Oy Wartsila Ab v. Ogden Industries Pty. Ltd.

[1983] APO 20

In the Matter of the Patents Act 1952

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In the Matter of Application No. 506925 for Letters Patent by OY WARTSILA AB

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

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Application No. 506925 by Oy Wartsila AB is for a patent for an invention entitled KEY PROFILE SYSTEM.   The application was lodged on 22 September, 1977 and advertised as accepted in the Official Journal of 31 January, 1980.   A Notice of Opposition to the grant of a patent was lodged on 29 July, 1980 by Ogden Industries Pty. Ltd.
         The opposition was heard in Melbourne on 5 and 6 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) to (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) to (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 GFD1 to GFD17 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 GFD18 to GFD21 has been lodged in reply.
         The applicant questioned the weight which could be given to Mr. Dunphy's evidence because of him being an employee of the opponent company, an inventor in his own right (and thus not an "ordinary" man skilled in the art) and because many of his statements of the state of the art in Australia at the priority date of the claims are not supported by documentary evidence.   I agree with Mr. Collins' submission however that Mr. Dunphy's statements of what was common general knowledge in the art at the relevant time must be accepted. They are statements made under oath by an acknowledged expert and there is no conflicting evidence or indeed submissions from the applicant which challenge the veracity of Mr. Dunphy's evidence of the state of the art.
         The specification describes a lock system wherein master‑keying is achieved by varying the key profiles instead of only the individualizing key combination cuts, that is, the "bittings".   The expression "key profile" and the type of lock to which the invention relates are defined in the specific‑
ation as follows (page 1a lines 8 to 14):

"In this specification and in the claims, the expression "key profile" means the cross‑sectional configuration of the blade of a key blank before any individualizing key combination cuts have been made therein.   The expression "disc cylinder lock" means a cylinder lock with turnable locking discs which are turned by turning the key from an initial key insertion position to a position releasing the lock mechanism."

An example of the type of lock of the system of the invention is that known as an "Abloy" lock.   Abloy locks 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 longitud‑ inally 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.   In such locks, the shape of the central opening in the discs determines which key profiles are insertable into which locks.
         The invention is defined in claim 1, the only independent claim apart from omnibus claims 9, 10 and 11, as follows:

"A locking system including a plurality of disc cylinder locks provided with turnable locking discs and several keys having different key profiles, said key profiles being of a form includable within the border line of a basic key blank profile and having at least one key profile adapted to fit functionally into a lock adapted to receive keys of another profile, said key profile being defined by a form of a key receiving opening in said turnable locking disc and having common elements of said cylinder locks respectively similar to each other."

It is manifest that section 40 objections apply to all of the claims and this was agreed by Mr. Callinan for the applicant at the hearing.   Thus for example, in claim 1 the definition:

"said key profile being defined by a form of a key receiving opening in said turnable locking disc",

creates ambiguity in that, according to the description, the keyway opening in the disc does not have to have the same "profile" as the key blade that goes into it.   This is shown for instance in the embodiment of Fig. 9 wherein key profile E fits into seven differently shaped keyway openings.   Also what is meant by the term "common elements" is not clear.
         Notwithstanding the section 40 issues the invention can be seen to be a locking system involving locks of a particular type (for example, the Abloy type) and a number of keys with differing key profiles.   Which locks will receive which keys is determined by the shape of the key receiving opening in at least the front disc of each lock, and the system includes at least one key, the profile of which will fit into at least two differently shaped key receiving openings.   That is, the key for one lock will also operate another different lock.   In other words, the invention is a master‑keyed locking system wherein the master keying is based on "profiling" the keys and the corresponding shapes of the key receiving openings.   All of the key profiles are includable within the borderline of a "basic key blank profile", two examples of which are a D shaped cross section (see for example Fig 2) or a rectangle (Fig. 10).   A key with a basic blank profile however need not exist in the lock system, that is, the basic key blank profile is simply a datum from which all of the key profiles in the system are determined.
         As submitted by the applicant and as indicated in the specification, by using "profiling" plus the individualizing cuts (bittings), a master keyed locking system of far greater numbers and far greater flexibility than known systems can be created.   This is illustrated in the specification for example in Figure 9 wherein a system involving 11 key profiles labelled A (the basic key blank profile) to K and 11 corresponding key way opening shapes labelled a to k is illustrated.   Key profile A will only fit opening a, but key profiles B, C, D, F, G, H, I will fit into their corresponding openings b, c, d, f, g h and i, plus the opening a.   Furtherfore profile E will fit into opening e plus openings a, b, c, d, f, g and j, but not openings h, i and k.   Key profile J will fit into its opening j plus openings a, b and f but not into any of the others and key profile K will only fit into its opening k plus the openings a, b, c and f.   Clearly, a master keyed locking system involving "profiling" does enable great flexibility in the determination of which keys will operate which locks.
         A development of the invention is described at page 3 as follows:

