Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd - [2020] APO 35

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd [2020] APO 35

Patent Application: 2014253680

Title:Terminal and Disconnection Link

Patent Applicant:                   Pivot Electronics Pty Ltd
Opponent:  Phoenix Contact GmbH & Co. KG
Delegate:  M. G. Kraefft
Decision Date:  23 July 2020
Hearing Date:  29 April 2020

Catchwords: PATENTS – section 59 – opposition to grant of patent – regulation 5.22 – physical devices available arising from notice to produce pursuant to section 210(1)(c) – whether claimed invention is novel – whether claimed invention involves inventive step – opposition successful – opportunity to amend specification allowed.

Representation: Counsel for the applicant: Mr Ben Gardiner
Patent attorney for the applicant: Mr David Lee, FB Rice.

Counsel for the opponent: Mr Ian Horak
Patent attorney for the opponent: Mr Ray Tettman, Watermark Intellectual Property.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014253680

Title:Terminal and Disconnection Link

Patent Applicant: Pivot Electronics Pty Ltd
Date of Decision: 23 July 2020
DECISION
Claims 1, 2 and 10-12 are not novel. Moreover, claims 1-3 and 10-14 do not have an inventive step.
The applicant is allowed two (2) months from the date of this decision to propose suitable amendments under section 104 to overcome these findings.
Costs in accordance with Schedule 8 awarded against the applicant, Pivot Electronics Pty Ltd.
REASONS FOR DECISION
BACKGROUND

Utelme Pty Ltd filed patent application 2014253680 on 15 April 2014 as an international application under the Patent Cooperation Treaty (“PCT”). The application claims priority from an Australian provisional application filed on 16 April 2013 (“the priority date”).
Following a change of name of the applicant, the present application is now proceeding in the name of Pivot Electronics Pty Ltd (“the applicant”).
The application was advertised accepted on 10 May 2018. Phoenix Contact GmbH & Co. KG (“the opponent”) filed a notice of opposition on 10 August 2018. A statement of grounds and particulars followed on 12 November 2018.
The opponent completed and filed evidence in support on 12 February 2019.
Subsequently the applicant requested that the Commissioner of Patents issue to the opponent a notice to produce pursuant to section 210(1)(c) of the Patents Act. The applicant stated that it required the production of four devices referred to in the opponent’s evidence. A deputy commissioner issued the notice on 15 March 2019. The opponent complied with that notice on 19 March 2019.
The applicant completed and filed evidence in answer on 13 May 2019. The opponent completed and filed evidence in reply on 12 July 2019.
The applicant contended on 12 August 2019 that parts of the opponent’s evidence in reply was new evidence and was not strictly in reply to the applicant’s evidence in answer. A day later, the opponent sought to bring additional information to the attention of the Commissioner of Patents under regulation 5.23, and sought to make a commensurate amendment to its statement of grounds and particulars. The latter material appeared to be unrelated to the applicant’s assertions that parts of the opponent’s evidence in reply were not strictly in reply. In any case and after taking comments from both parties, a delegate of the commissioner declined to invoke regulation 5.23 and declined to allow the amendment to the statement of grounds and particulars. At the hearing, the applicant indicated that it no longer pursued the contention that parts of the opponent’s evidence in reply were not strictly in reply.
SPECIFICATION
The specification introduces the present invention as relating to electrical terminals particularly for industrial applications, and in particular that the invention provides a terminal unit incorporating a removable link.
As background, the specification discusses screw-less type terminals which are often used to make permanent wiring connections to industrial equipment. Screw-less type terminals generally include a strong spring that maintains pressure on a conductor clamp in which the terminated conductor is securely retained.
In industrial situations, the specification indicates it is sometimes necessary to disconnect a circuit while maintenance is performed on a piece of equipment. Switches may be provided to isolate equipment but there is always the possibility that a switch may be switched on while a worker is working on the connected circuit. This is often addressed by tagging the switch with a danger tag indicating that the circuit is being worked on. Switches may also be lockable.
Terminals may also be provided with test points and a removable link. Removal of the link may also be used for isolating the circuit for maintenance, but leaves the circuit prone to reconnection without warning if someone replaces the link.
The specification states that prior art disconnect terminals typically use a circular pin as the connection link. The pin fits into a small circular hole similar in size to 4mm test sockets. This is stated to be quite dangerous. If the circular pin is removed, it exposes the hole which has the test points located on either side of it. That is, there are three 4mm holes in a row. With the link removed and a technician working on the circuit, a second technician could in error insert a test lead plug into the centre hole by mistake and expose the workmate to supply voltage.
The specification ends with 17 claims. The full set of claims may be found at Annex A. Claim 1 is the only independent claim. This claim reads as follows.
1.A terminal unit comprising:
a terminal unit body;
a first terminal connector located adjacent a first opening in the terminal unit body for connection of a first conductor passing through the first opening;
a second terminal connector located adjacent a second opening in the terminal unit body for connection of a second conductor passing through the second opening, the first terminal connector and the second terminal connector being axially aligned along a longitudinal axis of the terminal unit body;
a link opening arranged intermediate the first terminal connector and the second terminal connector;
a first terminal connector conductive element extending internally of the terminal unit body from the first terminal connector to a first link connection point at the link opening;
a second terminal connector conductive element extending internally of the terminal unit body from the second terminal connector to a second link connection point at the link opening, the first and second link connection points being accessible via the link opening; and
a removable link comprising a link conductor and a link handle, the removable link being removably insertable into the link opening in a normal orientation, in which the link conductor electrically connects the first link connection point and the second link connection point to electrically connect the first terminal connector to the second terminal connector,
wherein the link handle comprises an insulator which projects from the link opening when the link conductor is inserted to electrically connect the first link connection point and the second link connection point, such that the link handle enables gripping of the link for removal without touching the link conductor,
wherein the removable link includes an insulating sheath surrounding part of the link conductor, and
wherein the link handle and the insulating sheath are of different colours such that the sheath colour is visible when the removable link is inserted into the link opening in a reverse orientation with the link handle inserted in the link opening or when the removable link is not fully inserted into the link opening in the normal orientation.
