Patrick James Doherty v Gerard Industries Pty Ltd

[2001] APO 3

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 700240 in the name of PATRICK JAMES DOHERTY

Title:          Lampholder

Action:          Opposition under Section 59 by GERARD INDUSTRIES PTY LTD

Decision:          Issued            .

Abstract

The opposition was unsuccessful.  All of the claims were found to be novel and to possess an inventive step.

The invention relates to a shuttered safety lampholder for a bayonet type light bulb.  The prior art failed to disclose the specific contrarotation shuttering mechanism that was claimed.

The declarant for the opponent had not established that he was competent to attest to the state of the common general knowledge in the art, and thus there was no basis upon which to reach a finding of lack of inventive step.

Costs awarded against the opponent Gerard Industries Pty Ltd.

Patents Act 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent No. No. 700240 in the name of PATRICK JAMES DOHERTY and opposition thereto by GERARD INDUSTRIES PTY LTD.

BACKGROUND

Patent application No. 30496/95 in the name of Patrick James Doherty was filed 6 September 1995.  The application was advertised accepted on 24 December 1998 under the number 700240. Gerard Industries Pty Ltd filed a notice of opposition on 23 March 1999 to the grant of a patent on the application, and filed a statement of grounds and particulars on 23 June 1999.  The serving of evidence was completed on 10 July 2000.

A hearing was set down for 8 November 2000.  Both parties indicated that they did not wish to be represented at the hearing, and would therefore not be attending.  The matter is thus determined solely on the evidence that was served in the course of the evidentiary procedure.

SPECIFICATION

The invention relates to a shuttered safety lampholder for a bayonet type light bulb.  Upon insertion of the bulb, the shutters open to allow access to the electrical contacts in the lampholder, and upon removal of the bulb, the shutters close once more to prevent inadvertent contact with live electrical terminals.

The aim of the invention is to reduce the necessary amount of rotation of the bulb within the lampholder to effect electrical contact.

Prior art shuttered safety lampholders required a large degree of rotation, which required longer horizontal portions of the "J" slots that were therefore prone to fracture in use.  A further problem with the prior art devices is in relation to British and various International standards requiring that the bulb be rotated in the lampholder by no more than a certain predetermined amount, and requiring a minimum diameter of the bulb engaging contacts.  The specification identifies some prior art patent documents that disclose shuttered lampholders that are said to be expected to have problems in satisfying these requirements.

The specification then sets out a consistory statement that corresponds to Claim 1 of the accepted application.  Claim 1 is as follows:

"1.       A safety lampholder for a bayonet bulb comprising a body defining slots to receive bayonet pins of an inserted bulb, bulb engaging contacts within the body for electrical connection to a power source to supply electricity to the bulb and shutter means in the body for selectively obstructing access to the contacts, the shutter means comprising apertured shutter members capable of relative rotation about a common axis between a first position in which their apertures are obstructed and a second position in which they are aligned and arranged so that rotation of an inserted bulb actuates rotation of a first shutter member, wherein means are provided on the first and second shutter members for actuating contrarotation of the second shutter member upon rotation of the first shutter member between a first inoperative position in which the contacts are shielded by at least one of the shutter members and a second operative position in which they extend through aligned apertures in both shutter members for bearing against a bulb, which means comprise hump formations on the first and second shutter members, which hump formations have respective ramp faces which ride over one another on rotation of the first shutter members thereby to cause axial movement and contrarotation of the second shutter member."

Claims 2 to 11 are appended back directly or indirectly to Claim 1, and Claim 12 is an omnibus claim.

The contrarotation of the shutter members is identified in the specification as being responsible for the reduction in the amount of necessary horizontal rotation, and the corresponding reduction in the length of the horizontal portions of the "J" slots.  A variety of preferable features are then set out, some of which are claimed in the appended claims.

STATEMENT OF GROUNDS AND PARTICULARS

The grounds of opposition are stated in the statement of grounds and particulars as:

"(i)That the invention is not a patentable invention because it does not comply with paragraph 18(1)(b)(i) of the Patents Act 1990; and

(ii)That the invention is not a patentable invention because it does not comply with paragraph 18(1)(b)(ii) of the Patents Act 1990."

