Pacific Enterprises (Aust) Pty Ltd v ASSA ABLOY Australia Pty Limited - [2014] APO 81

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pacific Enterprises (Aust) Pty Ltd v ASSA ABLOY Australia Pty Limited [2014] APO 81

Patent Application: 2008243070

Title:A Lockable Chain Winder

Patent Applicant:                   ASSA ABLOY Australia Pty Limited
Opponent:  Pacific Enterprises (Aust) Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  10 December 2014
Hearing Date:  17 September 2014, in Canberra
Catchwords:  PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, and clarity –consideration of whether the claims are clear – claims 13-22 found to lack clarity – consideration of whether a product was publicly available before the priority date – claims found novel and inventive – costs awarded against the applicant

Representation: Patent applicant: Tom Cordiner of Counsel instructed by Adrian Crooks of Philips Ormonde Fitzpatrick
Opponent:Adrian Ryan of counsel instructed by Steven Worthley and Robert Cooper of Minter Ellison

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243070

Title:A Lockable Chain Winder

Patent Applicant: ASSA ABLOY Australia Pty Limited
Date of Decision: 10 December 2014
DECISION
Claim 13 and its dependent claims (claims 14 to 22) are not clear. The opposition is successful on this ground.
I have adopted one interpretation of claim 13 for the purposes of this decision (which is how the claims are required to be amended). Under this interpretation all claims are considered novel and inventive.
I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings.
Costs are awarded against the Applicant, ASSA ABLOY Australia Pty Limited, according to Schedule 8.
Background

Application 2008243070 in the name of ASSA ABLOY Australia Pty Ltd (the Applicant) was filed on 3 November 2008 with an earliest priority date of 25 January 2002. Examination was requested on 8 May 2009 and the application was advertised as accepted on 11 August 2011.
The opposed application claims divisional status from AU 2003201398, which was the national phase entry of PCT/AU2003/000055 (WO 2003/062574). Ultimately, the opposed application claims priority from Australian provisional application PS 0172, which was filed on 25 January 2002.
A Notice of Opposition to the grant of the patent was filed by Pacific Enterprises (Aust.) Pty Ltd (the Opponent) on 11 November 2011.
The Opponent filed a Statement of Grounds and Particulars in support of its opposition on 13 February 2012. On 13 March 2012 the Applicant requested that the opposition be dismissed, and a decision was issued on 19 July 2012 determined some of the grounds to be dismissed. An amended Statement of Grounds and Particulars consistent with this decision was allowed on 30 August 2012.
The hearing was held in Canberra on 17 September 2014.
Evidence
Evidence in Support was filed on 17 May 2013 consisting of:
- A declaration by Martin Earley with Exhibits MGE-1 to MGE-3
- A declaration by Graeme Byrne with exhibits GB-1 and GB-2
- A declaration by James Nayna with exhibits JN-1 to JN-4
- A declaration by Rana Waitai
- A second declaration by Graeme Byrne with exhibit GB-3
Evidence in Answer was filed on 16 August 2013 consisting of:
- A declaration by Maxwell Cherry with exhibits MC-1, MC-2 and MC-4
Evidence in Reply was filed on 15 November 2013 consisting of:
- A third declaration by Graeme Byrne with exhibits GB-4 to GB-12
Preliminary matter
AU 2001814432 was one of the documents particularised for the ground of novelty in the Statement of Grounds and Particulars, however AU 2001814432 was not adduced in Evidence in Support. After receiving the Applicant’s first submissions for the hearing (which noted the absence of this evidence) the Opponent requested leave to file further evidence which comprised a copy of AU 2001814432.
In this case the document had already been considered by both parties prior to the hearing, and both parties thus had an opportunity and indeed made representations about the document. I consider all criteria for serving further evidence under regulation 5.10(4) and 5.10(5) have been met and thus permit the further evidence. I have found further below in this decision that AU 2001814432 does not affect the validity of the patent, thus the allowance of this document as further evidence is ultimately inconsequential.
