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 on the other of said sheets, said stud comprising a stalk and a cap and said aperture comprising a main opening and a smaller extension wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening but not said extension and said stalk can be retained in said extension with a friction fit.”
(page 1)
The arrangement is readily understood by looking at Figures 3, 4 and 5 (reproduced as Annex 1 of this decision).
“As seen in Figs 3 and 4, the sheet 122 is provided with a pair of generally mushroom shaped lugs 107 which each have a central cylindrical stalk 108 and a substantially flat cap 109. Conversely, the reflector sheet 102 is provided with a pair of keyhole apertures 127 each of which has a central opening 128 and a narrow extension 129 extending therefrom. The extensions 129 are substantially parallel. In addition, the portions of the sheets 102, 122 which are joined together to form the spine 103 each include four holes 111.
In order to move from the unassembled position illustrated in Fig. 3 to the assembled position in Fig. 5, the caps 109 of the lugs 107 are passed through the central openings 128 of the corresponding keyhole apertures 127. This generally locates the two sheets 102, 122 in the correct orientation and configuration. Then the sheets 102, 122 are moved relative to each other in the direction of the spine 103 so as to engage the stalks 108 with the corresponding extensions 129. This results in a friction fit between the lugs 107 and the keyhole apertures 127. The friction fit may be between the stalk 108 and the extension 129, or between the underside of the caps 109 and the surface of the sheets 102, 122, or both.
The end result is the configuration illustrated in Fig. 5 where the holes 111 in the two sheets 102, 122 are aligned. This enables arcuate hanging supports 114 to be secured to the reflector 101 by means of fasteners 115 as illustrated in Fig. 5.”
(page 3)
The claims
The specification ends with eight (8) claims. The applicant has not proposed amendments to the claims, so the claims that I am considering are the claims as filed. The claims are as follows:
1.   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 on the other of said sheets, said stud comprising a stalk and a cap and said aperture comprising a main opening and a smaller extension wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening but not said extension and said stalk can be retained in said extension with a friction fit.
2.   The mechanism as claimed in claim 1 wherein one of said reflector sheets has a plurality of spaced apart mushroom studs and the other of said reflector sheets has a like plurality of like spaced keyhole apertures, the smaller extensions of said apertures being substantially parallel and like aligned.
3.   The mechanism as claimed in claim 1 or 2 wherein said friction fit is between said extension and said stalk.
4.   The mechanism as claimed in claims 1 or 2 wherein said friction fit is between the surface of said reflector adjacent said extension and said cap.
5.   The mechanism as claimed in claims 1 or 2 wherein said friction fit is between said extension and said stalk and between the surfaces of said reflector adjacent said extension and said cap.
6.   A locating mechanism substantially as herein described with reference to Figs 2-5 of the accompanying drawings.
7.   A luminaire incorporating a locating mechanism as claimed in any one of claims 1-6.
8.   A luminaire substantially as herein described with reference to Figs 2-5 of the accompanying drawings.
Claim 1 is directed to a locating mechanism “for a pair of reflector sheets”. The normal meaning of these words is that the claim is directed to the locating mechanism, with the caveat that it is suitable for use on a pair of reflector sheets of a luminaire. However, the stud and slot of the mechanism are each “on” a reflector sheet, so the more reasonable construction is that the claim is directed to reflector sheets that incorporate the locating mechanism. [If the claim were directed to the locating mechanism per se it would be anticipated by several of the documents discussed below.]
The citation
The citation is WO 96/37732. This international application was filed on 24 May 1995 by Paul Andrew Cronk. The international application was published on 28 November 1996. The international application entered the national phase in Australia on 18 November 1997, and was assigned the application number 24416/95. The application has now been sealed as patent number 716550.
The citation relates to the reflector for a light fitting. In one form, the reflector is a pair of sheets that are joined along a spine. This is seen in Figure 1 of the citation (reproduced as Annex 2 of this decision). The citation discusses this Figure at page 3 – 4.
