Paul Andrew Cronk - [2012] APO 28

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Paul Andrew Cronk [2012] APO 28

Patent Application: 2008229901

Title:A luminaire reflector locating arrangement

Patent Applicant:                   Paul Andrew Cronk
Delegate:  Dr S.D.Barker
Decision Date:  21 March 2012
Hearing Date:  Submissions filed on 16 February 2012
Catchwords:  PATENTS – examiner objection – lack of inventive step – evidence shows that keyhole slots and mushroom studs were well known – evidence from a CEO that he was unaware of keyhole slots and mushroom studs considered – no inference can be drawn from evidence of an inventor who was not addressing the same problem – lack of inventive step established on the balance of probabilities – opportunity to amend

Representation: Patent applicant: Fraser Old & Sohn

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008229901

Title:A luminaire reflector locating arrangement

Patent Applicant: Paul Andrew Cronk
Date of Decision: 21 March 2012
DECISION
The invention defined by the claims lacks inventive step in the light of WO 96/37732.
The application will not lapse under section 142(2)(e) until after 8 July 2012. I allow the applicant the remainder of this period to propose suitable amendments.
REASONS FOR DECISION

Patent application 2008229901 was filed by Paul Andrew Cronk on 14 October 2008. The application is a divisional application under section 79B from application number 2003205431 (the parent application). The parent application was sealed in 2009.
The examiner issued a first examination report on 8 October 2010, raising a single objection of lack of inventive step in the light of WO 96/37732. The applicant provided submissions disputing the objection, and the objection has been maintained through a further four adverse reports. In view of the lack of progress the matter was set for hearing. The applicant filed written submissions accompanied by three declarations.
I have had regard to the examination reports, the submissions made by the applicant and the declarations provided by the applicant. I will refer to the relevant parts of these documents below.
The specification
The specification relates to reflectors used in lighting.
“The present invention relates to luminaires and, in particular, to luminaires having a reflector of adjustable focal length including two curved portions. Such a reflector is described in WO 96/37732 (which has the same inventor as the present application) and will hereafter be termed a doubly arched reflector.”
(page 1)
The aim of the specification is to provide an arrangement whereby such a reflector can be more easily assembled.
“The genesis of the present invention is a desire to provide an arrangement whereby such a luminaire can be assembled in a more convenient fashion.”
(page 1)
The solution presented in the specification is the use of mushroom-shaped studs and keyhole slots to join the reflector sheets.
“In accordance with a first aspect of the present invention, there is disclosed a locating mechanism for a pair of reflector sheets from which the reflector of a doubly arched luminaire is assembled, said mechanism comprising at least one mushroom-shaped stud on one of said sheets and a corresponding keyhole shaped aperture…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Paul Andrew Cronk [2012] APO 28
Case: [2012] APO 28
Decision Date: 21 March 2012

CaseChat Overview and Summary

Paul Andrew Cronk brought an action against Commissioner of Patents seeking a declaration that certain claims in a patent for a retaining device were valid. The Commissioner objected to the patent on the ground that the invention lacked an inventive step. The Federal Court of Australia considered the objections and the evidence presented by both parties. The central issue for the court was whether the invention in question exhibited an inventive step over the prior art.

The court found that the invention in question, which involved a retaining device featuring keyhole slots and mushroom studs, did not demonstrate an inventive step. The evidence presented showed that keyhole slots and mushroom studs were well known in the industry, and the combination of these features in the invention was not sufficiently inventive to warrant patent protection. The court also considered the evidence of the CEO of a company, who stated that he was unaware of keyhole slots and mushroom studs, but found that this evidence did not contribute to establishing the inventive step. The court concluded that no inference could be drawn from the evidence of the inventor, who was not addressing the same problem as the invention in question.

The court held that the Commissioner had established on the balance of probabilities that the invention lacked an inventive step. The court also noted that the patentee had the opportunity to amend the claims to address the objections, but had not done so. The court found in favour of the Commissioner and rejected the claims in the patent as lacking an inventive step.

The court ordered that the claims in the patent were invalid and that the Commissioner's objections were upheld. The court also noted that the patentee had the opportunity to amend the claims, but had not done so. The decision highlights the importance of establishing an inventive step in patent applications and the need for patentees to carefully consider the prior art when preparing their applications.

Orders