Paradise Motor Homes Pty Ltd - [2013] APO 39

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Paradise Motor Homes Pty Ltd [2013] APO 39

Patent Application: 2005244571
Title:Automatic locking apparatus

Patent Applicant:  Paradise Motor Homes Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  2 July 2013
Hearing Date:  27 May 2013, by telephone
Catchwords:  PATENTS - examiner objection – claims 20, 23 and 24 lack novelty – claims 1, 9-11, 14, 17-20 and 23-25 lack of inventive step – opportunity to amend

Representation: Patent applicant: Wayne Slater of IP Gateway Patent and Trademark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005244571

Title:Automatic locking apparatus

Patent Applicant: Paradise Motor Homes Pty Ltd
Date of Decision: 2 July 2013
DECISION
Claims 20, 23 and 24 lack novelty. Claims 1, 9-11, 14, 17-20, 23-25 lack an inventive step.
The Applicant has the remaining time under s 142(2)(e), i.e. until 6 September 2013, to propose amendments that are consistent with this decision.
REASONS FOR DECISION

This matter concerns examiner’s objections and whether I should exercise the Commissioner’s power to refuse the application under subsection 49(2) of the Patents Act 1990.
Background
Application 2005244571 was filed on 16 December 2005 in the name of Paradise Motor Homes Pty Ltd (the Applicant). It was filed as a divisional of Australian patent application 2005205770 and derives its priority date of 17 December 2004 from provisional application 2004907179.
Examination reports on this application were issued on 6 December 2011, 22 August 2012 and 8 March 2013. Responses to the examination reports were received on 27 July 2012 and 6 March 2013, each response was accompanied by proposed amendments.
In the second report (dated 22 August 2012), the examiner raised an inventive step objection based on prior art patent US 6,793,260 B2 (CREAN) 21 September 2004 (D4). In the third report (dated 8 March 2013) the examiner maintained the inventive step objection to the proposed amendments on the basis of the Crean citation.
On 21 March 2013 the applicant requested the matter be heard. The hearing took place on 27 May 2013 by telephone. The Applicant was represented by Wayne Slater of IP Gateway Patent and Trademark and was accompanied by the inventor, Colin MacLean.
The specification
The invention relates to a central locking system for locking the internal cabinet doors and drawers in the interior space of a motor home.
The specification, as provided in the most recent proposed amendments, concludes with 27 claims including four independent claims. The independent claims are reproduced below:
1. A method of securing articles stowed within cabinet type fittings within an interior living space of a motor home, the cabinet type fittings having a cabinet frame and cabinet doors or drawers mounted on the cabinet frame or providing access to cabinet interiors within the cabinet type fittings, the method including:
locking the cabinet doors and/or drawers in a closed position using a central locking apparatus when the motor home is travelling on the road in a travelling mode to hold the doors and/or drawers against moving to an open position due to changes in momentum during travel and thereby resist articles stowed within the cabinet type fittings from moving in an uncontrolled fashion; and
unlocking the cabinet doors or drawers using the central locking apparatus when the motor home ceases to be in the travelling mode to enable a user to open the cabinet doors and drawers for gaining access to the cabinet interiors when the motor home is being used in a camping mode.
9. A motor home that is capable of being interchanged between a travelling mode where it is suitable for being driven on a road and a camping mode where it is being used to provide living accommodation, the motor home including:
a vehicle body defining an interior space;
at least one cabinet type fitting mounted on the vehicle body within the interior space having a cabinet frame and at least one cabinet door or drawer mounted on the cabinet frame that is capable of being moved between an open and a closed position;
a locking apparatus mounted on the cabinet type fitting or the vehicle body for locking at least one of the cabinet doors or drawers in the closed position including:
at least one actuating means mounted on the cabinet frame or the vehicle body, having an actuating element that is movable between a retracted position and an extended position;
a locking arrangement operatively associated with each cabinet door or drawer that is operatively connected to the actuating means, the locking arrangement responding to a movement of the actuating element to lock the cabinet door/s and/or drawer/s in the closed position; and