“Referring to FIG. 1 it can be seen that the adjustable reflector device according to this invention comprises a two piece resilient skin formed by two members 1 and 2, comprised of a substantially orthogonally protruding skirt parallel with the longest edge thereof. The sheet members are substantially rectangularly shaped sheet, detachably joined about a spine portion 3 then flexed back against its normal resilience to produce a double parabolic shape, as shown, such that one edge and associated skirt of one sheet member fits neatly inside the corresponding skirt and edge of the other, forming substantially orthogonal alignment between sheets. The sheets are then fixed together and flexed back to achieve a curved shape, such as a double-parabolic shape. The skin may be made of any suitable material such as colour bonded metal, metal, fibreglass, or plastic. The pair of sheet members could be integrally manufactured in a one piece construction – as opposed to being separately formed.”
In Figures 2 and 3 it is seen that the sheets 1 and 2 can have a number of holes in the spine region, which presumably are used for joining the sheets. The citation is otherwise silent on how the sheets are joined.
The objection
The first report issued by the examiner included the following objection.
“Claims 1 – 5 cannot be considered to involve an inventive step over the applicant’s earlier invention in patent WO 96/37732 which discloses a pair of reflector sheets of the doubly arched luminaire type. In this document the sheets are located by being ‘detachably joined’ and ‘fixed together’. No specific means are mentioned, so the person skilled in the art of constructing these type of lighting arrangements would apply all known suitable locating mechanisms to this problem, including the well known method of using mushroom shaped studs and corresponding keyhole shaped apertures (see the English abstract of JP 10326516 A as an example). The actual features of where the friction fit occurs are well known and quite often more to do with manufacturing tolerances than design feature intentions. Hence none of these claims are inventive.”
In the third examination report issued on 17 August 2011 the examiner said:
“JP 10-326516 demonstrates that the ‘mushroom studs’ are known and in particular, known to lighting designers. I believe that ‘mushroom studs’ have been CGK in Australia as a connection method for some decades. US 2992744 A discloses similar sheet metal studs in an application lodged in 1960 and, while it is in the context of a design of shelving which is well known in Australia, clearly shows that mushroom studs have been used for over 50 years to secure together (as they do in the present application).”
In the fourth examination report issued on 28 September 2011 the examiner provided further support for their view that mushroom studs were well known:
“In support of this, please consider (as a non-exhaustive sample):
(a)AU 116598 B (GENERAL ELECTRIC) 4 March 1943 which clearly discloses the use of mushroom studs 58 and keyhole slots 22 in the lighting technology for quick, simple attaching of items together,
(b)AU 18425/88 (LASCON LIGHTING INDUSTRIES PROPRIETARY LIMITED) 5 January 1989 which discloses a luminaire having lamp holder carriers (11) fitted to a reflector unit (8) and channel members (17) fitted to a carrier tray (6) using keyhole slots engaging with mushroom studs,
(c)AU 38821/93 (SPACEMAKER LIMITED) 14 October 1993 disclosing fixing horizontal and vertical members of a shelving unit together using keyhole slots (11) and mushroom studs (17),
(d)AU 14020/01 (THE STEEL CONSTRUCTION INSTITUTE) 25 May 2001 which discloses fixing I-beams together with keyhole slots engaging with mushroom studs.
Clearly the use of keyhole slots and mushroom studs as fastening elements is very widespread. It is considered the Australian non-inventive skilled worker would look at using keyhole slots and mushroom studs as a well known potential solution to joining two items together in a quick assembling method.”
The submissions and evidence of the applicant
The applicant provided a response to each report issued by the examiner. The points coming out of these responses are as follows.
Response dated 20 October 2010
“there is evidence that persons skilled in the art when confronted with the problem of the present invention as set out at page 2 lines 8 and 9 reading ‘Hitherto, this assembly process has been relatively time consuming because of the number of bolts, nuts and like fasteners which must be assembled’, then such persons skilled in the art have not come up with the present invention.
In this connection, the Examiner’s attention is directed to the specification of Australian Patent No. 759,306 (The Sunnyfield Association). That specification refers to the same prior art as is referred to in present application and goes on to state at page 1 lines 22 and 23 that the prior art construction ‘is cumbersome and time consuming to assemble’. Notwithstanding that appreciation of the problem which is overcome with the present invention, the Australian patent goes on to disclose an arrangement where the assembly is continued to be done by means of nuts and bolts.”