Figure 2 is illustrative and is reproduced below.
The figure illustrates a terminal unit 100 including a body 101 made of two half shells 102. Two terminals 106 are located at opposite ends of the body 101, only one terminal being visible in the figure. The two terminals 106 are operated by levers 108 which pivot into lifted position to release pressure on a clamp within the terminal and also pivot to a lowered position. In the lowered position, the lever allows pressure to be applied to the clamp to clamp a wire inserted into the terminal. A 2mm test socket 107 is provided above each terminal 106, capable of receiving a 2mm plug for connection of a test instrument or the like.
A removable disconnect link 111 is shown removed from a link opening 203 in the body 101 in which it normally resides. The link 111 comprises a metal staple 202, a first housing part 201, and a second housing part 112 which forms the handle of the link for insertion and removal. Each housing part is assembled from two half mouldings joined together. The first housing part 201 is an insulating shroud moulded in a different colour to that of the handle 112. The removable link 111 may be removed from the link opening 203 and re-inserted in a reverse orientation, where the link handle is inserted in the link opening such that there is no electrical connection between the terminal connectors.
The terminal unit body 101 also has 4mm test points and insulating shrouds 109 located either side of the link opening 203. Additionally, a mounting strip 103 is located on the bottom of the body 101 and provides a DIN-rail mount 104 and a G-rail mount 105 for alternatively mounting the terminal body 101 on either a DIN-rail or a G-rail.
APPLICABLE LAW
The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to Sections 7, 40 and 60 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act. The application was filed after 15 April 2013.
The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent listed two grounds of opposition. These were that the alleged invention defined in each claim was not novel and did not involve an inventive step. The opponent also provided particulars to support each of these grounds.
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr Moritz Krink. He is a product marketing engineer for the opponent and an electrical engineer. At the time of his declaration, Mr Krink had 15 years of experience in the field. He has been involved in product development and marketing of modular connectors including terminal blocks or terminal units.
In his evidence, Mr Krink cited a number of prior terminal units having removable links to indicate that the claims of the application lacked novelty or an inventive step.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Mr Douglas John Stewart and Mr David Lee.
Mr Stewart is a senior signalling engineer for an Australian rail company. At the time of his declaration, Mr Stewart had 19 years of electrical engineering experience in the rail industry. He has been involved in specifying, selection and use of a multitude of types of connectors, including terminal blocks.
In evidence, Mr Stewart principally highlighted differences between the claimed invention and the opponent’s prior art to indicate that the claims were novel and inventive.
Mr Lee is a patent attorney and is responsible for the carriage of the present matter on behalf of the applicant. His evidence includes some photos and explanation indicating that an item referred to in the opponent’s evidence is incorrectly labelled as showing a removable link partially inserted into the link opening. Rather, Mr Lee indicates the removable link is shown inserted into a separate parking hole.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr Krink and Mr Raymond L J Tettman.
Mr Krink accepted that the removable link of the opponent’s major item of prior art could not be inserted into the link opening in the reverse orientation. Whilst noting that this was one of two defined options in claim 1 in respect to the visibility of the sheath colour, Mr Krink maintained that the prior art rendered the claims not novel or not inventive in all other respects.
Mr Tettman is a patent attorney and is responsible for the care and conduct of the present matter on behalf of the opponent. In his evidence, Mr Tettman agreed with Mr Lee in respect to the incorrect labelling of an item in the opponent’s evidence. Mr Tettman further explained how the error occurred. Principally, Mr Tettman did not have an actual sample of the terminal at the relevant time and only had a photograph showing a side view. He subsequently indicated in his evidence how the relevance of the particular terminal as prior art was unaffected.
THE FOUR DEVICES
The four terminal unit devices, which were the subject of the above-mentioned notice to produce, were not formally put into evidence during the normal evidentiary stages.
The four devices have the following designations:-
(a)Weidmuller SAKC 10/35 terminal unit and removable link;
(b)Phoenix Contact P-DI isolation plug and terminal block;
(c)Phoenix Contact UK 4-TG terminal with ST-K 4 disconnect link; and
(d)Phoenix Contact PT-4-FSI/F terminal and link.
Prior to the hearing, both parties made representations to the Patent Office that the presentation of the physical devices in evidence would be of significant benefit and assistance in deciding the present matter. Specifically, the applicant agreed with the opponent’s proposal to provide those devices in evidence.
In a letter dated 14 April 2020, a delegate of the commissioner considered it appropriate to facilitate the supply of the physical devices. The delegate further noted though that, as the devices per se were not previously filed in evidence, they would only become available in deciding the matter if the hearing officer was to invoke Regulation 5.23 with regard to the devices.
The devices were available to me prior to the hearing. During the course of the hearing, both parties agreed that the requirements of sub-regulation 5.23(2) were met. Moreover, neither side spoke against the devices being considered in the present case under Regulation 5.23.
For the purposes of deciding an opposition, Regulation 5.23 enables the Commissioner of Patents to consult a document not formally put into evidence. There is no direct equivalent provision for consulting articles or devices.