a control means for initiating a locking actuation of each actuating means to move the actuating element between the retracted and the extended positions to lock the door and/or drawers in the closed position when the motor home is in the travelling mode, and also to initiate an unlocking actuation of each actuating element between the retracted and extended positions in an opposite direction to the locking direction to unlock the door or drawer when the motor home is in the camping mode.
19. A motor home that is capable of being interchanged between a travelling mode where it is suitable for being driven on a road and a camping mode where it is being used to provide living accommodation, the motor home including:
a vehicle body defining an interior space;
a shower located within the interior space, the shower comprising a shower frame and a shower door mounted on the shower frame that is capable of being moved between an open and a closed position; and
a locking apparatus mounted on the cabinet type fitting or the vehicle body for locking the shower door in the closed position, including:
an actuating means having an actuating element that is movable between a retracted position and an extended position;
a locking arrangement operatively associated with the shower door that is operatively connected to the actuating means, the locking arrangement being
operable to lock the shower door in the closed position in response to movement of the actuating element; and
a control means for simultaneously initiating a locking actuation of each actuating means to move the actuating element between the retracted and the extended positions to lock the shower door in the closed position, and also to initiate an unlocking actuation of each actuating mean to unlock the shower door.
20. A motor home that is suitable for being driven on a road when it is being used in a driving mode and which is suitable for being used to capable of providing living accommodation when it is being used in a camping mode, the motor home including:
a vehicle body defining an interior space;
at least one cabinet type fitting mounted on the vehicle body having within the interior space a cabinet frame and at least one door and/or drawer mounted on the cabinet frame that is capable of being moved between an open and a closed position;
a locking apparatus mounted on the cabinet type fitting or the vehicle body for locking one or more of the doors and/or drawers in the closed position including:
at least one actuating means mounted on the cabinet frame, having an actuating element that is movable between a retracted position and an extended position;
a locking arrangement operatively associated with each door or drawer that is operatively connected to an actuating means, each locking arrangement being operable to lock the associated door or drawer in the closed position; and
a control means for initiating a locking actuation of each actuating means to move the actuating element between the retracted and the extended positions to lock the doors or drawers in the closed position, and also to initiate an unlocking actuation of each actuating means to unlock the doors or drawers.
In the second adverse examination report the examiner stated:
“The invention defined in claim 1 is not novel (and does not involve an inventive step) when compared with D4 that discloses all the essential features of the invention claimed:
Regarding claims 1, 14, 15, 20 and 21 D4 discloses a vehicle body (fig.1), a cabinet (fig.2 and col.8 ln.5-10 "closet doors, cupboard doors and the like"), a locking apparatus (fig.5 and col.9 ln.13-43) and a control means (Abstract, "by using the remote transmitter").”
In their response of 6 March 2013 the Applicant argued:
“In the examination of this application, the examiner has cited US Patent 6,793,260 (the Crean citation) against the independent claims previously on file.
The Crean citation discloses broadly a recreational vehicle with a central actuator that controls locking and unlocking of a plurality of luggage access doors mounted on the side of the vehicle that are accessed from outside of the vehicle. The luggage doors are not accessed from an interior space of the motor vehicle.”
The Applicant further argued:
“In the examiner's report the examiner refers specifically to the disclosure on lines 13 to 43 of column 9 of the specification. This passage states:
‘In still other embodiments, the locking mechanism 125 comprises additional securing members 169 coupled to doors other than the storage area doors 120a. For instance, in some embodiments, the locking mechanism 125 is coupled to main entranceway doors, closet doors, cupboard doors and the like. As such, the user can lock or unlock this multitude of securing mechanisms 169 with a single activation to advantageously make the RV 100a more convenient for the user.’