The following patent documents are given as particulars of both these grounds: AU 671699, AU 671021, AU 669811, GB 2280550, GB 2279825, GB 2267607, and US 4461523, and, as well, some items of common general knowledge are given as particulars of ground (ii).

EVIDENCE

The evidence in support consists of a declaration dated 20 December 1999 made by Manfred Zockel, currently Honorary Visiting Research Fellow in Mechanical Engineering at the University of Adelaide. 

The evidence in answer consists of a statutory declaration dated 27 March 2000 by Patrick John Doherty (although at some places in the declaration he is identified, apparently incorrectly, as Patrick James Doherty, who is the applicant and inventor).  There are two exhibits to the declaration, the first being the present specification and the second being Australian patent specification 68700/94, the substantially-identical, pre-acceptance form of application 669811.  Mr Doherty is director and company secretary of Seapart Ltd, and is involved in designing, developing and marketing lampholders.  He visits Australia two to three times each year, and claims thus to be aware of common general knowledge in Australia in the appropriate area of technology.

The evidence in reply consists of a second statutory declaration dated 6 July 2000 by Manfred Zockel.

More details of what is stated in the evidence, where relevant, will be given later in the decision.

DECISION

Novelty

The only document mentioned in the particulars which was addressed by the evidence was AU 669811, and chiefly in relation to the ground of novelty.  No other document was the subject of evidence.

The test for determining whether the invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 288 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 whether the alleged anticipation would, if the patent were valid, constitute an infringement."

Infringement occurs when "each and every one of the essential features" of the claim has been disclosed in the prior document: See Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at page 391.

Claims 1, 2, 7 and 8 of AU 669811 are a convenient summarization of what is disclosed in that document relevant to the issue of novelty (and inventive step) of the present application:

"1.       A safety lampholder for a bayonet bulb comprising a body defining slots to receive bayonet pins of an inserted bulb, bulb engaging contacts within the body for electrical connection to a power source to supply electricity to the bulb and shutter means in the body for selectively obstructing access to the contacts, the shutter means comprising apertured shutter members capable of relative rotation about a common axis between a first position in which their apertures are obstructed and a second position in which they are aligned and arranged so that rotation of a bulb actuates rotation of a first shutter member, means being provided in the housing for actuating contrarotation of a second member between a first inoperative position in which the contacts are shielded by at least one of the shutter members and a second operative position in which they extend through aligned apertures in both shutter members for bearing against a bulb."

2.        A safety lampholder according to Claim 1 wherein the apertured shutter members are axially movable within the lampholder body.

7.        A safety lampholder according to any preceding claim wherein the means for actuating contrarotation of the second shutter member are driven by rotation of the first shutter member.

8.        A safety lampholder according to any preceding claim wherein the means for actuating contrarotation of the second shutter member comprise circumferentially spaced formations on opposing surfaces of said first and second shutter members and a displaceable member located between said first and second shutter members so as to be rotatable about an axis perpendicular to the common axis of rotation of the shutter members, said displacable members having formations interengagable with shutter member formations and arranged such that rotation of a first shutter member by a bulb is effective to drive rotation of the displacable member to actuate rotation of the second shutter member in the opposite direction to the first shutter member."

The only feature of Claim 1 of the present application that is not present in Claims 1 and 8 of AU 669811 (apart from some trivial changes in wording) is the specific means for actuating the contrarotation, which is defined in present Claim 1 thus:

"which means comprise hump formations on the first and second shutter members, which hump formations have respective ramp faces which ride over one another on rotation of the first shutter members thereby to cause axial movement and contrarotation of the second shutter member."

However, figures 10, 13 and 14 of AU 669811 do show both shutter means 30 and 50 (the contact carrier) having humps 41, 42 and 55 with respective ramp faces.  The corresponding part of the description states (at page 31 lines 5 to 32):

"The hump formations 41, 42 and 55 also cause the carrier to be displaced axially inwards of the housing 10 as it is rotated.  Thus the carrier 50 is moved axially inwards of the housing 10 as the humps 55 rise up the first ramp faces 41A of the humps 41, and outwards of the housing 10 as humps 55 move down the second ramp face 41B. … as the humps 55 ride over the humps 41 and 42, the shutter 30 and the carrier 50 are simultaneously being rotated in opposite directions to each other."