The specification
The invention relates to a window winder that uses a chain connected to a hinged window. Winding the handle of the chain winder extends or retracts a chain which pushes the window open or pulls the window closed depending on the direction of rotation.
The impetus for the invention is provided in the background section of the description at page 1 line 29 to page 2 line 6 reproduced below:
“There are some disadvantages with existing chain winders. For instance, a lockable chain winder typically has a key cylinder and perhaps also a push button. As the key cylinder (and the push button) need to operate the locking member, and because the locking member must engage the linked chain, sprocket, or other component in the winder, it is practical to have the key cylinder (and the push button if present) and the winding handle proximal to each other. However, if the key is inserted in the key cylinder, and left in place, winding of the handle can cause the key to be struck either by the handle or by the person's hand. This can cause damage to the chain winder, the key, or can cut or bruise the person's hand. Therefore, it would be an advantage if the chain winder could be designed to minimise the possibility of the handle/person's hand striking a key that may be left in the key cylinder.”
The specification ends with 22 claims including two independent claims reproduced below:
1. A lockable chain winder comprising an outer body, the outer body comprising a casing and a base plate, the chain winder further comprising a chain at least partially in the body, drive means to drive the chain, a winding handle which is operated to extend or retract the chain from the body, a key cylinder for locking the chain winder, a rotatable drive component, which has a thread which engages with the drive means, attachment means on the drive component to attach to the winding handle, and a chain locking mechanism supported by the casing which interacts with the key cylinder, the chain locking mechanism comprising a locking means on the drive component and a lock plate which is slidable between a locking position where the lock plate engages with the locking means on the drive component to prevent rotation of the drive component in at least one direction, and a free position where the drive component can rotate in both directions, wherein the winding handle and key cylinder are spaced apart such that the winding handle can be rotated to extend or retract the chain from the body while the key is in the key cylinder.
13. A lockable chain winder comprising an outer body, a chain at least partially in the body, drive means to drive the chain, a winding handle which is operated to extend or retract the chain from the body, a key cylinder for locking the chain winder, a rotatable drive component, which has a thread which engages with the drive means, attachment means on the drive component to attach to the winding handle, and a locking means which interacts with the key cylinder to lock the chain winder, wherein the winding handle and the key cylinder are spaced apart such that the winding handle can be rotated to extend or retract the chain from the body while the key is in the key cylinder.
Construing the claims
Claim 13 contains the following set of features which the Applicant and Opponent advanced differing interpretations:
“a rotatable drive component, which has a thread which engages with the drive means, attachment means on the drive component to attach to the winding handle, and a locking means which interacts with the key cylinder”
The feature of the locking means and rotatable drive component are most clearly illustrated in Figure 8 of the specification. I have simplified Figure 8 by removing the feature number references and replaced with the names of the features significant to this aspect of claim 13.
Because of the sparse use of punctuation this aspect of the claims could be plausibly parsed in three different ways.
Parsing 1
This aspect of the claims could be simply defining a list of components:
(i)a rotatable drive component, which has a thread which engages with the drive means;
(ii)attachment means on the drive component to attach to the winding handle; and
(iii)a locking means which interacts with the key cylinder
Parsing 2
Alternatively, this aspect of the claims could be defining a component with a list of sub‑components:
(i)a rotatable drive component, which has:
Parsing 3
Alternatively, this aspect of the claims could be both a list of components and sub-components:
(i)a rotatable drive component, which has:
(ii)a locking means which interacts with the key cylinder
Opponent’s submissions on parsing
The Opponent submitted that the claims should be parsed such that the locking means is not necessarily part of the rotatable drive component. In other words, the locking means can act on any of the moving parts to prevent the chain from moving. This interpretation is given in Parsing 1 and Parsing 3.