Thus the Crean disclosure suggests storage area doors and identifies cupboard doors as one option. It provides no disclosure of how such a system would be implemented in practice. Further it contains no suggestion of applying a similar system to drawers on cabinets that slide between closed and open positions. Yet further the Crean citation does not appreciate the need to lock the doors and drawers on internal cabinet type fittings for safety reasons to prevent missiles from flying around the motor home while it is being driven. Yet further the Crean citation does not appreciate the damage caused by objects flying around a motor home while it is being driven and how this problem can be overcome. Yet further Crean is concerned with locking the access doors primarily while the RV is in camping mode for security reasons.”
Claim construction
Travelling mode
The meaning of the phrase ‘locking the cabinet doors…when the motor home is travelling on the road in a travelling mode’ is significant in determining the scope of the claims. It is notable that the term ‘travelling mode’ is not used in the description.
There are two alternative interpretation of the phrase ‘locking the cabinet doors…when the motor home is travelling on the road in a travelling mode’: a) the locked mode automatically activates when the motor home is travelling; or b) the locked mode automatically activates when the motor home is travelling OR can be manually activated while the motor home is travelling.
The description contains disclosures of both the automatic and manual activation of the locking systems (for example, at page 7 lines 15 to 23 in the description as filed), and in the absence of any explicit limitation provided in the description, it is reasonable to conclude that the scope of the phrase includes either type of lock activation. This is also consistent with the Applicant’s intent of the phrase as expressed at the hearing.
The claims
Independent claims 1 and 9 define a method and apparatus for centrally locking the cabinet doors or drawers of a motor home when the motor home is in a travelling mode and unlocking the cabinet doors or drawers when the motor home is in a camping mode.
Independent claim 19 defines a shower door of a motor home with a locking apparatus. The locking apparatus comprises an actuating means, a locking means connected to the actuating means, and a control means that controls the locking means.
Independent claim 20 defines a motor home with central locking for the cabinet doors or drawers.
It is notable that of the independent claims, only claims 1 and 9 require that locks on the doors or drawers to be activated while in ‘travelling mode’.
Although claims 19 and 20 use the term ‘travelling mode’, this is only limiting the scope of the claim to the extent that the motor home is capable of travelling, and is not limiting to the operation of the locking mechanisms. For example, the only use of the term ‘travelling mode’ in claim 19 is in the preamble of the claim as follows:
“A motor home that is capable of being interchanged between a travelling mode where it is suitable for being driven on a road and a camping mode where it is being used to provide living accommodation…”
Thus, it is only a requirement of claim 19 that the motor home itself (independent of the central locking) is capable of being interchanged between a travelling mode and a camping mode.
The use of the term ‘travelling mode’ in claim 20 is also only in the preamble of the claim as follows:
“A motor home that is suitable for being driven on a road when it is being used in a driving mode and which is suitable for being used to [sic] capable of providing living accommodation when it is being used in a camping mode…”
Thus it is only a requirement of claim 20 that the motor home itself (independent of the central locking) is suitable for being driven on a road in travelling mode and suitable for providing living accommodation in a camping mode.
US 6,793,260 Crean
The Crean citation relates to a central locking system for doors of a motor home. The Crean disclosure is predominantly about locking the external storage doors of a motor home to prevent theft or unauthorised access, however Crean contains brief disclosures of central locking for internal doors (at column 8 lines 5 to 14) and locking the external doors for purposes other than preventing theft or unauthorised access (at column 10 lines 55 to 61).
Novelty [s 18(1)(b)(i)]
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486; (1971) 1A IPR 121 at 138).
Claims 1 to 18
Crean discloses a central locking system for the interior cupboard doors of a motor home at column 8 lines 5 to 14 (with my emphasis added in bold):