Instead, Regulation 5.22 may be more appropriate, by way of a direction, to bring the physical devices into the opposition. As will become apparent later, the presence of the four devices would appear to be of significant assistance in the present case. Whilst some inferences may be made on the functioning of the devices from the documentary evidence, particularly some photographs, those inferences would appear to be substantiated, or not, by the presence of the physical devices. Since both parties agreed for the devices to be considered part of the opposition and made representations about the devices, it may be presumed that the natural justice requirements to the parties (sub-regulation 5.22(2)) with respect to the devices have been met, similar to the requirements of sub-regulation 5.23(2).
I direct that the four devices, the subject of the previous notice to produce, may be treated as if they are evidence in the present opposition.
PERSON SKILLED IN THE ART
Both parties agreed on the principles of law as to the qualities of the relevant person skilled in the art in the present case. The parties also agreed the field of the present invention related to electrical terminals, particularly for industrial applications such as railway track installations. The parties further accepted that the expert declarants in this case were both suitably qualified and experienced in the field to provide expert opinion.
The parties differed somewhat on the weight to be given to the evidence of the declarants. Whilst the opponent acknowledged the employment relationship of Mr Krink with the opponent, the opponent also indicated that Mr Stewart was not entirely independent of the applicant either. On the other hand, the applicant indicated there had never been a direct relationship between Mr Stewart and the applicant. As for Mr Krink, the applicant suggested he has not indicated an understanding of his role in this matter to provide evidence to assist the delegate, rather than being an advocate for the opponent.
In viewing the evidence, I think little turns on the above issues. There is relatively little factual disagreement between the experts. I will weigh the evidence from both sides accordingly if necessary.
CLAIMS CONSTRUCTION – TERMINOLOGY
Individual Expressions
At [20] – [30] of his evidence in answer, Mr Stewart discussed his understanding of a number of terms in the claims, and particularly in claims 1 and 4. In evidence in reply, at [16] and [20], Mr Krink generally agreed with Mr Stewart’s interpretation of those terms. I would also concur with that understanding and will apply it where necessary in this decision.
I will mention the understanding attributed to two terms in particular. In principally relying on the words used by Mr Stewart, normal orientation in this case is taken to mean that the removable link is inserted into the link opening such that the link conductor makes the electrical connection through the terminal. Conversely, reverse orientation is taken to mean that the link handle is inserted into the link opening such that the electrical connection through the terminal is broken, and the removable link is ‘parked’.
The Final Sub-Paragraph of Claim 1
In written submissions and at the hearing, there was significant contention between the parties as to the monopoly claimed for the visibility of the sheath colour.
The opponent described the claim as defining the link handle and insulating sheath of different colours such that the sheath colour is visible: (a) in the reverse orientation; or (b) when the removable link is not fully inserted in the normal orientation. The opponent submitted that approach followed the plain and ordinary meaning of the claim and that the use of the word “or” showed either one but not necessarily both alternatives were being monopolised. The opponent also noted that Mr Krink read the claim in this way and that the two features were disjunctive.
The applicant submitted that claim 1 claimed a terminal unit including a removable link which can be inserted in both a normal orientation and a reverse orientation. The applicant specifically referred to the use of the word “when” in reference to both orientations in support of this construction. The applicant indicated that the word “when” denoted an element of certainty of a situation compared to the word “if” which denoted an element of uncertainty. Thus, the applicant concluded that claim 1 defined a terminal unit that must be capable of accommodating a removable link in both orientations.
A notable point of the above submissions is the applicant’s emphasis on the removable link per se. It is correct that the removable link cannot be inserted in both orientations at the same time. In that vein, one may have a concern if the word “and” instead of “or” were in the claim, as in “when the removable link is inserted in a normal orientation and in a reverse orientation”. Even then though, and in the context of the present two-ended link and in applying long-standing principles of purposive construction (for example, Decor Corporation Pty Ltd v Dart Industries Inc., [1988] FCA 399, (1988) 13 IPR 385 at 400 [14] per Sheppard J.), I think the natural interpretation would be a removable link insertable in a normal orientation and in a reverse orientation but not at the same time.

In any case, the applicant’s contentions appear to be misguided. The final sub-paragraph is not principally concerned with the removable link per se. Instead, the sub-paragraph is concerned with the circumstances under which the sheath colour is visible. At the hearing, the applicant accepted that the claim did not necessarily require the sheath colour to be visible in both orientations.
In this case, I think it is appropriate to adopt the plain and ordinary meaning of the word “or” in the final sub-paragraph of claim 1. That is, the sheath colour is visible when in the reverse orientation or when not fully inserted in the normal orientation, and not necessarily both.
NOVELTY
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty 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; 137 CLR 228 at 235 [20]:
“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 the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co, [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable 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). In a similar vein, what a prior art document teaches is to be distinguished from what might be “included” or “encompassed”. “A prior broad disclosure thus may not be sufficient ‘in the absence of the skilled addressee understanding or perceiving’ the later claimed invention therein” (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No. 3), [2011] FCA 846 at [180]).
Subsection 7(1) also refers to prior art information made publicly available in a single document or through doing a single act for novelty considerations. In respect to doing an act, two types of actions often come to mind in this area. They are prior use, as the opponent has indicated, or prior oral disclosure.
Prior use requires a relatively high standard of proof. The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. stated:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation.”
Similarly, in Aspirating IP Limited v Vision Systems Limited, [2010] FCA 1061, (2010) 88 IPR 52, at [200], Besanko J stated:
“The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
In Damorgold Pty Ltd v JAI Products Pty Ltd, [2015] FCAFC 31, Yates J at [94]-[96] commented on the essential features of the invention (a spring-assisted roller blind mechanism in that case) only being discernible by disassembling the product. Where the evidence pointed to no potential customer having disassembled the product and no complete examination having taken place, then the features of the product were not disclosed to customers. At [96], Yates J stated that the relevant question is not whether the product was made publicly available. In applying the notion of “enabling disclosure”, as explained in Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd, (1995) 33 IPR 1, neither the mere public availability of a product, nor its use in public, necessarily means that the features of the product have been made publicly available.