Response dated 1 August 2011
“The significance of AU 759,306 is as follows:
(i)It discusses the same starting point prior art as that upon which the Examiner bases objection 1, namely WO 96/37732 (Cronk) which became application no. 24416/95 when it commenced the national phase in Australia.
(ii)At page 1 lines 22 and 23 AU 759,306 states that this starting point prior art ‘is cumbersome and time consuming to assemble’. This is the same problem as discussed at page 2 lines 8 and 9 of the present application.
(iii)According to the Examiner’s hypothesis in objection 1, a PSA confronted with this problem would have used ‘mushroom studs’ to overcome the problem.
(iv)However, AU 759,306 demonstrates not item (iii) above but that the PSA still utilized nuts and bolts. It follows that this is indicative that the claimed arranged [sic] is inventive.
(v)Furthermore, a Japanese patent specification is not evidence of CGK in Australia as the Examiner suggests by the statement ‘JP 10-326516 provides evidence of its use as a solution in lighting applications’. This statement is redolent with hindsight.”
Response dated 30 August 2011
“It is a matter of trite law that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive skilled worker in the field in Australia, equipped with the common general knowledge in that particular field at the priority date, without regard to documents in existence but not part of such common general knowledge. …
In this particular case, we have the situation where the inventor of AU 759,306 must, as an inventor of a granted Australian patent, be considered to be inventive. This person is accordingly at a level above the obviousness standard of a person skilled in the art.
The inventor of AU 759,306 considered the luminaire described in WO 1996/037732 and considered that the nuts and bolts used to assemble that product were cumbersome and did not set forth any proposal to overcome this problem and instead continued to use nuts and bolts.
From a legal point of view, since that inventor is at a level higher than that of a person skilled in the art, even if the inventor had proposed such a solution, it would have not been evidence of lack of inventive step. The fact that the inventor did not propose such a solution is clear contemporaneous evidence that there is an inventive step in claims 1-5.
Furthermore, the Japanese and US patent specifications cited by the Examiner are not evidence of what the common general knowledge in Australia was as of the priority date. Even if they were, the evidence provided by the existence of AU 759,306 and its consideration of the same problem but without any solution, means that claims 1-5 must involve an inventive step.”
Response dated 29 September 2011
“The new prior art cited by the Examiner is not of much assistance to the Examiner’s position. See paragraph 2.5.2.1.6 of the Examiner’s Manual commencing ‘In general “… it is clear that individual patent specifications and their contents do not normally form part of the relevant, and general knowledge …”’.
AU 116,598 discloses contacts 58 and keyhole slots 22 which are used for making electrical contacts. This has nothing to do with fasteners.
AU 18425/88 discloses keyhole slots18 and screws 19 at page 8 line 7. However, at page 7 lines 21 and 22 keyhole slots 15 and lugs 16 are disclosed. There is no indication in the description as to the nature of the lugs 16 and the drawings are also entirely silent showing merely a miniscule black dot.
AU 38821/93 discloses keyhole slots and mushroom studs in the environment of shelving.
AU 14020/01 discloses keyhole slots and mushroom studs in the environment of steel beams.
Since none of the four patent specifications on which the Examiner relies constitute part of the common general knowledge, the combination attempted by the Examiner is impermissible.”
The applicant has also provided three declarations. The declaration of Josh King states:
“2. I am self-employed and operate a hydroponics retail outlet known as H2O HORTICULTURE and have done so since 2006.
3. Annexed hereto and marked ‘A’ is Fig. 1 of International Patent Application No. PCT/AU95/00303 published under no. WO 96/37732. I am familiar with and have sold the device of attachment of [sic] ‘A’ and am aware that the two sheets that go to make up the reflector are held together by means of nuts and bolts.
4. Annexed hereto and marked ‘B’ is a copy of Figs 3-5 of Australian Patent Application No. 2008229901 which is in respect of a development of the basic reflector of attachment ‘A’ and in which the two sheets of the reflector are held together by means of mushroom shaped studs and key hole shaped sockets.