“In still other embodiments, the locking mechanism 125 comprises additional securing members 169 coupled to doors other than the storage area doors 120a. For instance, in some embodiments, the locking mechanism 125 is coupled to main entranceway doors, closet doors, cupboard doors and the like. As such, the user can lock or unlock this multitude of securing mechanisms 169 with a single activation to advantageously make the RV 100a more convenient for the user.”
Crean also discloses activating the locking mechanism on the external storage area doors when the motor home is in a travelling mode column 10 lines 55 to 61 as follows (with my emphasis added in bold):
“Furthermore, the user can easily activate the locking mechanism 125 to secure the storage area doors 120a and drive away in the RV 100a confident that the storage area doors 120a are secured, whereas with previous designs, the user would either spend additional time checking each storage area door 120a or drive off unsure of the security of the storage area doors 120a.”
Crean does not provide a clear and unmistakable disclosure of locking the internal doors while in a travelling mode. Consequently claims 1 and 9, and all claim dependent thereon, are considered novel.
Claim 19
Crean does not explicitly disclose a lock for a shower door. Consequently claim 19 is novel.
Claims 20-25
Crean discloses the features of claim 20 as follows (with reference to elements in Crean in brackets):
20. A motor home (100a) that is suitable for being driven on a road when it is being used in a driving mode and which is suitable for being used to capable of providing living accommodation when it is being used in a camping mode, the motor home including:
a vehicle body defining an interior space (110a);
at least one cabinet type fitting mounted on the vehicle body having within the interior space a cabinet frame and at least one door (the cupboard door in column 8 lines 9 and 10 are equivalent to a cabinet) and/or drawer mounted on the cabinet frame that is capable of being moved between an open and a closed position;
a locking apparatus (125) mounted on the cabinet type fitting or the vehicle body for locking one or more of the doors and/or drawers in the closed position including:
at least one actuating means (183) mounted on the cabinet frame, having an actuating element (184) that is movable between a retracted position and an extended position (Figures 5A to 5C);
a locking arrangement (136) operatively associated with each door or drawer that is operatively connected to an actuating means, each locking arrangement being operable to lock the associated door or drawer in the closed position; and
a control means (160) for initiating a locking actuation of each actuating means to move the actuating element between the retracted and the extended positions to lock the doors or drawers in the closed position, and also to initiate an unlocking actuation of each actuating means to unlock the doors or drawers.
Crean discloses the features of claim 23 as follows:
23. A motor home according to any one of claims 20 to 22, wherein the control means includes a manual control switch (200) which is manually operable by a user on demand to initiate a locking actuation of each actuating means to lock the doors or drawers in the closed position, and the switch is also manually operable on demand to initiate an unlocking actuation of each actuating means to unlock the doors or drawers (column 14 line 59 to column 15 line 10).
Crean discloses the features of claim 24 as follows:
24. A motor home according to any one of claims 20 to 23, wherein each actuating means is a solenoid actuator (column 9 line 48) including a coil (a coil is an inherent feature of an electromagnetic actuator) and an actuator element that is a plunger (184) that is displaced relative to the coil when the coil is electrically energized, and each locking arrangement locks the drawer/s and/or door/s when the plunger is moved to the extended position, and unlocks the drawer/s and/or door/s when the plunger is moved to the retracted position.
Consequently, claims 20, 23 and 24 lack novelty in light of Crean. The other three claims dependent on claim 20 (claims 21, 22 and 25) are considered novel in light of Crean.
Claims 26 and 27
Claims 26 and 27 are omnibus claims. The scope of these claims is considered to be specific to the embodiment shown in the figures with a solenoid and lever arm. This is different from the mechanism disclosed in Crean (which discloses a solenoid but no lever arm) and consequently these claims are considered novel.
Inventive step [s 18(1)(b)(ii)]
Section 7 of the Act relevantly states:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.