Weidmuller SAKC 10/35 Terminal Unit
The opponent principally relied on the prior use of terminal units manufactured and sold by a German company called Weidmuller. The particular unit of relevance in the present case is designated the Weidmuller SAKC 10/35 terminal unit. It is illustrated at page A.20 of the Weidmuller SAK-Series Catalogue 2009/2010, exhibited in evidence by the opponent. The opponent also presented evidence of the manufacturing date of a batch of these terminal units that it had acquired. The catalogue date and the manufactured date both pre-date the priority date.
The applicant’s Mr Stewart acknowledged (at [17] and [31] of his evidence) that he was familiar with this unit, amongst others, before the priority date. I am prepared to accept the Weidmuller SAKC 10/35 terminal unit was in prior use before the priority date.
Claim 1
In comparing the Weidmuller terminal unit with the features of claim 1 of the application, the applicant accepted that almost all of the claimed features were disclosed by the Weidmuller device. There was one area of contention between the parties. This related to the above-mentioned construction issue around the final sub-paragraph of claim 1.
Visibility Of Sheath Colour
Claim 1 includes the definition wherein the sheath colour is visible when the removable link is inserted into the link opening in a reverse orientation with the link handle inserted in the link opening or when the removable link is not fully inserted into the link opening in the normal orientation.
At [53] of his evidence in answer, Mr Stewart stated that the SAKC removable link could not be inserted into the link opening in a reverse orientation. The link handle was too large to fit into the link opening. In this respect, both Mr Stewart and Mr Lee further noted that the SAKC terminal was equipped with a separate parking hole.
The opponent noted that the claimed operational features around visibility of sheath colour comprised two alternative options. That is, if one or the other were also present with the SAKC terminal then claim 1 would be anticipated. This is consistent with the above discussion on the construction of the final sub-paragraph of claim 1.
At [21] of his evidence in reply, Mr Krink accepted the removable link of the SAKC terminal could not be inserted into the link opening in the reverse orientation. As for the visibility of the sheath colour when the removable link is not fully inserted into the link opening in the normal orientation, Mr Krink concluded this feature is clearly present in the SAKC terminal.
Having the physical device available in evidence, I would accept Mr Krink is correct.
I conclude that claim 1 is not novel over the Weidmuller SAKC 10/35 terminal unit.
Claim 2
Claim 2 additionally defines the removable link being shaped to cooperate with and engage the terminal unit body for storage of the removable link when the link conductor is not electrically connecting the first and second link connection points. The applicant accepted that, if claim 1 failed for lack of novelty in respect to the Weidmuller device, then claim 2 would fail as well.
The Weidmuller terminal unit has a separate parking slot for the removable link for storage. I conclude that claim 2 is not novel.
Claims 10 to 12
Claims 10 to 12 additionally relate to the provision of a test socket, respectively connected to one of the link connection points, to each link connection point, and wherein the socket is a standard 4 mm test socket located to one side of the link opening.
The opponent relied on photographs (exhibit MK-10) illustrating the Weidmuller terminal unit in an enlarged form. At [49] of his evidence in support, Mr Krink indicated that the illustrations showed versions of the terminal unit with one or two test sockets connected respectively to one or each link connection point, and that each socket is a standard 4 mm test socket located to one side of the link opening. This is substantiated by the physical Weidmuller SAKC 10/35 terminal unit in evidence.
The applicant accepted that, if claim 1 failed for lack of novelty in respect to the Weidmuller device, then claims 10 to 12 would fall as well. I conclude that claims 10 to 12 are not novel.
INVENTIVE STEP
Subsection 7(2) of the Patents Act states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date of the relevant claim, whether that knowledge is considered separately or together with information mentioned in subsection (3).
Subsection 7(3) states the information for the purposes of subsection (2) is any single piece of prior art information, or a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date, be reasonably expected to have combined.
One test for whether an invention is obvious is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v VR Laboratories (Aust.) Pty Ltd, [1981] HCA 12, 148 CLR 262 at 286 [45], Aickin J stated:
"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."
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd, [2002] HCA 59, (2002) 56 IPR 129 at [50] – [53] (“Alphapharm”), appeared to approve of the Wellcome test. In discussing what was meant by a matter of routine, the High Court noted and accepted an affinity with the approach in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd, (1970) 87 RPC 157, of whether the person skilled in the art would directly be led as a matter of course to try what was claimed in the expectation that it might well produce a useful alternative.
In AstraZeneca AB v Apotex Pty Ltd, [2014] FCAFC 99, the court held at [203] that, in formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art either as common general knowledge, or information available under subsection 7(3).
It may be noted that the above cases proceed on a premise that there was a problem to be solved. Moreover, it seems clear from Alphapharm that establishing that something was worthwhile or obvious to try is not sufficient to support a finding of lack of inventive step, noting also at [34] that the phrase “worthwhile to try” is not readily understood to be synonymous with “obvious”. At [58]:
“The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.”
The reformulation of the so-called Cripps question in Alphapharm is consequently not of universal application. From the Full Court of the Federal Court decision, Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft, [2014] FCAFC 73 at [71]:
“We do not think that the plurality in Alphapharm were saying that the reformulated Cripps question was the test to be applied in every case. Rather, it is a formulation of the test which will be of assistance in cases, particularly those of a similar nature to Alphapharm.”
Thus, for example, in Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited, [2013] FCA 163 at [95]:
“For there to be an inventive step, there must be some difficulty overcome or some barrier crossed.”