5. About 2011 after the introduction of the reflector of attachment ‘B’ I received a batch of defective reflectors which had been made from sheet steel which was too thick for the mushroom shaped studs. Accordingly, the mushroom shaped studs and the key hole shaped slots could not inter-engage and the reflector could not be assembled.
6. Since I have already paid for this stock, in order to salvage the situation I drilled out the mushroom studs and provided nuts and bolts to secure the two sheets of the reflector together.
7. The normal sale price of the reflector including the mushroom studs was approximately $165.00 and so I offered the reflectors with the nuts and bolts replacing the studs at a discount of approximately 40% being $100.00.
8. However, my customers refused to purchase the modified mushroom stud reflectors because they did not wish to be involved in the tedium of assembling the reflectors utilising nuts and bolts. Instead, they preferred to firstly pay the higher amount for the mushroom stud reflectors, and secondly wait until the delivery of a new batch of mushroom stud reflectors.
9. In my experience I have not known a situation in which a reasonable discount such as that offered above would not clear stale or defective stock. I therefore concluded that the avoidance of the tedium of assembling the nuts and bolts is a significant advantage to the customer and one for which the customer is prepared to pay a premium.”
The declaration of Grant Creevy states:
“2. I am the Chief Executive Officer of ACCENT HYDROPONICS PTY LTD of 1/5 Clerk Place, KURNELL, New South Wales, 2231 a company which manufactures electrical products including light fittings predominantly for hydroponic use.
3. Annexed hereto and marked ‘A’ is Fig. 1 of International Patent Application No. PCT/AU95/00303 published under no. WO 96/37732. I am familiar with and have sold the device of attachment of [sic] ‘A’ and am aware that the two sheets that go to make up the reflector are held together by means of nuts and bolts.
4. Annexed hereto and marked ‘B’ is a copy of Figs 3-5 of Australian Patent Application No. 2008229901 which is in respect of a development of the basic reflector of attachment ‘A’ and in which the two sheets of the reflector are held together by means of mushroom shaped studs and key hole shaped sockets.
5. I first became aware of the reflector assembled using nuts and bolts of annexure ‘A’ about 1996 following its release onto the Australian market.
6. I was aware that a competing manufacturer ABLITE, a division of the Sunnyfield Association, attempted to improve upon the product of annexure ‘A’. Annexed hereto and marked ‘C’ is a copy of Australian Patent Specification No. 759306 filed by the Sunnyfield Association. I was aware that the reflectors described therein were introduced into the Australian market by the Sunnyfield Association, but without commercial success. There reflectors were assembled from sheet metal using nuts and bolts.
7. Until the introduction of the product described in specification attachment ‘B’ about 2002, I was not aware that mushroom studs and key hole shaped apertures were a possible interconnection device for a pair of metal sheets.”

The declaration of Fraser Patison Old states:
“2. I am the patent attorney who represents Mr Cronk in respect of the abovementioned Australian patent application.
3. I conducted a search of the Australian Patent Office records in order to locate Australian patent specifications having Mr John Ferguson as inventor and have located the following applications or granted patent nos.
1984 29252;
1999 33140 (759306);
2002301830;
2002300057;
2003203834; and
2009201078.
4. I commenced practicing as a patent attorney during the 1970’s and acted for a company Ferguson Transformers Pty Ltd which was owned by Mr Doug Ferguson who is the father or Mr John Ferguson. I have examined the drawings of the specification of application no. 1984 29252 (which in 1984 was referred to as application no. 29252/84) and recognised the hand written designations of the drawings of that patent specification as being in my own handwriting. Accordingly, I am able to say that I drafted the specification of Application No. 29252/84 during my period at Spruson and Ferguson.
5. I note that Mr John Ferguson’s name appears as John Ferguson, John Knox Douglas Ferguson and John Knox Rowley Ferguson. I was once told by Mr Doug Ferguson that his son John had many names because he was late in registering his son’s birth with the Registrar of Births, Deaths and Marriages (or equivalent office) and that in order to curry favour with an official of that office, and thereby avoid a fine or similar penalty, Mr Doug Ferguson added an extra name being the name of the official. As a consequence, Mr John Ferguson has more names than most Australians.”
In reaching my decision I have had regard to all of this material, as well as the submissions made by the applicant in a letter dated 16 February 2012.
