 12, 13 and 14 are all method claims which are appended either directly or indirectly to claim 6 or claim 1 and similarly to claims 2 to 5, they comply with section 40.
        In support of the grounds of prior publication and want of novelty, the opponent relies upon the GB patent specifications 641072 (exhibit GD5), 712483 and 712484 (exhibit GD6/7) and an Ingersoll padlock (exhibit GD2).   The GB specifications are shown to have been available in Australia before the priority date of the claims and in respect of the Ingersoll padlock, Mr. Dunphy declares that his company purchased it from another Australian company well before the priority date of the claims.  Although Mr. Callinan questioned the adequacy of the opponent's evidence concerning the purchase, he did not produce any contradictory evidence, consequently I accept Mr. Dunphy's statements as being sufficient evidence of publication of the exhibited lock in Australia before the priority date.
        A comparison between claim 1 and GB specification 641072 reveals that all the features as claimed or their equivalent are disclosed and that the disclosed lock functions in accordance with the definition in claim 1.   Thus the housing provided with a cylindrical opening having a groove in its wall is disclosed by a cylinder 1 of tubular construction having a recess 19 in its inner surface; the rigid unitary structured turnable hollow cylinder with a plurality of spaced apart partition walls is disclosed by an integrally constructed circular section plug 3 divided into a series of longitudinally spaced compartments by spacing members 13; the equivalent to the locking bar is termed a talon and as disclosed it may take various forms, one of which is a single sliding member (Fig 10).   There is no description of a slot within which the talon or "locking bar" is movable, but it must plainly exist in order for the lock to function and furthermore Fig 2 illustrates a space or slot through which a pivoted talon moves.   In the disclosed lock the plug contains a plurality of pivoted levers 9 (one in each compartment) carried by a common shaft 12 about which the levers have limited pivotal movement, the shaft being parallel to but offset from the longitudinal axis of the plug.   Insertion of a correct key (serrated on both its upper and lower edges) results in individual upward and downward pivotal movement of the levers to align a series of slots 17 in the peripheral edges of the levers into which the talon can move.  Thus, in accordance with claim 1, the levers are turnable (i.e. pivotable) within the cylinder (i.e. plug) by means of a key and the cylinder (plug)‑locking and cylinder (plug)‑releasing positions are the same as is defined in claim 1.  Indeed the disclosed lock is the same as the definition according to claim 1 with the single exception that locking "levers" are disclosed whereas locking "discs" are claimed.   However as stated previously, the opponent's evidence (paragraph 19 of the second Dunphy declaration) is that the term "discs" is a term of general application and that people in the Australian lock industry would commonly use the term to describe the levers of GB specification 641072.  Furthermore the term "discs" is in fact used in GB specification 641072 in a general description of plug and cylinder lock mechanisms of the type to which the disclosure relates.   It follows that the invention as defined by claim 1 is published by GB specification 641072.
        Claim 2 reads:

"The lock mechanism according to claim 1 wherein the outer dimension of the partition walls of the cylinder at least substantially corresponds to the outer dimension of the cylinder."

Figs 1 and 2 of GB 641072 illustrate the partitions (spacing members 13) as being of equal diameter to the cylinder (plug 3), consequently claim 2 is also published.
        Claim 3 reads:

"The lock mechanism according to claim 1 or claim 2, wherein a circumferential portion of the cylinder has been removed at the positions of the locking device from approximately one half of the cylinder."

This claim is evidently an attempt to define a feature which will enable sideways insertion of the discs during manufacture which is a feature already considered with respect to section 40.   However I consider that claim 3 as presently drafted is not novel because although GB 641072 does not specifically disclose how much of the circumferential portion of the plug is removed at the positions of the locking levers, it does disclose that the material of the body is removed where necessary and it can be seen from Fig 2 (an isometric view) that at least one third of the circumferential portion of the plug is removed and that assembly of the levers would be by sideways insertion through the resultant gaps.   That is, the material is removed to serve the same purpose as is claimed.
        Claim 4 reads:

"The lock mechanism according to claim 3, wherein said slot in the wall of the cylider is provided in the part of the cylinder from which said circumferential portions have not been removed."