Common General Knowledge
In Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd, [1980] HCA 9; (1980) 144 CLR 253, Aickin J stated at page 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.”
In Alphapharm at [31], information should not be treated as part of the common general knowledge “in the absence of evidence of its general acceptance and assimilation”.
The opponent submitted that a number of terminal units and features of terminal units formed part of the common general knowledge in the art at the relevant time. The opponent contended that terminal units were known and used in the art and that there was no suggestion of an advance in respect to the units. Similarly, the opponent contended that removable links were commonplace before the priority date.
The opponent further submitted that a link handle and different coloured insulating sheath on the removable link were also known and used widely, and that a reversible parking feature of the removable link in terminal blocks was also common.
The applicant accepted that terminal units with removable links formed part of the common general knowledge. The applicant stressed though that the opponent’s evidence did not establish that any further information was part of the common general knowledge.
I am prepared to accept that terminal units with appropriate removable or disconnect links were common general knowledge at the priority date.
In respect to a link handle and different coloured insulating sheath, the opponent made a number of references to the Weidmuller terminal unit and removable link, and suggested the device itself was part of the common general knowledge. I will turn to the device itself first.
The opponent stated, through Mr Krink’s evidence, that the Weidmuller terminal was widely known and used before the priority date. At [18] of his evidence in support, Mr Krink stated that the terminal unit has been produced by Weidmuller for many decades and was in common use in industrial applications. Mr Krink noted at [21] that the Weidmuller SAK Series Catalogue 2009/2010 (exhibit MK-4) indicated that the SAK family of terminals was launched 55 years ago. At [22], Mr Krink indicated that he became very familiar with Weidmuller SAK terminal units during previous employment at a particular company in the period 2004-2009 as the terminal units were used extensively there.
The opponent also noted Mr Stewart’s familiarity with the terminal unit. At [17] of his evidence in answer, Mr Stewart stated that, before the priority date, he was familiar with and has worked with the Weidmuller SAKC 10/35 unit extensively during his employment in the railway industry.
The applicant acknowledged that both Mr Krink and Mr Stewart were familiar with the Weidmuller unit at the priority date. On the other hand, the applicant submitted that such familiarity, and the opponent’s evidence generally, did not establish that the Weidmuller device, or the features thereof, formed part of the common general knowledge.
The evidence in this case indicates that both Mr Krink and Mr Stewart were familiar with the Weidmuller device at the relevant time and both have cited the extensive use of that device in their previous or current places of employment. While Mr Krink further suggested the device was in common use in industrial applications, there is no corroborating evidence of that in the present case. Moreover, the fact that the SAK family of terminals pre-dates the priority date by more than 55 years, and assuming the present, particular SAKC 10/35 terminal unit was part of that original family, does not appear to particularly help the opponent in the present case. Longevity does not necessarily translate to common use. Mr Krink particularly mentioned a significantly more recent 5-year period where he became very familiar with the device. Overall, I find the opponent has not established that the Weidmuller SAKC 10/35 terminal unit was generally accepted and assimilated as to form part of the common general knowledge at the priority date.
Returning to the features of the link handle and different coloured insulating sheath, the opponent stated that the use of colours on different parts of the link, to designate whether or not the link was active, was widely used, for example on the Weidmuller removable link and on the P-DI disconnection link. In the case of the Weidmuller device, I have found that device was not part of the common general knowledge at the relevant time. In respect to the P-DI link, Mr Krink exhibited a copy (exhibit MK-12) of the opponent’s 2009 Clipline catalogue illustrating this link. While Mr Krink discussed this link extensively in evidence, I am firstly, similarly not satisfied, on the available evidence, that the P-DI link formed part of the common general knowledge at the priority date. Secondly, it is merely the link handle and the link conductor itself that are of different colours, orange and metallic silver respectively. In the P-DI device, there is no separate insulating sheath of different colour to the link handle surrounding part of the link conductor as claimed. The opponent also referred to a terminal in a catalogue from a company called WAGO with a colour coding feature to indicate when the link is not fully inserted. I would regard the status of the WAGO device as similar to that of the P-DI device. Firstly, there is insufficient evidence before me that the WAGO device formed part of the common general knowledge at the relevant time. Secondly, the WAGO disconnect link features a coloured tab either side of the link which is visible when the link is not fully inserted in the terminal unit body. Again, there is no separate insulating sheath of different colour to the link handle surrounding part of the link conductor as claimed.
Overall, I am not satisfied that the link features of the link handle and different coloured insulating sheath formed part of the common general knowledge at the priority date.
In respect to the reversible parking feature, Mr Krink stated, at [65] of his evidence in support, that this feature was common in terminal blocks before the priority date. He cited two of the opponent’s own devices. One was the P-DI plug and terminal block, and the other was the UK 4-TG terminal with ST-K 4 disconnect link. Mr Krink indicated, at [58] of his evidence, that the latter had existed since at least 1986. It may be that the feature has been evident in two devices, and for some time, before the priority date. On the other hand, one may question whether a feature on two of the opponent’s own devices establishes that to have been common general knowledge at the relevant time. Aside from the opponent’s own employee Mr Krink, the opponent has not presented any other evidence in this case that others in the field were aware of these devices. It may also be recalled that these devices were amongst the subjects of the notice to produce. In evidence in answer at [15], Mr Stewart acknowledged being provided with samples of each of those devices. At [17], he indicated which devices he was familiar with before the priority date. Notably, Mr Stewart did not indicate a familiarity with either the P-DI plug or the UK 4-TG terminal with ST-K 4 disconnect link.

I am not satisfied that the reversible parking feature formed part of the common general knowledge at the priority date.