"The profile system according to the invention can in a very simple way be further developed so that in the same key there are at least two different profiles arranged axially one after the other of which the profile of the front end of the key, that is the end which first is inserted into the lock, can be included within the border line of a profile closer to the opposite end of the key.   This system allows for the building‑up of a large profile system.   No complicated changes in the lock are necessary when two different profiles are used in the same key, the only necessary step is that two or several different key opening forms are used in the locking discs of the same lock so that restricting elements corresponding to the key profiles are formed in the keyway of the lock."

Claim 1 is set out earlier in this decision.   Claims 2 and 3 read:

2.The locking system as claimed in claim 1, including a profile series within said basic key profile whereby each profile functionally fits into a lock made for said basic profile having at least one key profile being dimensionally excluded from use in a lock made for another key profile.

3.The locking system as claimed in claim 1, including at least two key profile series, whereby a profile of at least one of said series being dimensionally excluded for use in locks made for key profiles of another of said key profile series.

Both claims are not clear because, inter alia, no definite meaning is attributable to the term "series" in the context of the defined locking system. However it can be seen that both claims add a feature whereby some key profiles will fit into some locks but not into others of the system.
         Claim 4 reads:

4.The locking system as claimed in any one of the preceding claims, including a general key profile fitting into at least a major part of locks made for different key profiles of said key profiles.

This claim is also not clear in that what is defined by the terminology "general key profile" and "a major part of locks" is not clear.   If the claim is defining that there is one key profile which will fit into most locks in the system, then any difference in scope between it and claim 2 or claim 3 is not apparent.
         Claim 5 reads:

5.The locking system as claimed in any one of the preceding claims, including several key profile series, each of said series having at least one key profile adapted to fit into locks formed of at least some of said key profiles of another of said key profile series.

Similarly to claims 2, 3 and 4, this claim is also not clear.
         The remaining claims are as follows:

"6. The locking system as claimed in any one of the preceding claims, including keys having at least two different profiles arranged axially at the blade of said key, one after the other, whereby, of said profiles being closer to an end of said key which being first inserted into said lock, being adapted to fall within a border line of any profile more remote from said end of said key.

7.A lock as claimed in claim 1, each of said locking discs of said lock being provided with at least two different key opening forms, one of said forms corresponding to a key profile smaller than a basic profile of key blanks used in said system.

8.A key blank as claimed in claim 1, including a key blade portion defined by different cross‑sectional profiles at different parts of said key blade portion.

9.A locking system, substantially as described herein with reference to the accompanying drawings.