The law on inventive step
According to section 7(2), an invention is 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 art in the light of the common general knowledge (either on its own or together with relevant information). It is well established that the obviousness question can be formulated as follows:
"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."
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286
The High Court in Aktiebolaget Hassle v Alpharpharm Pty Ltd (2002) 212 CLR 411 at 433 [53] stated that it is also permissible to use the "Cripps question":
Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and the facts, directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem
It is clear that any potential solution to a problem will not be obvious unless it would have been a matter of routine to try that solution, but with the significant caveat that there must be an expectation that the potential solution "might well" solve the problem. It is not necessary that success is guaranteed.
The standard of proof that applies to inventive step objections is addressed in section 49(1):
Subject to section 50, the Commissioner must accept a patent request and complete specification relating to an application for a standard patent, if:
(a)the Commissioner is satisfied that the invention, so far as claimed, satisfies the criteria mentioned in paragraph 18(1)(b);
This provision reflects an amendment in 2001 to insert a "balance of probabilities" test. The Explanatory Memorandum, Patents Amendment Bill (2001) relevantly states:
"This item amends subsection 49(1) of the Patents Act to raise the threshold of the test the Commissioner must apply when assessing an invention against the criteria of paragraph 18(1)(b) of the Patents Act (novelty and inventive step). The amendment replaces the existing 'benefit of doubt' test with a more stringent test for the Commissioner to apply when assessing an invention against these criteria. The benefit of any doubt will continue to apply to the other matters the Commissioner considers under this subsection, but in making a decision as to whether an application meets the requirements of novelty and inventive step, the Commissioner must now be satisfied that there are no lawful grounds of objection."
The standard of proof that applies to inventive step objections is the balance of probabilities.
Consideration
I do not think there is any dispute that the problem addressed by the present application is a luminaire arrangement that allows for more convenient assembly. This problem is solved by the use of a keyhole slot and mushroom stud mechanism to join the reflector sheets of the luminaire.
The evidence produced by the examiner is a number of patent applications that show the use of keyhole slots. The examiner has not argued that any of these documents are themselves common general knowledge, and indeed such an argument could not be sustained. The examiner has advanced these documents to show that the concept of using keyhole slots and mushroom studs to join metal elements is well known.
The documents cited by the examiner were filed between 1942 and 2001. The documents show keyhole slots used in joining metal elements in light fittings, shelving, and construction. I conclude from this that keyhole slots are a known means for joining metal elements. Further, they have been known for a long time, and are known in a wide range of applications. It is a safe inference that they are widely known as a joining means.
The design of a keyhole slot is such that it is intended to mate with a matching stud. The studs in the documents cited by the examiner are described in various ways. In patent application 18425/88, keyhole slots are used in conjunction with screws (feature 19 in the Figures) or lugs (feature 16 in the Figures). The nature of the lug is not apparent in the Figures, but their function is described on page 7:
“In this embodiment of the invention each lamp holder carrier (11) is fitted to the reflector unit (8) by inter-engagement of a series of keyhole slots (15) in the lamp holder carrier (11) with a corresponding series of lugs (16) provided on the reflector unit (8). This arrangement permits the lamp holder carrier (11) to be mounted on the reflector unit in clip-on manner.”
The nature of the lugs is clearly of the mushroom type. Further, it is apparent from this text that the authors considered the details of the lug to be a matter that did not require detailed explanation, suggesting that it was well known. With regard to the use of screws, they are clearly a less elegant version of a mushroom stud.
Similarly, in patent 116,598 members are described as having an enlarged head so they can be inserted in the keyhole slots. This is clearly a mushroom stud by another name. Similarly, in patent 773023 studs of different shapes are illustrated, but clearly they are also of the mushroom type.
Although the term “mushroom stud” is not used in these documents, it is apparent that the studs that are discussed are of this type. I conclude that studs that could be described as mushroom studs were normally used with keyhole slots.
Mr Creevy has declared that he was unaware of keyhole slots and mushroom studs as a means for joining metal sheets. I accept the truth of this statement. Mr Creevy is the Chief Executive Officer of a company that manufactures electrical fittings. There is nothing to suggest that Mr Creevy has a background in joining metal sheets, but for the purposes of this decision I will assume that he does. The applicant invites me to infer that because Mr Creevy was unaware of the use of keyhole slots and mushroom studs that they were not well known in the art. I can see no logical basis for such an inference.