Whether There Is An Inventive Step
Claims 1, 2, 10-12
Earlier, I found that the Weidmuller device anticipated claims 1, 2 and 10-12. Consequently, at the relevant time, there would have been no steps to take, as a matter of routine or otherwise, or no barrier crossed, to lead from the Weidmuller device to the invention as claimed in these claims. In the present case, I find that claims 1, 2 and 10-12 do not have an inventive step.
Remaining Claims
The opponent’s case for lack of an inventive step against multiple claims principally rested on the alleged common general knowledge alone, or on combining the disclosures of the Weidmuller terminal unit with the alleged common general knowledge, as exemplified by other terminal units in the art. I have found above though that, on the available evidence, a rather limited group of features formed part of the common general knowledge at the relevant time. Consequently, the opponent’s approach would appear to be of limited assistance to the opponent in the present case.
In submissions, the opponent also appeared to rely on a combination of pieces of prior art information, specifically that the features of multiple terminal devices when combined led to the claimed invention lacking an inventive step. Subsection 7(3) enables this approach where the person skilled in the art could, before the priority date, be reasonably expected to have combined the pieces of prior art information.
In evidence in support at [7], Mr Krink stated that he had global product responsibility for certain product lines including electrical terminal blocks. He further stated that he also had a close eye on his company’s competition and so was very familiar with electrical terminal blocks produced by many different companies. At [11] of his evidence in answer, Mr Stewart stated that he had researched terminals of all manufacturers over many years. Both Mr Krink and Mr Stewart clearly had a diverse knowledge of multiple terminal devices available from multiple sources. I would conclude a person skilled in the present art could, before the priority date, be reasonably expected to have combined relevant pieces of prior art information.
Claim 3 is appended to claim 2 and additionally defines the insertable reverse orientation feature without the first and second link connection points being connected.
The opponent stated, through Mr Krink’s evidence, that this feature was common in the art and was found in the UK 4-TG terminal block and associated ST-K4 disconnect link as well as the P-DI isolation plug.

100. Because of claim 3’s appendancy, it is clear that a reliance on the Weidmuller device is also required to support the opponent’s case. When discussing claim 2 above, I noted the Weidmuller terminal unit has a separate parking slot for the removable link for storage. On this basis, one could argue there was no motivation, and thus no matter of routine, to provide a reversible parking feature on the link handle for the link opening of the Weidmuller device since a separate parking slot already existed for the link in a normal orientation. On the other hand, it may be recalled that a problem of the prior art, sought to be addressed by the claimed invention, is that of a technician erroneously inserting a test lead plug into the link opening, while the terminal link is removed, and thus exposing a workmate to supply voltage. With the physical Weidmuller device available in evidence, it is apparent that such a mistake would be possible with the Weidmuller device. It is also apparent though that the UK 4-TG terminal block and associated ST-K4 disconnect link as well as the P-DI isolation plug provided a solution to that problem. Mr Krink stated at [40] of his evidence in reply that it would have been readily apparent that the Weidmuller SAKC terminal could be modified to include a reverse parking feature as in the P-DI isolation plug and the UK 4-TG terminal with ST-K4 link. I would agree. At the relevant time and knowing of the P-DI isolation plug and the UK 4-TG terminal with ST-K4 link, it would have been a very simple modification of the tip of the Weidmuller link handle, with no barrier crossed, to make it fit in the Weidmuller link opening in reverse orientation.
101. I conclude that claim 3 does not have an inventive step.
102. Claim 4 is appended to claim 3 and further defines the link handle including a resilient projection that engages a wall of the link opening to retain the handle therein.
103. The opponent offered two devices supposedly disclosing this feature. The first was the Weidmuller terminal device. This device has resilient locking mechanisms on the link conductor. At [69] of his evidence in support, Mr Krink acknowledged the different disposition of the mechanisms on the link conductor for the Weidmuller device compared with the disposition of the resilient projection on the link handle in claim 4. Nonetheless he stated the functionality was the same and was an obvious equivalent. Mr Krink concluded by stating the purpose was to prevent the removable link falling out of the link opening. At [71] – [73] of his evidence in answer, Mr Stewart essentially highlighted the different purposes of the two arrangements. For the Weidmuller device, the spring locking mechanism on the link conductor was to provide a positive mating surface between the link conductor and the terminal conductive elements when inserted in the normal orientation to allow current to pass through the terminal (emphasis in the original). Mr Stewart stated this was clear from the presence of two such locking mechanisms on the link conductor corresponding to the points of contact between the link conductor and each of the conductive elements. For claim 4, Mr Stewart stated this claim referred to the secure parking of the link handle within the link opening in the reverse orientation. I would concur. The functionality of the arrangements is quite different, and they are not obvious equivalents. On the available evidence before me, I think it cannot be fairly said that it would have been a matter of routine to go from the Weidmuller arrangement of locking mechanisms on the link conductor for securing the link in the normal orientation to the claimed arrangement of a resilient projection on the link handle for securing the link in the reverse parked orientation.
104. The second device was the P-DI isolation plug. At [70] and [71] of his evidence, Mr Krink stated this plug was designed with resilient elements to secure the plug in the reverse orientation. At [77] of his evidence, Mr Stewart stated that the elements relied upon by Mr Krink were a hard plastic and they did not deform or recoil back into shape. Therefore, they were not resilient. With the physical device available in evidence, the latter is apparent. I would describe the connection as a snap-fit and it could hardly be termed resilient.
105. It could be argued that resilient locking elements were common before the priority date on many devices in many fields for the purpose of preventing parts from separating. While that may be the case in general terms, in the specific confines of link handles on removable links for electrical terminals though, when inserted in the reverse orientation for parking purposes, such elements may not have been so straightforward or routine at the relevant time. On the available evidence in this case, I am not satisfied that a resilient projection on a link handle to engage a wall of the link opening in the reverse orientation was obvious at the priority date.