10. A lock, substantially as described herein with reference to the accompanying drawings.

11. A key blank, substantially as described herein with reference to the accompanying drawings.

Claims 7 and 8 are not clear because the subject of each differs from that of claim 1 to which both are appended.   Thus it is not clear whether claim 7 for instance defines a lock per se having the features of a lock of the system of claim 1, or whether it defines a lock when in the system of claim 1. The scope of claim 8 is similarly ambiguous.   The omnibus claims 10 and 11 define respectively "a lock" and a "key blank", neither of which is a "locking system" as per the invention which is described.   The subject of claim 10 is simply a lock of the Abloy type and the subject of claim 11 is simply a key blank which may have the basic D or rectangular shaped cross‑sectional profile.
         Considering the ground of opposition that the invention as claimed is obvious and does not involve an inventive step, the opponent's submission is that at the priority date, master keying based on profiling, the same as in the present application, was common general knowledge in the industry in relation to lock systems of the disc and pin tumbler type.  Furthermore the type of lock of the invention (of which the Abloy lock is an example) to which the known master‑keying technique is applied, was also common general knowledge and application of the known master‑keying technique to the known type of lock is not inventive.
         The evidence establishes that the master‑keying of cylinder locks by profiling was part of the relevant common general knowledge.   Thus the opponent's exhibit GFD14, that is, Australian patent specification No. 258614 which was published on 7 November, 1963, discloses a master keyed locking system based on profiling in relation to locks of the pin tumbler type.   Mr. Dunphy declares in paragraph 16 of his first declaration and paragraph 20 of his second declaration that the disclosed system was widely used throughout Australia and well known in the Australian lock industry with several hundred thousand locks according to the system having been sold before the priority date.
         The disclosure of specification 258614 is as follows (first paragraph):

"This invention relates to an improved locking unit which includes a pin tumbler lock of the kind having a keyway which has what is termed a paracentric shape and is profiled so that only keys having a substantially complementary paracentric shape and profile can be inserted therein, and a series of pin tumbler locking elements which assume positions such that the lock may be actuated upon insertion of a correctly cut key.   Locking units of this type are particularly suitable for use in master keying systems."

After describing the paracentric shape and the application of a master‑keyed locking system in a multi‑storey hotel, the specification continues (page 3, second paragraph):

With the increasing size of modern buildings it has been found that there are sometimes more rooms than combinations available with any one system of locks.   In order to overcome this deficiency some lock manufacturers have provided each installation of locks with a variety of key and keyway profiles thereby enabling the same combination to be used in locks of different profiles within the one system."

The prior profiling technique, which is stated to be "commonly accepted" (page 4 line 1), is then described as are its disadvantages and the specification goes on to state that the invention involves effecting all profile changes below a certain line in the height of the key and keyway.   Mr. Callinan for the applicant attempted to distinguish the disclosure of 258614 on the basis that the profile changes are thereby restricted.   Be that as it may, it is not a matter which in any way diminishes the disclosure of a master‑keyed locking system based on profiling.
         Specification 258614 illustrates and describes four key profiles, Fig. 1 being a paracentric profiled key blank (which is equivalent to the "basic key blank profile" of the invention in question) from which the other key profiles are derived.   Fig. 2 shows a profile "AB", Fig. 3 shows a profile "AC" and Fig. 4 shows a profile "ABCDEF", each profile being derived from the Fig. 1 profile.   At page 7 the specification states:

"Each individual profile change has a definite shape and relative position on the key or keyway and can therefore be given a designation such as A, B, C, D, etc.   Thus a lock may be specified as having an A profile, FD profile, or any one of a number of combinations.   It will be clear that the key illustrated in Fig. 4 will enter every keyway having any one or more of the profiles A to F."

It is equally clear that an AB profiled key for example will not enter a lock keyway of say AD profile.   Fig. 5 of the specification illustrates one form of a master keyed locking installation in a multi‑storey hotel.   The description relevant thereto reads (from page 8):

"The locks on each storey or floor may be alloted a particular profile, for example, floor one ‑ A B profile, floor two ‑ AC profile etc., but each lock having the same profile has a different combination or arrangement of pin tumbler locking elements.   However, because of the efficient method of profiling, the keys are only able to enter keyways of their own particular profile, and the same element combinations can therefore be satisfactorily employed in different profile groups.

