Rapidjoint Pty Ltd v Milan Pilja
[2009] APO 3
•11 February 2009
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.2005244596 in the name of MILAN PILJA
Title: Integrated Joiner
Action: Opposition by RAPIDJOINT PTY LTD under Section 59 of the Patents Act 1990
Decision: Issued 11 February 2009
Abstract
The invention relates to a joiner for use in joining one article to another with a particular
example stated as being the joining of “flat-pack” or “knock-down” furniture.The invention was opposed on the grounds of novelty, inventive step, utility and section 40.
One of the alleged novelty citations was in German but no English translation of the document was filed, the drawings being solely relied on for the disclosure. It was held that in the absence of an English translation or a statutory declaration by an expert witness, the opponent’s submissions as to what each of the integers illustrated in the drawings are or how they function could not be accepted.
Claims 1-3 were found to be lacking in novelty and inventive step. Claims 3-5 were also found to lack clarity.
Costs were awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2005244596 by MILAN PILJA and an opposition under Section 59 of the Patents Act 1990 by RAPIDJOINT PTY LTD
BACKGROUND
Patent application 2005244596 in the name of Milan Pilja was filed on 19 December 2005. The application was advertised accepted on 19 October 2006. Rapidjoint Pty Ltd (hereafter referred to as Rapidjoint) filed a notice of opposition under Section 59 of the Patents Act 1990 on 20 November 2006. The statement of grounds and particulars was also filed on 20 November 2006 but this was subsequently amended and these amendments were allowed on 25 August 2008.
The serving of evidence in support was completed on 20 February 2007. A request to amend the specification under Section 104 was filed on 20 August 2007 by the applicant and, after an adverse examiner’s report, a further set of amendments was proposed on 4 September 2007 and these amendments were advertised as being allowed on 10 April 2008.
The serving of evidence in answer was completed on 28 April 2008 while evidence in reply was served on 28 July 2008.
A hearing was held in Canberra on 29 October 2008. The applicant chose not to attend the hearing but their attorney, Dr Donald Angus of Collison & Co, filed written submissions prior to the hearing. The opponent appeared over the telephone and was represented by Mr Mark Summerfield of Watermark, Melbourne. Mr Jarrod Dorney a representative of Rapidjoint also attended over the telephone.
GROUNDS OF OPPOSITION
The statement of grounds and particulars sets out the following grounds of opposition:
The invention, insofar as claimed in any claim is
·Not a manner of manufacture
·Not novel or inventive
·Not useful
The specification does not comply with subsections 40(2) or 40(3).
EVIDENCE
Evidence in support consists of declarations made by:
- Paul van de Loo dated 11 February 2007 with exhibits PVDL-1 to PVDL-3. He states that he is a qualified mechanical engineer working as a Technical Director at Applidyne Pty Ltd. Applidyne provided engineering design services to the opponent Rapidjoint. Mr van de Loo was personally involved in relation to the design of integrated joiners being marketed by Rapidjoint.
- Mark Summerfield, patent attorney, dated 20 November 2006 with exhibits MAS-1 to MAS-11.
- Mark Summerfield, patent attorney, dated 19 February 2007 with exhibits MAS-1 to MAS-2.
Evidence in answer consists of a declaration made by:
- Milan Pilja dated 28 April 2008 with exhibit MP-1.
Evidence in reply consists of a declaration made by:
- Mark Summerfield, patent attorney, dated 28 July 2008 with exhibits MAS-12 to MAS-14.
THE SPECIFICATION
The specification relates to a joiner for use in joining one article to another with a particular
example stated as being the joining of “flat-pack” or “knock-down” furniture.
It states that there are a number of deficiencies with existing joiners including the narrow range of clamping forces provided and the complexity in initial fitting of the components into the furniture or articles to be joined together. It also states that while the joiner disclosed in prior art patent specification WO 03/035992 is capable of providing the required fastening forces, there are a number of difficulties in applying equivalent clamping forces to articles in which the clamping means has to be integrated within the structural member such as an arm of a chair or the leg of a bed. .
It further states that objects of the invention are to provide a joiner that is relatively small and convenient to install and is also capable of applying clamping forces to the articles to be joined.
The solution proposes a joiner having an engaging member, a threaded shaft passing through the engaging member, a nut threadably engaging the shaft, first and second interengaging gear members located substantially within the engaging member, with the first gear member being adapted to receive the screw threaded shaft and the second gear member having a tool engaging means, the engaging member also having a securing means to captively hold the first gear member to allow rotation thereof.
The amended specification ends with 20 claims which are as follows:
1. A joiner including at least one engaging member, a screw threaded shaft passing through the engaging member, at least one nut threadably engaging the shaft, a first gear member adapted to receive the screw threaded shaft, a second gear member captivity (sic) held within a slot within the engaging member and positioned to interengage with the first gear member and having a tool engaging means, both the first gear member and second gear member being located substantially within the engaging member whereby a turning of the second gear facilitates a tightening of the joiner and wherein the at least one engaging member further includes at least one securing means to captively hold the first gear member to allow rotation thereof, wherein, the securing means is a retaining member positioned on the engaging member and the retaining member projects into a recess adapted to or shaped to receive the first gear and upon insertion of the first gear into the first gear recess, the retaining member will hold the first gear in place so as to allow rotation of the first gear.
2. The joiner of claim 1, wherein said first gear member has its teeth aligned facing in the direction of the body of the shaft.