106. I conclude that claim 4 has an inventive step.
107. Claim 5 is appended to claim 3 and further defines the link handle including a resilient projection that engages a notch in a wall of the link opening when the link handle is inserted therein.
108. For similar reasons as for claim 4, I conclude that claim 5 has an inventive step.
109. Claim 6 is appended to claim 1 and further defines the insulating sheath including a resilient projection that engages a wall of the link opening to retain the removable link therein. With this claim being appended to claim 1 and qualifying the insulating sheath and not the link handle, the scope of the claim includes the sheath’s resilient projection engaging a wall of the link opening in the normal orientation. The P-DI plug has elements to secure the plug in the link opening in a normal orientation. On the other hand, there is no separate insulating sheath, distinct from the link handle, surrounding part of the link conductor. Moreover, as for claim 4, the P-DI arrangement is a snap-fit and could hardly be termed resilient.
110. I conclude that claim 6 has an inventive step.
111. Claim 7 is appended to claim 6 and further defines the resilient projection of the sheath engaging a notch in a wall of the link opening when the removable link is inserted therein. Since I have found that claim 6 has an inventive step, it follows that claim 7 also has an inventive step.
112. Claim 8 is appended to any one of claims 1 to 7 and further defines the two link connection points being positioned side by side within the link opening separated by an insulating wall such that they cannot be connected by a straight conductor. At [80] – [89] of his evidence in support, Mr Krink indicated that the UK 4-TG terminal block and associated ST-K4 disconnect link, amongst other devices, disclosed this feature. In conjunction with the Weidmuller device though, that arrangement would have been completely unsuitable for that device since the Weidmuller device has a round link opening accommodating a single round link conductor as distinct from the two-pronged link conductors cited by Mr Krink which straddle an interior insulating wall.
113. I conclude that claim 8 has an inventive step.
114. Claim 9 is appended to claim 8 and further defines the link conductor comprising a flat “U” shaped conductor which, when inserted into the link opening, spans the wall and contacts each of the first and second link connection points. This is embodied in the ST-K4 disconnect link. In any case, since I have found that claim 8 has an inventive step, it follows that claim 9 also has an inventive step.
115. Claim 13 is appended to any one of claim 1 to 12 and further defines the two terminal connectors being screw-less type connectors. At [102] of his evidence, Mr Krink described screw-less type connectors as very common prior to the priority date. The background section of the specification describes screw-less type terminals in a similar context.
116. I conclude that claim 13 does not have an inventive step.
117. Claim 14 is appended to any one of claim 1 to 12 and further defines the two terminal connectors being tool-less screw-less type connectors.
118. The parties differed on their understanding of tool-less systems in the present art. At [79] – [84] of his evidence in answer, Mr Stewart stated that the prior terminal blocks cited by the opponent were not tool-less. He stated that the expression “tool-less” referred to the lack of need to utilize any tools in normal operation. Since a tool was required to enable withdrawal of the terminal conductors from the terminals, Mr Stewart indicated they could not be referred to as tool-less terminals. At [86] and [87], Mr Stewart further took issue with Mr Krink’s description of screw-less push-in terminals being tool-less, screw-less terminals. Again, Mr Stewart stated a tool was required to unlock the spring to allow a conductor to be withdrawn.
119. In evidence in reply at [49], Mr Krink suggested that, given that most conductors are installed only once and that it is the installation process which is most important, the definition of “tool-less” would focus on the installation process involving insertion of the conductor into the terminal connector, rather than involving withdrawal of the conductor which would be extremely rare.
120. The arguments from both sides may appear to be finely balanced. On the other hand, the specification itself is instructive in this respect. The background section of the specification, at page 1 lines 6 and 7, describes screw-less type terminals as often being used to make permanent wiring connections to industrial equipment. Further in the background section at page 1, lines 9-14:-
“Screw-less type terminals may be ‘tool-less’ or may require a tool such as a ‘hex’ or ‘Allen’ key or screwdriver to compress the spring, removing pressure from the conductor clamp and allowing insertion of a conductor into the terminal. Tool-less type terminals will often include a lever incorporated into the terminal body to compress the spring removing pressure on the conductor clamp.” (my emphasis)
121. Moreover, in respect to an embodiment of the invention, at page 4, lines 14-20:-
“The two terminals 106 are located at opposite ends of the body 101 … and are operated by levers 108 which pivot into lifted position … to release pressure on a clamp within the terminal and pivot to a lowered position … In the lowered position the leaver (sic) allows pressure to be applied to the clamp to clamp a wire inserted into the terminal. This is known as a tool-less type terminal.” (my emphasis)
122. From the above, it would be clear that Mr Krink’s interpretation of “tool-less” is consistent with the specification itself. Mr Krink has exhibited evidence of the prior existence of tool-less, screw-less type terminal connectors, and specifically in respect to the insertion of terminal conductors. At [114] of his evidence in support, Mr Krink stated that tool-less screw-less type connectors were in common use before the priority date. The specification acknowledges the prior existence of the same.
123. I conclude that claim 14 does not have an inventive step.
124. Claim 15 is appended to any one of claim 1 to 14 and further defines the terminal unit being arranged to mount on several different mounting systems.