This claim is also not novel insofar as the space or slot through which the talon moves in GB 641072 is shown, in Fig 2, as being opposite to that portion of the plug from where the material is removed to allow insertion of the levers.
        Claim 5 reads:

"The lock mechanism according to any one of the preceding   claims, wherein the turnable locking discs are provided with means for limiting turning of the locking discs to approximately 90`."

There is no disclosure of this feature in GB 641072.
        Claim 6 is set out above.   Mr. Collins argued that it was simply a matter or ordinary technology to find a suitable way of creating the cut away portions and slots and that under no circumstances could claim 6 be said to be novel for the reasons expressed in Riekmann v. Thierry (14 RPC 105). The passage relied upon in Riekmann v. Thierry is from the judgement of Lord Davey at page 121. It reads:

"It is not enough that the purpose is new or that there is novelty in the application, so that the article produced is in that sense new, but there must be some novelty in the mode of application.   By that I understand, that in adapting the old contrivance to the new purpose, there must be difficulties to be overcome, requiring what is called invention, or there must be some ingenuity in the mode of making the adaptation."

The principle from the Riekmann v. Thierry judgement however is not applicable in the instant case because the facts differ.   Thus whilst the manner of manufacture per se may be a matter of ordinary technology, if the claimed steps of the manufacture inevitably result in the production of a novel article then the claim as a whole will be novel.   In the Riekmann v. Thierry judgement, the article which was claimed was held to be not novel and no claim was made for any method of manufacture.
        Consequently should claim 6 be amended to overcome its section 40 defects which are mentioned above, I am satisfied that it would be novel insofar as the method will result in the production of a part of the lock mechanism which in itself, is novel with respect to the prior art.   The feature in claim 6 as it presently stands wherein internal grooves are turned in the wall of the cylinder is not disclosed in GB 641072.
        The same considerations apply with respect to claims 7 to 11 and 14 which also define methods of manufacturing the cylinder of a lock mechanism according to the invention.   I would add that claims 9, 10 and 11 as presently drafted are not novel because they simply specify the material from which the cylinder of claims 1 to 5 can be formed and the process to manufacture it.  The cylinder per se is not novel, being disclosed in GB 641072 and its manufacture out of the claimed "plastics material" and by an "extrusion process" or from "zinc by means of die casting", all of which are commonly known, does not confer novelty.
        Claims 12 and 13 are omnibus claims and are novel with respect to GB 641072 as the embodiment of the invention described in the specification is a lock having discs rotatable about a central axis which differs from the disclosed construction where levers (discs) pivot about an offset axis.
        The Ingersoll padlock (exhibit GD2) is clearly an example of a lock constructed in accordance with GB specification 641072.   I do not consider that it is necessary to detail the construction of the lock because an inspection of it reveals that it has all those features disclosed in GB 641072 which are mentioned above, consequently this lock is also an anticipation of claims 1 to 4.   I add that the cylinder of the Ingersoll padlock clearly shows where the circumferential half portions of the cylinder have been removed to enable insertion of the discs and that the slot for the locking bar is cut from the remaining half of the cylinder, that is in the portion in which the circumferential portions have not been removed as is claimed in claims 3 and 4.
        The remaining cited specification, GB 712484, discloses inter alia, cylinder lock constructions similar to those in GB 641072 and 712483; it does not however specifically disclose a cylinder (i.e. plug) in the form of a rigid unitary structure.   Mr. Collins submitted that Figs 3 and 4 show a plug with integral partition walls, however in my opinion insufficient information is conveyed by the figures to draw this conclusion, consequently GB 712484 does not prior publish nor render not novel any of the claims in question.
        The non‑compliance with section 40, prior publication and want of novelty objections which apply to the claims as they presently stand may be overcome by amendment.   For instance claim 1 could be amended to limit the invention to a rotary‑disc cylinder type of lock in accordance with what is described.   Indeed Mr. Callinan for the applicant agreed at the hearing that in order for the claims to be fairly based on the matter described in the specification, they should be so limited.   Thus in order to determine whether any patentable subject matter is disclosed, and consequently whether any amendment of the claims is possible, I will consider the remaining issue of obviousness in relation to what the specification states the invention to be.
        In the words of the specification, the invention resides in utilising:

"a cylinder ... in the form of a rigid unitary structure including a plurality of axially spaced apart partition walls"

to contain the locking discs in a particular type of lock known as an Abloy lock.   The specification states that:

"the insertion of each locking disc in its own separate moving space is known per se in cylinder lock mechanisms in which the locking discs move radially"

and I will proceed on the assumption that this acknowledgement of what is known includes locks of the type of which the Ingersoll lock (exhibit GD2) and GB specification 641072 are examples and that it therefore encompasses the integrally structured, partitioned cylinders therein disclosed.   Thus, the invention resides in taking a lock cylinder of known construction and placing it in a known lock.
        Mr. Collins for the opponent submitted that in adapting the known cylinder to the known lock, the inventor did not have to overcome any problem.  He continued that the problems in the Abloy lock and solved by using the rigid unitary cylinder were the same problems solved by the same means in the other forms of locks such as the Ingersoll lock.   The resultant combination of known integers, he submitted, did not produce any new result, indeed the result he said was eminently predictable.   His argument culminated with the submission that what was done, was something which would naturally suggest itself to an addressee faced with the same problem; that is, it was a matter of mere routine and was thus obvious.   A number of decisions were relied upon in support of the argument.
        The validity of Mr. Collins' argument however depends upon it being established that the Ingersoll type of lock with the unitary structured cylinder, and the Abloy type of lock of the invention, were part of the common general knowledge in the art in Australia at the priority date (Minnesota Mining and Manufacturing Co. v. Beiersdorf (Australia) Ltd. 144 CLR 253).
        The opponent's evidence is sufficient to establish that the Abloy type of lock was part of the relevant common general knowledge (paragraph 6 of Mr. Dunphy's second declaration).   However the evidence, and Mr. Collins' argument in respect of the Ingersoll type of lock, whilst indicative that the lock type may have been part of the relevant common general knowledge, is not conclusive of the matter.   Consequently, on the basis of the evidence as it stands at present, the obviousness objection must fail.   However because the applicant admits that the Ingersoll type of lock is well known (paragraph 5 of Mr. Winch's declaration) and because of the admission of similar effect in the specification in suit, I will continue and consider the substantive issue on the assumption that the Ingersoll type of lock was part of the common general knowledge.   [I note that the admission of what is known in the specification cannot be regarded as common general knowledge in Australia in the absence of evidence to the contrary, because the application is a Convention application based on an application made in Finland ‑ see Justice Aickin's comments in Wellcome Foundation v. V.R. Laboratories 34 ALR 213 at p.216 lines 32 to 42.]
        Mr. Collins' argument that an inventive step is lacking because the known unitary structured partitioned cylinder solves the same problems in the Abloy lock as it does in the Ingersoll lock and that in adapting the cylinder to the Abloy lock the inventor did not have any problems to overcome does not allow for the posibility that the requisite inventive step may reside in the "idea" of using the known cylinder in the known lock.   Albeit, once conceived, it may be obvious to apply the idea, but obviousness in application alone is not an exclusive test of the presence or absence, of an inventive step (for example see Listers Patent [1966] RPC 30 at pages 36 and 37). The requisite inventive step may reside in a conception or idea (Hickton's Patent Syndicate v. Patents and Machine Improvements Co. Ld. 26 RPC 339 at 347). In the present case use of the known Ingersoll lock cylinder in the known Abloy lock results in a much simpler lock construction than is disclosed in any of the prior art put in evidence. For instance the Ingersoll lock requires a pivot shaft and a complicated spring biassing arrangement for the levers whereas in the Abloy lock of the invention, these extra components may be eliminated. There are further claims by the applicant that the invention provides advantages in respect of ease of manufacture, assembly and improved security. Given these circumstances I am not prepared to hold that the application of the known cylinder to the known lock does not involve an inventive step. Consequently, even were the material upon which the obviousness allegation is based common general knowledge, I would not uphold the objection that the invention is obvious.
        In summary, I am of the opinion that the claims do not meet the requirements of section 40 and that prior publication and want of novelty objections apply, but that the deficiencies within the claims are rectifiable. I therefore allow the applicant an opportunity to seek leave to amend the specification within 60 days of this interim decision.   At this stage I reserve the question of costs.

(G.D. CARMICHAEL)