A grand master key 24 can be made which will open every lock on any one floor, that is, its profile will be that of the group for that particular floor and it will be cut to operate any element combination in that group.   Also, a great grand master key 26 can be provided which will open every lock in the building, that is, it includes every profile change, and is cut to operate every combination, in the system.   The installation shown in Figure 5 also includes master keys 31 which will only operate a section of the locks in any one group.   For example, key AB.MK1 will only open locks AB1 and AB2.

Furthermore, grand master keys 27 may be provided for any combined group of locks having two or more different profiles, for example, any lock having one or more of the profiles A to C and having a pin tumbler combination 1 or 2, can be opened by the key ABC5 shown in Figure 5.

Each master key so far described is adapted to operate a plurality of locks having different combinations and the same or different profile.   However, the present invention also enables master keying of a group of locks all having different profiles but the same combination.   For example, the key shown in Figure 4 has an ABCDEF profile and may be cut to operate combination 1.   Thus, it can be employed to open every lock which has one or more of profiles A to F and has a pin tumbler arrangement equivalent to combination 1.  The key 32 shown in Figure 5 are of this type; key ABC1 can operate every lock on floor 1 to 2 having pin tumbler combin‑

ation 1.

The specification furthermore states (pages 9 and 10):

"It will be apparent from the foregoing description that the present invention provides a unique method of master keying which enables an installation of locks to be effectively divided into groups according to profile, pin tumbler arrangement, or a combination thereof.   That is, a master key may be provided for a group of locks having different profiles but the same pin tumbler arrangement, or a group having the same profile and different pin tumbler arrangements.

Also, because of the particular method of profiling, the present invention enables a far greater number of locks to be provided in any one installation."

In my opinion the master keying technique disclosed in specification No. 258614 is in substance the same as that of the specification in suit.
         Insofar as the invention involves the application of the disclosed and commonly known technique to a different form of lock, the evidence establishes and it is conceded by the applicant that the locks to which the technique is applied (e.g. Abloy locks) were also part of the relevant common general knowledge and thus, as was put by the opponent, the issue reduces to whether the application of the known profiling technique to the known locks was obvious.

         The two types of lock differ in that in pin tumbler locks, simple insertion of the key positions or aligns the locking elements, that is the "tumblers" to the cylinder (barrel) release position and the keyway is defined by the shape of the key opening in the turnable cylinder whereas in locks of the type defined for the invention (which, for convenience I will refer to as an Abloy type of lock) the locking elements, that is the "discs" are turned by turning the key from an initial key insertion position, to their cylinder release positions and the keyway is defined by the shape of the central openings in the discs.   However the difference in the mode of operation of the locks does not affect the profiling system, that is, the profiling system simply determines which keys may enter which keyways and it has nothing to do with the turnable nature of the discs or the movement of the pin tumblers, both of which are determined by the individualizing key combination cuts (or bittings) in a key.
         There is nothing in the specification or the evidence to show that any problems were overcome by the combination of the two known things and although Mr. Winch for the applicant declares as follows (paragraph 5):

"Insofar as the locking system of the opposed application is concerned, it is asserted that the differences which exist in the mode of operation of the lock mechanisms as compared with those referred to in the Dunphy Declaration give rise to problems, necessitating different solutions, as regards large master‑keyed systems.   It is to the overcoming of such problems that the invention the subject of the opposed applic‑

ation is directed and/or lends itself.

‑ he does not continue with any exposition of what the problems are.
         Insofar as the combination of the known profiling technique and the known Abloy type of lock may provide any advantages, Mr. Winch declares as follows (paragraph 9):

"In accordance with the system the subject of the opposed application the locking discs included in the or each "disc cylinder lock" are in themselves employed as key profile determining members.   As such, and in contrast to the prior art systems, there will be no need to have a profiled key‑way specifically machined in the rotatable inner cylinder of the locks themselves.   The system in accordance with the opposed application therefore can be seen to make it possible to utilize a standard form for all parts of the cylinder locks other than the discs themselves.   As such, only one type of cylinder casing and cylinder will be employed effectively irrespective of key profile.   The system of the opposed application can therefore be seen to provide or allow for what may be termed selective mastering."