The Opponent argued that reading all features of the claims as a simple list (as per Parsing 1) required less ‘intervention’, and thus this approach should be adopted. The Opponent further argued that the words ‘attachment means on the drive component’ would be redundant if the sub-list interpretation (Parsing 2) were adopted, since the attachment means has already been defined as being part of the rotatable drive component.
Alternatively, the Opponent argued that the rotatable drive component is followed by a list but of only two features: the thread and the attachment means for the winding handle (Parsing 3). Since the locking means is the last component of the entire device defined in the claim, this is preceded by the word ‘and’.
Applicant’s submissions on parsing
The Applicant submitted that the locking means is necessarily part of the rotatable drive component. In other words, the locking mechanism must act on the rotatable drive component to prevent the chain from moving. This interpretation is given in Parsing 2.
The Applicant states at paragraph 7.9 of their submissions:
“The construction above differs from that propounded by the Opponent in that the Opponent considers that each of (f)(i), (f)(ii) and (f)(iii) are independent integers. The effect of the Opponent's construction is that the locking means does not need to be part of the rotatable drive component. The Applicant contends that, when claim 13 is read in the context of AU'070 as a whole, it is plain that it was intended that the locking means was to be part of the rotatable drive component and claim 13 may and should be read that way. There are no dependent claims that controvert the Applicant's construction.”
The Applicant argued that the words ‘a rotatable drive component, which has’ act to define a list. The Applicant also noted that the comma that immediately precedes the words ‘which has’ acts as a pause which emphasises that a list follows. The Applicant further argued that the consistory statements of the description of the accepted specification supported the narrower interpretation (e.g. page 4 lines 16 to 21). The Applicant further argued that the specification as filed supported the narrower interpretation, noting that reference to the specification prior to amendment is specifically endorsed by s 116.
The description as filed
The Applicant argued that the description as filed supported the narrower interpretation. Most relevantly the specification as filed contains the following passage (page 5 line 4 to 10) which closely resembles claim 13 as accepted (with my emphasis added in bold):
“In one form, the invention resides in a lockable chain winder comprising an outer body , a chain at least partially in the body, drive means to drive the chain, a winding handle which is operated to extend or retract the chain from the body, a key cylinder for locking the chain winder, and a rotatable drive component , which has a thread which engages with the drive means, attachment means on the drive component to attach to the winding handle, and locking means on the drive component to form part of a chain locking mechanism.”
Although it could be argued that bolded text should be implicitly imported into the claim as accepted, it could equally be argued that its absence from the claims as accepted was a deliberate choice to alter the scope of the claims.
The description as accepted
The Applicant argued that the consistory statements in description as accepted support their interpretation of the claims. Although the consistory statement of the description as accepted does provide specific details of the locking means, this is only provides to reinforce the fair basis of the claims and does not provide any real limitation on the scope of the claims.
Conclusion on interpreting the claims
In my opinion, parsing 3 is implausible since the two features of the thread and attachment means are not grouped by the word ‘and’. The absence of the word ‘and’ between the first and second features and its presence between the second and third feature, indicates the three features should be grouped together as per Parsing 1 or 2. This leaves Parsing 1 and Parsing 2 as the respective interpretations of claim 13 of the Opponent and Applicant.
I consider each of the two alternative interpretations of claim 13 of whether the locking means is necessarily part of the rotatable drive component to be equally reasonable and consistent with the description. Referring to the specification as filed provides no further insight into which of these interpretations should be adopted.
I will adopt the Applicant’s interpretation of this aspect of claim 13 for the purposes of this decision. This is a pragmatic choice of interpretation since, as a result of the successful clarity ground of opposition below, the Applicant is required to amend the specification to more clearly define their intended scope in the claims. Thus this decision is essentially determining the validity of the present application as if those amendments had already been made.