Under the provisions of subsections 7(2) and 7(3) of the Patents Act 1990, an invention is taken to involve an inventive step when compared with the prior art base unless it would have been obvious to a person skilled in the art. The invention must be obvious in the light of the common general knowledge as it existed in the patent area before the priority date, either on its own or together with information in a document that the person skilled in the art could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant.
It is noted that since the request for examination was made before 15 April 2013, under the savings and transitional provisions of the Raising the Bar Act (Schedule 1, Part 3) the former law continues to apply to present application, and thus the requirement for the prior art to be ascertained, understood and regarded as relevant is still assessed when considering inventive step.

“Obvious” means “very plain” (Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 at [51]; (2007) 72 IPR 447 at 461 [51]).

The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention.
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (Aicken J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286)
More recently, the High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51] - [53]; 212 CLR 411 at [51] - [53] approved the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
Person skilled in the art
The person skilled in the art would be an engineer (or team of engineers) involved in the design and manufacture of motor homes.
The problem the invention overcomes
The invention seeks to overcome the inconvenience of locking the internal cupboard doors of a motor home before travelling.
Ascertained, Understood and Regarded as Relevant
No submissions were made as to whether the person skilled in the art could have been reasonably expected to ascertain, understand and regard as relevant the Crean patent which is taken to be a concession that the Crean patent meets these requirements. It is further noted that this is consistent with JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 where Crennan J found at 109 that a person skilled in the art of campervans could reasonably have been expected to carry out a patent search. Consequently I find that the Crean patent could have been ascertained by the person skilled in the art. The Crean patent relates to motorhomes and thus would be readily understood by the person skilled in the art. The relevance of the Crean patent would be immediately apparent to the person skilled in the art, especially with reference to column 8 lines 5 to 14.
Independent claims
Is locking cupboard doors and drawers of a motor home when travelling common general knowledge?
The description as amended states at page 2 lines 7 to 9:
“Each door or drawer is typically provided with some latching system to latch or hold the door or drawer in the closed position and resist its tendency to fly open.”
I consider that this is an acknowledgement that keeping cupboard doors and drawers locked or latched while a caravan or motor home is travelling is common general knowledge. Indeed, the present invention is based on the necessity of locking cupboard doors and drawers before travelling, but overcoming the inconvenience of doing so. Consequently, I conclude that locking cupboard doors and drawers of a motor home before travel was common general knowledge before the priority date of the present application.
Would it be obvious for a person skilled in the art to use the Crean locking system while travelling?
Given that: a) it is common general knowledge that doors and drawers of a motor home should be locked before travelling, b) Crean discloses locking the external doors of a motor home when travelling, and c) the Crean device provides a mechanism that allows internal doors (such as cupboard doors) of a motor home to be locked, I consider that it would be a matter of routine for a person skilled in the art to activate the central locking for internal doors (such as cupboard doors) when travelling.
Indeed it is unlikely a person skilled in the art would not use the central locking system disclosed in Crean for locking the cupboard doors of a motor home while travelling, since not using the Crean disclosure for this purpose would necessitate each door and drawer to have two locks: a central locking system for prevention of unauthorised access, and another locking system for individually locking the doors and drawers before travelling. Having two locks when one would suffice provides a clear motivation to a person skilled in the art to modify the Crean disclosure. Consequently claims 1 and 9 are considered to lack an inventive step in light of Crean.
Claim 19 defines a shower door of a motor home that has an actuated locking apparatus. Crean discloses an actuated locking apparatus for entranceway doors, closet doors, cupboard doors and the like. A person skilled in the art would readily, and as a matter of routine, mount the actuated locking mechanism to a shower door in the same manner as the other doors disclosed in Crean. There is no special adaptation that would be necessary for mounting to a shower door as opposed to any other internal door. Consequently claim 19 lacks an inventive step in light of Crean.
Claim 20 lacks novelty in light of Crean and consequently also lack inventive step.
Dependent claims
Claims 2-6, 15 and 16 are directed to various automatic means for activating the lock. I consider the automatic activation of the locking system to be inventive in light of Crean.
Claims 7 and 8 are dependent on claims 2-6. Since claims 2-6 are inventive, it follows that claims 7 and 8 are also inventive.
Claim 10 defines the actuator to move in one direction for locking and the opposite direction for unlocking. This is also disclosed in Crean in Figures 5A to 5C.
Claim 11 defines an active latching formation that engages a passive latching formation. Crean discloses an active latching formation (134) and a passive latching formation (136).
Claim 12 defines an active latching formation being a hook. I consider such a latching formation to be inventive in light of Crean.
Claim 13 is dependent upon claim 12 and is thus also considered inventive in light of Crean.
Claim 14 defines a plurality of locks that are actuated simultaneously. This is disclosed in Crean and thus lacks an inventive step.
Claims 17 and 18 are directed to a solenoid actuator which is disclosed at column 9 lines 45 to 53.
Claims 21 and 22 define an automatic actuation of the locking system and is considered inventive in light of Crean.
Claims 23 and 24 lack novelty in light of Crean and consequently also lack inventive step.
Claim 25 defines a plurality of drawers and a door. Although Crean does not disclose a locking device explicitly for drawers, a person skilled in the art would as a matter of routine modify the Crean citation to use the locking devices on drawers, since doors and drawers are considered devices of the same type, i.e. devices that can be opened to access and closed to store objects. Consequently claim 25 lacks an inventive step.
Claims 26 and 27 are specific to the embodiment shown in the figures with a solenoid and lever arm. There is no motivation for a person skilled in the art to modify the Crean disclosure to arrive at the solution disclosed in the figures. Consequently these claims are considered inventive in light of Crean.
Conclusion
Claims 20, 23 and 24 lack novelty in light of US 6,793,260 (Crean). Claims 1, 9-11, 14, 17-20 and 23-25 lack an inventive step in light of US 6,793,260 (Crean).
It is clear that there are amendments which would overcome the novelty and inventive step deficiencies as set out in this decision. The Applicant has the remaining time under s 142(2)(e), i.e. until 6 September 2013, to bring the application in order for acceptance consistent with this decision.
Xavier Gisz
Delegate of the Commissioner of Patents