And Mr. Callinan for the applicant, made the following submission:

"None of the prior art shows a system where a locking disc is used to define a key profile.   This is very important because to change the key profile in the prior art the barrel must be changed whereas in the invention you need change only one locking disc.   Clearly this provides a great advantage in cost, time and convenience."

The opponent however submitted that the alleged advantage is of no significance in that the formation of a keyway is still required whether it be in a cylinder (i.e. barrel) or a disc, and the possibility for standardization of parts with the invention is equally possible for the lock system disclosed in specification 258614 (second Dunphy declaration, paragraphs 21 and 22).   Mr. Collins' furthermore argued that Mr. Callinan's submission that the changing of a single disc in a lock of the system in question would provide a great advantage in cost, time and convenience over the changing of a barrel is an assumption which is not supported by any evidence, and that from a consider‑
ation of the Abloy lock construction shown in the specification, the changing of a single disc would still require the removal of the cylinder or barrel as in the prior system.
         I agree with the opponent's submission.   The application of the known master keying technique based on profiling to the known Abloy type of locks does not in my opinion provide any significant advantage.
         A further consideration in the matter is what Mr. Dunphy declares to be a traditional practice in the art.   Thus in his second declaration he states (paragraph 12):

"Because of the constant need to design and produce new locking devices to frustrate attempts to overcome the locking action of cylinder locks by manipulation, lock designers throughout the world are continually searching for products which can be used separately or combined with known devices to produce a more secure cylinder lock."

He then gives a number of examples of the practice.   In paragraph 20 he states:

"... I again point out that lock manufacturers traditionally look at all forms of locks when considering improving particular forms of locks.   It is a matter of adapting concepts to the general principles which are common to various forms of locks.   Pin tumbler cylinder locks and disc tumbler cylinder locks are locks of the same general family so it is logical to consider how the master‑keying of one can be applied to the other."

Thus, the combination of the commonly known master‑keying technique based on profiling and the commonly known Abloy type of lock is not shown to have either solved or required the overcoming of any problem or to have provided any significant advantage over the prior art, furthermore the uncontested evidence is that lock manufacturers traditionally seek to adapt concepts from one lock to another, consequently in my opinion the combination of the two commonly known things would be a matter of mere routine to a non‑inventive skilled worker in the art and the invention is thus obvious and does not involve an inventive step.
         The only feature of the invention which is not disclosed by the evidence which is considered above, is that of providing the key with two profiles arranged axially one after the other with a corresponding keyway structure being provided in the lock.   The appended claims 6 and 8 for example, relate to this feature.   However there is further evidence from Mr. Dunphy that this is an old technique (first declaration paragraph 21) which is supported by exhibits GFD16 and 17.   In my opinion the inclusion of this feature also does not involve an inventive step and consequently the invention as claimed in all claims is obvious.   Insofar as claims 7 and 10 define a lock per se, they are obvious (and published) by the commonly known Abloy lock.  Similarly claims 8 and 11 are obvious (and published) because the key blank of either claim is also part of the common general knowledge.
          Other exhibits from the opponent, namely GFD9 to 12, illustrate a locking system using disc tumbler locks and the master‑keying thereof wherein the master‑key and the change key have a different profile, however the exhibits do not show a master‑keying system based on profiling the same as is described in the specification.
         The only evidence relevant to the prior publication and want of novelty objections to the claims defining a locking system, is patent specification 258614 (exhibit GFD14) which is detailed above.   However it does not publish, and nor does it render not novel, the locking system which is claimed because its disclosure of the master keying technique based on profiling is in relation to "pin tumbler locks" and not "disc cylinder locks" as is defined in the specification.  
         I find that the opposition succeeds on the grounds that the claims do not comply with section 40, that the invention which is disclosed and claimed in all claims is obvious and that claims 7, 8, 10 and 11 are published.   In my opinion there is no matter disclosed in the specification to support the grant of a valid patent, accordingly I refuse to grant a patent upon the application. I award costs against the applicant.

(G.D. CARMICHAEL)