On balance I believe that keyhole slots and mushroom studs were a well known means of joining metal elements. It follows that a person seeking to solve the problem addressed by the present application would reasonably have been expected to try keyhole slots and mushroom studs because they were well known and their design is likely to solve the problem. While it cannot be said that keyhole slots and mushroom studs would be the only thing that a person would think of, it is clearly a solution that it would have been a matter of routine to arrive at. Thus there is a prima facie case of lack of inventive step.
The evidence of Mr King indicates that his customers refused to purchase a product where the mushroom studs had been drilled out and replaced with bolts. The applicant’s submissions on this point are:
“the declaration of Mr King is that customers who had become aware of the invention were not prepared to revert to the prior art because they wished to avail themselves of the advantages offered by the invention.”
This brings to mind the statement in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 239:
"Commercial success can never of itself be decisive of inventiveness but it is a material matter, the weight of which must be determined by reference to all the surrounding circumstances."
The commercial success in the Meyers Taylor case was that the manufacturers of caravans purchased large quantities of the new windows, and subsequently manufactured an article that could only be described as a copy in all material respects. In the present case the evidence relates solely to a defective product that was altered to imitate the former product. Customers were unwilling to purchase the defective product that had been altered, even at a discounted price. The comparison of a defective product with the present invention is not a fair comparison, and not the sort of comparison that was considered in Meyers Taylor. To some extent it supports a conclusion that customers preferred the new product (which suggests commercial success), but it may also be an indication that the defects in the defective product were not overcome by simply drilling out the studs. In the absence of a full understanding of the defective produce, I am forced to give this evidence very little weight.
Finally there is the evidence of Mr Old. The applicant submitted:
“The declaration of Fraser Old makes it clear that the inventor of AU 759,306, Mr John Ferguson, is a prolific inventor and thus of a higher standard than required for the test for inventive step. Notwithstanding this higher standard, Mr John Ferguson did not conceive of the present invention even though being aware of the problem of WO 1996/037732.”
It is true that John Ferguson is listed as the inventor of patent 759,306 (which was filed in 1999). The specification of 759,306 recites that the prior art luminaires suffered from the problem that they were
“cumbersome and time consuming to assemble. Also the lampholder mounting arrangement is prone to sagging following the cantilevered installation of the lamp”
I note that the evidence shows that luminaires are supplied in a flat pack and are assembled from a large number of components. The specification of 759,306 does not particularise the aspect(s) of assembly that is cumbersome and time consuming to assemble. Specifically, there is no statement that joining the sheets of the reflector is cumbersome and time consuming. Instead, the specification is particularly concerned to strengthen the spine formed by joining the sheets, by use of a V-shaped member. I can see no reason to consider that Mr Ferguson was aware of a problem in relation to the complexity of joining the sheets. Consequently, the fact that he did not solve a problem of which he was unaware is unsurprising. I do not see how I can draw any useful inference from this patent, or the involvement of Mr Ferguson in its creation.
The examiner has provided a prima facie case of lack of inventive step. That must be weighed against the evidence of Mr King and Mr Old. I noted above that this evidence provides little assistance to the applicant. On the balance of probabilities, I consider that there is a lack of inventive step. The examiner raised the objection against claims 1-5. The features in the appended claims relate to the use of a plurality of mushroom studs and keyhole slots, and details of the friction fit. I agree that these claims do not add anything that can be seen as inventive. I conclude that the invention defined by claims 1-5 lacks inventive step in the light of the citation.
I believe that it is possible to overcome this objection by amendment. For instance, the application could be converted to a patent of addition, or the claims could be restricted to the invention covered by claims 6 to 8. The application will not lapse under section 142(2)(e) until after 8 July 2012, so I allow the applicant the remainder of this period to propose suitable amendments.
Dr S.D.Barker
Delegate of the Commissioner of Patents
ANNEX 1
Figure sheet 3 of the specification of patent application 2008229901
ANNEX 2
Figure 1 of the citation