Opposition under section 59
Onus of proof
The request for examination in this case was filed on 8 May 2009. Therefore, the substantive amendments to the Patents Act 1990 (Patents Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application, including subsection 60(3A) which allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition has been made out. Instead, the onus of proof in this opposition proceeding lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426).
Grounds of opposition
At the hearing the grounds of opposition pressed by the Opponent were novelty, inventive step and clarity.
Clarity
The relationship between the locking means and rotatable drive means
In construing the claims I found that claim 13 is ambiguous as to whether the locking means was necessarily part of the rotatable drive component and indeed it is so ambiguous that there was no conclusive reason to adopt one interpretation over the other. It is only where it is impossible to ascertain the invention that a claim should be found to lack clarity (see Décor Corp v Dart Industries 13 IPR 385 at 400). In this case I consider that it is not possible to ascertain the invention defined in claim 13 and consequently claim 13 is not clear as required by s 40(3). None of the claims dependent on claim 13 (claims 14-22) specify whether the locking means is necessarily part of the rotatable drive component, thus these claims also lack clarity.
Winding handle and key cylinder spacing
The Opponent argued that “the winding handle and the key cylinder are spaced apart such that the winding handle can be rotated to extend or retract the chain from the body while a key is in the key cylinder” is of indeterminate scope.
The Opponent noted in their submissions:
“factors affecting whether the winding handle is obstructed by a key in the key cylinder include at least:
a) the lateral spacing between the winding handle and the key cylinder;
b) the lateral length of the winding handle;
c) the dimensions of the key head and its orientation in the key cylinder;
d) the plane that the winding handle rotates in; and
e) the size of the person’s hand operating the winding handle
Since the feature is dependent on unclaimed features, including the dimensions of the key (unclaimed), it is so vague as to be entirely unclear in scope. It is impossible to tell from examining any given chain winder alone, whether the chainwinder includes this feature.”
This aspect of the claims has been drafted in ‘functional’ claim language - defining the device by how it functions rather than purely in terms of the elements of the device itself. All that is required for this feature of the claims to be anticipated (or infringed) is that in the prior art (or potentially infringing device) the winding handle can be rotated while the key is in the key cylinder. The size of the person’s hand operating the handle or the size of the key would indeed be part of this consideration, with anticipation or infringement only occurring if it is shown to the satisfaction of the decision maker (judge or hearing officer) that it is possible to wind the handle while the key is in the key cylinder. I consider this aspect of the claim to be clear.
Unitary Component
The Opponent argues:
“We further submit that claim 7 is unclear, as the feature of a ‘unitary component’ is not clear. In one possible interpretation, the drive component may be ‘unitary’ if it includes disparate parts that are subsequently connected so that they function together once they are assembled. In another possible interpretation, the drive component may only be unitary if it is formed in a single mould. As a result of these two possible interpretations, we submit that the claims are unclear.”
The Applicant argues:
“The reference to a "unitary component" would be understood by a skilled addressee to mean that the rotatable drive component is formed as a single part rather than an assembly of multiple parts (Cherry [37] to [39] and [47]). That is plain from reading the specification as a whole including the Figures. The evidence of Byrne 1 at [40] suggesting that there is uncertainty as to the meaning of this term arises from his own confusion about a term which does not even appear in the claim, namely "unitary system": see Cherry at [77]. The specification makes plain that a unitary component is one that is constructed as a single part, such as by die casting or investment casting:
AU'070 at page 9, line 26-27.”
In my opinion, the plain meaning of ‘unitary component’ is that the component cannot be disassembled into smaller components. I note this interpretation is consistent with the description. Overall I consider this interpretation supported by: a) the plain meaning, b) consistency with the description and c) one expert’s opinion (Mr Cherry), to outweigh the contrary opinion of another expert opinion (Mr Byrne). I consider this aspect of the claim to be clear.