125. At [116] of his evidence in support, Mr Krink stated that several mounting systems have been adopted as world-wide standards for mounting terminal blocks. These standards include the G-rail and the DIN-rail systems. At [117] and [118], Mr Krink cited prior examples of terminal blocks with a universal foot for the G-rail and the DIN-rail. The most specific example described by Mr Krink is from the opponent’s 2009 Clipline catalogue. In conjunction with the Weidmuller device though, it is not apparent that the latter would have been arranged, or modified as a matter of routine, to mount on different systems at the priority date. On the contrary, at [23] of his evidence in support, Mr Krink indicated that the Weidmuller SAKC 10/35 terminal unit was specifically for the DIN rail, while another Weidmuller terminal unit, designated simply as SAKC 10, was for the G-rail.
126. I conclude that claim 15 has an inventive step.
127. Claim 16 is appended to claim 15 and further defines the terminal unit being arranged to mount on either of a DIN-rail or a G-rail. Since I have found that claim 15 has an inventive step, it follows that claim 16 also has an inventive step.
128. Claim 17 is appended to any one of claim 1 to 16 and further defines the terminal unit being adaptable to mount on different mounting systems by replacing a part of the terminal unit. It is not apparent that the Weidmuller device would have been adaptable, or modified as a matter of routine, in this way at the relevant time. Again, it may be noted that the Weidmuller SAKC 10/35 terminal unit was specifically for the DIN rail.
129. I conclude that claim 17 has an inventive step.
CONCLUSION
130. I have found that claims 1, 2 and 10-12 are not novel. Moreover, I have also found that claims 1-3 and 10-14 do not have an inventive step.
131. I allow the applicant two (2) months from the date of this decision to propose suitable amendments under section 104 to overcome these findings.
COSTS
132. Both parties sought their costs in these proceedings. I see insufficient reason to depart from the normal approach that costs should follow the event. I award costs in accordance with Schedule 8 against the applicant, Pivot Electronics Pty Ltd.
M. G. Kraefft
Delegate of the Commissioner of Patents
Annex A
1.A terminal unit comprising:
a terminal unit body;
a first terminal connector located adjacent a first opening in the terminal unit body for connection of a first conductor passing through the first opening;
a second terminal connector located adjacent a second opening in the terminal unit body for connection of a second conductor passing through the second opening, the first terminal connector and the second terminal connector being axially aligned along a longitudinal axis of the terminal unit body;
a link opening arranged intermediate the first terminal connector and the second terminal connector;
a first terminal connector conductive element extending internally of the terminal unit body from the first terminal connector to a first link connection point at the link opening;
a second terminal connector conductive element extending internally of the terminal unit body from the second terminal connector to a second link connection point at the link opening, the first and second link connection points being accessible via the link opening; and
a removable link comprising a link conductor and a link handle, the removable link being removably insertable into the link opening in a normal orientation, in which the link conductor electrically connects the first link connection point and the second link connection point to electrically connect the first terminal connector to the second terminal connector,
wherein the link handle comprises an insulator which projects from the link opening when the link conductor is inserted to electrically connect the first link connection point and the second link connection point, such that the link handle enables gripping of the link for removal without touching the link conductor,
wherein the removable link includes an insulating sheath surrounding part of the link conductor, and
wherein the link handle and the insulating sheath are of different colours such that the sheath colour is visible when the removable link is inserted into the link opening in a reverse orientation with the link handle inserted in the link opening or when the removable link is not fully inserted into the link opening in the normal orientation.
2.The terminal unit of claim 1 wherein the removable link is shaped to co-operate with the terminal unit body to engage the terminal unit body for storage of the removable link, when the link conductor is not electrically connecting the first link connection point and the second link connection point.
3.The terminal unit of claim 2 wherein the link handle is shaped to fit into the link opening in the terminal unit body, and wherein the removable link is insertable in a reverse orientation with the link handle inserted into the link opening and without connecting the first link connection point to the second link connection point.
4.The terminal unit of claim 3 wherein the link handle includes a resilient projection that engages a wall of the link opening to retain the handle within the link opening.
5.The terminal unit of claim 3 wherein the link handle includes a resilient projection that engages a notch in a wall of the link opening when the link handle is inserted into the link opening.
6.The terminal unit of claim 1 wherein the insulating sheath includes a resilient projection that engages a wall of the link opening to retain the removable link within the link opening.
7.The terminal unit of claim 6 wherein the resilient projection of the sheath engages a notch in a wall of the link opening when the removable link is inserted into the link opening.

8.The terminal unit as claimed in any one of claims 1 to 7 wherein the first link connection point and the second link connection point are positioned side by side within the link opening separated by an insulating wall such that they cannot be connected by a straight conductor.
9.The terminal unit of claim 8 wherein the link conductor comprises a flat “U” shaped conductor which, when inserted into the link opening, spans the wall and contacts each of the first link connection point and the second link connection point.
10.The terminal unit as claimed in any one of claims 1 to 9 wherein a test socket is connected to one of the first link connection point and the second link connection point.
11.The terminal unit as claimed in any one of claims 1 to 9 wherein a test socket is connected to each of the first link connection point and the second link connection point.
12.The terminal unit of claim 10 or 11 wherein the socket is a standard 4mm test socket and is located to one side of the link opening.
13.The terminal unit as claimed in any one of claims 1 to 12 wherein the first terminal connector and the second terminal connector are screw-less type connectors.
14.The terminal unit as claimed in any one of claims 1 to 12 wherein the first terminal connector and the second terminal connector are tool-less screw-less type connectors.
15.The terminal unit as claimed in any one of claims 1 to 14 wherein the terminal unit is arranged to mount on several different mounting systems.
16.The terminal unit of claim 15 wherein the terminal unit is arranged to mount on either of a DIN-rail or a G-rail.
17.The terminal unit as claimed in any one of claims 1 to 16 wherein the terminal unit is adaptable to mount on different mounting systems by replacing a part of the terminal unit.