Thus the only issue remaining to be resolved in determining the novelty of the present claims is whether or not in AU 669811 the ramp faces riding over one another causes the contrarotation.  It clearly occurs simultaneously, but the question is whether the contrarotation is caused by the ramp faces of the humps riding over one another, or whether it is caused by the transversely movable actuating member 60 present in the apparatus disclosed in AU 669811 (the "displaceable member" referred to in Claim 8).  Both parties , not unexpectedly, have put forward evidence providing support for their side of this question.

From what is defined by Claim 8 and stated by the corresponding description at page 29 of AU 669811, the contrarotation of the second shutter (contact carrier) 50 would appear to be produced by (as shown especially figure 10 of AU 669811) the cams 36 and 36A of the shutter 30 causing cam followers 67A and 67B disposed on the actuating member 60 to move the actuating member transversely.  A cutout 63 on the actuating member 60 interacts with a limb 54 on the second shutter (contact carrier) 50, which converts the transverse motion of actuator 60 into rotational motion of the carrier 50 in the opposite direction to that of the shutter 30.  Hence contrarotation is caused by the cam and cam followers converting rotational into transverse motion, and the cutout and limb converting transverse into contrarotational motion. 

Present Claim 1 has been worded to limit the safety lampholder to one in which the ramp faces of the hump formations ride over one another "to cause axial movement and contrarotation" (my emphasis).  The verb "cause" is defined in The Macquarie Dictionary (2^nd Revised Edition) as meaning "to be the cause of", wherein the noun is defined as "that which produces an effect".  The interaction of the humps in AU 669811 is not involved in the contrarotation mechanism, and so it cannot be considered to produce the effect of contrarotation.

In his second statutory declaration, Dr Zockel advanced several arguments which I will touch on briefly.

In paragraph 4 of the his declaration Dr Zockel includes an argument that

"669811 … illustrate(s) the use of interengaging humps with inclined surfaces for producing axial movement of the second shutter members and also for producing, or the ability to produce, contra rotation of the two shutter members".

As I have already stated, I do not consider that the interengaging humps of AU 669811 do produce the contrarotation.  As to whether the prior art humps have "the ability to produce" the contrarotation, I do not see as being relevant, as the present Claim 1 is quite clearly limited to humps that cause the contrarotation.

Paragraph 5(c) of Dr Zockel's declaration alleges that the fourth embodiment of AU 669811, illustrated in figures 23 to 25,

"does not require a third element, whether sliding or rotating, to achieve the contra rotation."

Even for the sake of argument accepting the correctness of this assertion, the fact remains there is no disclosure in AU 669811 of a lampholder that does not have the slidable member, nor any disclosure that the slidable member is not required for this embodiment.  Indeed, page 40 lines 4 and 5 state in relation to this embodiment that

"All other aspects of this embodiment are identical to that of Figs. 10, 11 and 17 to 18."

Hence it seems that if the earlier embodiments did require the slidable member, then so must the embodiment of figures 23 to 25.  This seems a case where even the signpost is missing that is referred to in  the well known quote from General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited [1972] RPC 457 that

"To anticipate the patentee's claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.  The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."

So even accepting that as a practical matter the slidable member is not required, the document still fails to disclose a device that does not have the slidable member.

In paragraph 5(e) of his declaration Dr Zockel argues that

"The cause of rotation in both shutters is the same … viz. the rotation of the lower shutter by the bulb, irrespective of any intermediate elements …."

I do not agree that the cause is the same in both applications.  The present Claim 1 is limited to contrarotation caused by the humps riding over one another, whereas the prior art discloses a contrarotation mechanism that is caused by a mechanism that makes no use of the humps.  Hence I disagree with this assertion.

Paragraph 6 ends with the sentence

"I say also that claim 1 of the opposed patent clearly does not exclude the presence of an intermediate slidable element of the kind shown in the fourth embodiment of 669811."