Novelty

The test for novelty has been discussed in the Full Federal Court decisions of Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at paragraphs 311 and Bristol-Myers Squibb Company v FH Faulding & Co Limited [2000] FCA 316; (2000) 97 FCR 524. As noted in both the decisions, the basic test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries [1977] HCA 19; (1977) 137 CLR 228 at page 235 where Aickin J stated:
“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 invention would if the patent were valid, constitute an infringement.”
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v Henry Showell Ltd (1969) RPC 367). However, as Pfizer (supra) noted, it is not sufficient for a citation to contain all the essential features of the claim; there must be "clear and unmistakable" directions to the claimed invention. In addition, to deprive a claim of its novelty, a citation must be the same as the claimed invention for the purposes of "practical utility". In other words, the citation has to "enable" the skilled worker to produce the invention from the written disclosure.
Novelty - AU 200037804 and AU 200181432
I have construed the claims such that it is the rotatable means which has the locking mechanism. The Opponent’s opposition to the claims was on the basis of their broader interpretation of the claims. For reasons given above I have adopted the Applicant’s interpretation. The two documents used to oppose the novelty of the claimed invention are AU 200037804 and AU 200181432. In both these documents, the locking mechanism engages with the chain links of the chain winder, and not the rotatable drive component as presently claimed. Consequently, the claims are considered novel over AU 200037804 and AU 200181432.
Inventive Step
For the purposes of subsection 7(2) of the Patents Act, an invention is to be taken to be inventive when compared with the prior art base unless the invention would have been obvious to a person skilled in the art. Of relevance to the present opposition, for the purpose of subsection 7(2), the prior art base includes information that is publicly available.
Information that is "publicly available" is information that the public has or can acquire by consulting a source open to it, i.e. material that can be inspected "as of right" by the public. It is sufficient that the information is available to a single person, provided that person is able to use the information freely without an obligation of confidence (See: Gadd v Mayor of Manchester (1892) 9 RPC 516 at page 527; Fomento v Mentmore (1956) RPC 87 at page 105; and Monsanto (Brignac's) Application (1971) RPC 153 at page 159).
From Schedule 1 of the Act "prior art base" means:
(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area.
The Opponent argued that the claims lack an inventive step in light of patent AU 200037804 and a chain winder product known as the ‘DS 170’. A patent is a document and thus considered under prior art under section (a)(i); the use of a product is considered ‘doing an act’ and thus considered prior art under section (a)(ii).
AU 200037804
The Opponent’s arguments that the claims lack an inventive step in light of AU200037804 was predicated on the same claim construction as for their arguments for the claim’s lack of novelty. Since I have adopted a different claim construction, and since the Opponent did not provide arguments about the lack of inventive step on the basis of this claim construction, the inventive step argument is not supported. Furthermore, I can see no motivation or reason as to why a person skilled in the art would modify AU200037804 such that it would fall within the scope of the claimed invention. Consequently, all claims are considered inventive in light of AU200037804.
DS 170
The Opponent submitted that a chain winder made by Doric Products – the DS 170 – was available for purchase in Australia before the priority date (25 January 2002) and thus constituted prior art as defined under section (a)(ii) of the definition provided in Schedule 1 of the Act.
The Opponent submitted that the sole difference between the DS 170 and the invention defined in independent claims 1 and 13 was the spacing between the winding handle and the key cylinder, and that, before the priority date, it would have been obvious to a person skilled in the art to modify the DS 170 to increase the spacing between the handle and the key cylinder.
Evidence that DS 170 was publicly available
The Opponent provided five pieces of evidence that the DS 170 was publicly available before the priority date.
1. Nayna declaration
Mr Nayna is the owner of the “All Weather Aluminium Windows” company and has 40 years of experience in aluminium doors and windows. I consider Mr Nayna to be a person with relevant knowledge and experience about chain winders.
Mr Nayna states at paragraph 6:
“At the Australian Window Association Exhibition between September 27 and 30, 2001 in Sydney, I viewed the Doric Product DS 170, which was being shown to the industry but I am aware had been available for purchase prior to and following the Exhibition.”
It is not clear to me that viewing the exterior of a product at an exhibition is the same as that product being publicly available, since the claimed invention lies at least partially in the internal mechanism of the chain winder.
Mr Nayna states at paragraph 7:
“From my recollections All Weather had purchased prior to 2002 the Doric Product of DS 170 to be included in our windows. We had been reviewing options and knew that at the time Pacific Enterprises had created their chain winder product. However at the time we persisted with the Doric Product.”
Mr Nayna does not provide any corroborating evidence such as a receipt or invoice for the purchase of the DS 170. Mr Nayna’s evidence does not establish to the standard of practical certainty that the DS 170 was publicly available before the priority date.
2. Byrne declaration
Mr Byrne has been employed by Pacific Enterprises (the Opponent) as principal designer and manufacturing consultant since 1993. I consider Mr Byrne to be a person with relevant knowledge and experience about chain winders.
Mr Byrne states in his first declaration at paragraph 22:
“I also obtained a sample of the DS 170 and shown in Exhibit GB-2 are photographs of views of that sample and constituent parts. This sample is the same product of the catalogue and I am aware that Pacific obtained this sample prior to 2002 and probably in 2000 at the time of our patent.”
Mr Byrne does not provide any further detail about how he was “aware that Pacific obtained [the DS 170] prior to 2002”, nor does he provide any corroborating evidence such as a receipt. It is quite plausible that Pacific Enterprises obtained the DS 170 at some time after January 2002. Consequently, Mr Byrne’s evidence does not establish to the standard of practical certainty that the DS 170 was publicly available before the priority date.
3. Technical specifications
The technical specifications of the DS 170 and DS 177 are provided in Exhibit GB-1.
In the bottom right hand corner of the technical specification of DS 170 there is a code reading:
Issue No. DS170.2.00
In the bottom right hand corner of the technical specification of DS 177 there is a code reading:
Issue: DS177.01.02
The Opponent has argued that this code has two elements: the first element being the product name, and the second element being the month and year. The Opponent further argues that the date is when the product became publicly available. In support of this, the Opponent referred to the first Graeme Byrne declaration at paragraph 21:
“I am well aware of publications of other chain winder manufacturers and we collect catalogues and products. I am aware that the DS 170 was published in the Doric Product catalogue. It also was subject of its own technical specification sheet and has an Issue No “DS 170 2.00”. This refers to the product DS 170 being published as of February 2000. Similarly the DS 177 Technical Specification has Issue “DS 177.01.02” which refers to Product DS 177 being published in January 2002. This is further supported by the Doric Products Index of “5/2002” referring to May 2002 includes listing of chainwinders DS 170, DS 175, DS 177, DS 178, DS 179 and DS 180. The DS 170 is also shown in the Doric Product catalogue which Pacific has obtained. Included in Exhibit GB-1 are copies of the technical specification sheets of the DS 170 and DS 177 and the Index.”
Although the code could be indicating the date the technical specifications were published, the code could just as easily be referring to something else, e.g. a version number or the date of design or manufacture.
I am not satisfied that the code on the bottom right hand corner contains within it a date. Furthermore, even if the code was assumed to contain a date, I am not satisfied that the date refers to the date it became publicly available.
4. Doric brochure
A Doric Products catalogue is provided in Exhibit MGE-3. The DS 170 is displayed on page 37 of the catalogue.
The catalogue does not contain a publication date. However, it does contain the words “available late ‘99” noted on several products in the catalogue (seven times in total). One inference from the phrase “Available late ‘99” is that the catalogue was published at some time before “late ‘99”, i.e. early 1999 or before.
The Applicant argued that a manufacturer will frequently update their range of products. Thus, the Applicant argued, the catalogue could have been published sometime after the priority date (25 January 2002), still with the out-of-date or redundant notes about the date of availability of some products.