Claim 1 includes at line 23 the phrase "… which means comprise …" (my emphasis).  According to the decision in General Clutch Corporation v Sbriggs Pty Ltd [1997] 499 FCA (6 June 1997), "comprise" is generally taken to mean "consists of", which construction would exclude further elements.  On the other hand, a non-exhaustive construction may be given where appropriate from the reading of the specification as a whole - see Abbott Laboratories v Corbridge Group Pty Ltd [2000] FCA 1713 (24 November 2000). However, in the present case, I note the following text from page 22 line 25 to page 23 line 6 of the present specification:

"It will be appreciated that various modifications may be made to the illustrated embodiments.  …  Also, first and second shutter members may interengage in various ways to effect the contrarotation.  It is, however, a particular advantage of the present invention that it provides for one shutter member to drive directly the contrarotation of another shutter member."

Hence, on a proper construction of the specification, the existence of an intermediate slidable element driving the contrarotation of the second shutter member is clearly outside the scope of the present claims.

Paragraph 7 of Dr Zockel's second declaration refers me to Claims 2, 7 and 8 of AU 669811.  However, as I have already noted none of these claims include the limitation that the ramp faces ride over one another on rotation of the first shutter member to cause contrarotation of the second shutter member.

In conclusion then, the distinction of "to cause axial movement and contrarotation" is, I believe, sufficient to confer novelty on the presently claimed invention over what is disclosed in the prior art, particularly bearing in mind where the benefit of the doubt lies in opposition actions, as expressed by the High Court in Microcell Ltd.'s Application 102 CLR 232:

"it is well settled that the Commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid."

Hence I find Claim 1 to be novel in light of AU 669811.  Claims 2 to 12 are similarly novel.  Claims 1 to 12 are also novel in light of the other prior art documents which were mentioned in the statement of grounds and particulars but which were not the subject of any evidence.

Inventive Step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:

(a)common general knowledge; or

(b)common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

A finding of lack of inventive step thus requires, as a precursor, that the state of the common general knowledge in the art be established

A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.

However, there is no evidence from the opponent as to the state of the common general knowledge.  The closest that Dr Zockel comes to declaring as to the state of the common general knowledge is a reference to a feature being "trivial and obvious".  This reticence on the part of Dr Zockel as to the common general knowledge is perhaps understandable, since I note from Dr Zockel's first declaration that his professional experience covers the following fields:

·    He has an engineering honours degree for a thesis on "Vane-type Rotary Engine"

·    He has a PhD for a thesis on "Impact of High speed Jets on a Surface"

·    He is a Fellow of the Institute of Engineers, Australia

·    He is a Fellow of the Royal Society of the Arts, Commerce and Industry.

There is no evidence that Dr Zockel has had any prior experience in the field of lampholders.  His theses are clearly unrelated, and he provides neither any evidence that he has had any experience in a relevant field, nor even a bare assertion of this fact.

From his second declaration, he refers to his "28 years as a professional engineer in research, academia and industry, with the last 12 years as a visiting consultant on product and process design with the South Australian Centre for Manufacturing."  Once again, there is neither evidence nor assertion that this work is in the field of, or a field related to, lampholders.

I am aware that in the decision of the Federal Court in Elconnex Pty Limited v Gerard Industries Pty Limited (1992) AIPC 90-848 (1991) 105 ALR 247 (1991) 22 IPR 551 (1991) 32 FCR 491 the expert evidence of a Dr Manfred Zockel, who I assume to be the same as the present Dr Zockel, was accepted by the court. However, the invention in that case was concerned with corrugated plastic pipe connectors, and consequently I do not consider any inference may be drawn relevant to the present matter from the approach taken by the court in Elconnex v Gerard Industries.

Therefore I am led to conclude that Dr Zockel has not demonstrated that he is competent to attest to the common general knowledge in the relevant field.  As such I am unable to attach any weight to his assertions in relation to lack of inventive step.

Accordingly I find that, having regard to the evidence in this opposition, the invention defined in claims 1 to 12 involves an inventive step.

CONCLUSION

The opposition fails on both the grounds which were relied on.

Unless the Commissioner is served with a notice of appeal within 28 days of the date of this decision, I direct that the application proceed to sealing.

COSTS

In accordance with the general principle that costs follow the event, I award costs against the Opponent, Gerard Industries Pty Ltd.

E. J. Knock

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Freehills Carter Smith Beadle

Patent attorneys for the opponent   :  Madderns Patent and Trademark Attorneys