I note that there is no evidence about when or how the Doric Product catalogue in Exhibit MGE-3 was obtained. It is plausible that the Doric Product catalogue was published before the priority date, but not made publicly available until after the priority date. Consequently the Doric Product catalogue does not establish to the standard of practical certainty that the DS 170 was publicly available before the priority date.
5. Opposed specification referring to DS 170 as ‘prior art’
The description of the opposed application as filed contains at page 2 lines 16 to 17 the following:
“Figures 17-24 show a prior art lockable chain winder which has been produced by Doric Products under the product code DS 170.”
The description then follows with a detailed description of the DS 170. The Opponent argued that this is an acknowledgement that DS 170 was actually prior art as defined in the Patents Act. That is, publicly available before the priority date of 25 January 2002.
The Applicant argued that this is not actually an acknowledgement that the DS 170 was publicly available before the priority date for the following four reasons. Firstly, the Applicant argued that the term “prior art” is used loosely rather than in the strict definition under the Patents Act. Secondly, the Applicant argued that the reference to the DS 170 was first made in the description filed on 3 November 2008, and no reference to the DS 170 was made prior to this in either the parent application or the priority document.
Thirdly, the Applicant argued that the description as filed contains the following disclaimers which should preclude the reference to DS 170 as an admission that it constitutes prior art:
“It will be clearly understood that any reference herein to background products or material, prior publications or technical problems does not constitute an acknowledgement or admission that any background material, prior publication(s), technical problem(s) or combination(s) thereof formed part of the common general knowledge in the field or is otherwise admissible prior art, whether in Australia or any other country.”
“A reference herein to a patent document or other matter which is given as prior art is not to be taken as an admission that that document or matter was known or that the information it contains was part of the common general knowledge as at the priority date of the claims.”
Fourthly, the Applicant argued that the accepted description has had reference to the DS 170 removed by amendment thus removing it as an acknowledgement of prior art (although, the pictures of the DS 170 with accompanying words “prior art” still form part of the figures of the accepted application).
I am not persuaded by the Applicant’s arguments regarding the disclaimers and the amendments made to the description (the third and fourth arguments). These disclaimers and amendments do not significantly alter the substance of the information that was filed.
Now turning to the Applicant’s first and second arguments. Although the term ‘prior art’ has a clear definition in the Patents Act, I am not convinced that the specification has necessarily used the term in the same way. It is plausible that the term is instead being used to mean relevant art, without any definite statement about the date at which it became publicly available. The fact that the reference to the DS 170 was not made in the parent or priority documents is supportive of this view. Consequently, I am not satisfied on the basis of the filed specification referring to DS 170 as ‘prior art’ that the DS 170 was publicly available before the priority date.
DS 170 conclusion
The Opponent has provided five pieces of evidence in support of the assertion that the DS 170 was publicly available before the priority date. None of these pieces of evidence when considered individually are sufficient to establish that the DS 170 was publicly available before the priority date. The weight of the evidence considered collectively is stronger than each piece of evidence considered individually, but it is still not enough to establish with practical certainty the date by which the DS 170 became publicly available.
Since it has not been demonstrated to the standard of practical certainty that the DS 170 is prior art as defined by the Act, any further analysis of the other elements of inventive step is precluded. Consequently the claims do not lack an inventive step in light of the DS 170.
Conclusion
Claim 13 and its dependent claims (claims 14 to 22) are not clear. The opposition is successful on this basis.
I have adopted one interpretation of claim 13 for the purposes of this decision (which is how the claims are required to be amended). Under this interpretation all claims are considered novel and inventive.
Costs
The award of costs is a discretionary matter. It is a general principle in matters such as these that costs follow the event, and I see no reason to depart from this practice. The Opponent has been successful in this opposition. Costs are awarded against the Applicant, ASSA ABLOY Australia Pty Limited, according to Schedule 8.
Xavier Gisz
Delegate of the Commissioner of Patents