3. The joiner of claim 2, wherein the second gear holds the first gear in place within the slot.
4. The joiner of claim 3, wherein the securing means on the engaging member is a slot adapted to receive the first gear member.
5. The joiner of claim 4 wherein, the slot is integral with the engaging member.
6. The joiner of claim 5, wherein, the second gear is located in a second gear recess.
7.The joiner of claim 6, wherein, the engaging member has an aperture thereon substantially perpendicular to the tool engaging means of the second gear member so as to allow access to the tool engaging means.
8.The joiner of claim 7, wherein, the tool engaging means is an aperture shaped to receive a tool bit.
9.The joiner of claim 8, wherein, the teeth profile of the first and second gear members is rounded so as to provide a point to point contact between the first and second gears.
10. The joiner of claim 9, wherein, the tooth face of the first and second gears is a spherical surface.
11.The joiner of claim 10, wherein, the tooth face of the first and second gear members is a spherical segment.
12. The joiner of claim 11, wherein, the tooth face is a concave section.
13.The joiner of claim 12, wherein, the tool engaging means is an aperture shaped to receive an Allen key.
14. The joiner of claim 13, wherein, the first gear member has a periphery flange.
15. The joiner of claim 14, wherein, the first gear member has a hub extension.
16.The joiner of claim 15, wherein, the hub extension has a face that abuts at least a section of the first gear member recess in the engaging member.
17.The joiner of claim 16, wherein, the first and second gear members are made from a composite plastic/glass material.
18.The joiner of claim 17, wherein, the engaging member is arcuate shaped to nest within a cavity within an article to joined to another.
19.The joiner of claim 18, wherein, the first gear member has its teeth aligned so that they are facing in the direction of the body of the shaft.
20.The joiner substantially as hereinbefore described with reference to the accompanying drawings.
DECISION
ONUS OF PROOF
In proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd's Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
CLARITY
Claim 1: The opponent argued that the feature of “at least one nut threadably engaging the shaft” in claim 1 is unclear because it is unclear what function is performed by the nut or how it interacts with the other features of the claim.
While I agree with the opponent that the sole disclosure of the nut in the description, apart from in the consistory statement, is at page 10 where it states that “the other end of the threaded shaft can be either fitted with a nut or can be affixed to a section of the furniture to be joined thereto, such that the first joining element is in a separate section of furniture”, I do not believe that this in itself creates any lack of clarity of this term in the claim. The phrase “nut threadably engaging the shaft” clearly defines that there is a nut threaded on the shaft and the description at page 10 explains that the function of the nut is to attach the shaft to a separate section of furniture. This phrase is therefore clear.
The opponent also submitted that the terms “first gear member” and “second gear member” are unclear as it is not clear exactly what gear types are intended to be encompassed by these terms. I find nothing unclear with these terms and the argument put forth by the opponent regarding the gear types appear more relevant to the grounds of fair basis which was also argued. I will further consider these terms under the heading of fair basis.
Claim 3: The opponent submitted that claim 3 lacks clarity because it is not clear how the second gear member holds the first gear member in place within the slot when according to the description at page 9, lines 1-3 and claim 1, it is the first gear member which holds the second gear member in place within the slot. I agree that the words “first” and “second” appear to have been transposed in the claim and the claim therefore lacks clarity.
For the purposes of deciding the novelty and inventiveness of this claim I will construe this claim to read that it is the first gear member which holds the second gear member in place within the slot.
Claim 4: In relation to claim 4, the opponent submitted that this claim lacks clarity because it requires that “the securing means on the engaging member is a slot adapted to receive the first gear member” which is inconsistent with claim 1 which requires that “the securing means is a retaining member positioned on the engaging member and the retaining member projects into a recess adapted to or shaped to receive the first gear and upon insertion of the first gear into the first gear recess, the retaining member will hold the first gear in place so as to allow rotation of the first gear”.
I agree. It is unclear as to how the securing means can be both the retaining member as defined in claim 1 and the slot as defined in claim 4. While this same claim in the claims as accepted was clear, this lack of clarity in claim 4 of the amended set of claims appears to have arisen because of the incorporation of the features of original claims 6 and 7 into amended claim 1.
Claim 5: I agree with the opponent that this claim also lacks clarity because it is not clear whether the slot referred to in this claim is the slot holding the second gear member (as defined in claim 1) or the slot holding the first gear member (as defined in claim 4).
Claims 14 and 15: The opponent submitted that these claims lack clarity as it is not apparent how the “periphery flange” of claim 14 and the “hub extension” of claim 15 are arranged with respect to the first gear member or how they inter-work with other features of the invention. I am of the view that a person skilled in the art would have no difficulty in understanding the scope of these terms when the specification is read as a whole. These claims are therefore clear.
FAIR BASIS
Claim 1: The opponent argued that the terms “first gear member” and “second gear member” are not fairly based on the description as they encompass all possible gear types whereas the sole embodiment described specifically employs gears having teeth with spherical surfaces.
While the preferred embodiment may only disclose gears with spherical surfaces, I am guided by the principles set out in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
I am satisfied that the features of the “first gear member” and “second gear member” as defined in claim 1 are broadly described in the body of the specification and these features are therefore fairly based.
The opponent also highlighted the fact that the specification at page 4 states that the gear members are preferably spur gears, but there is no relevant disclosure of the use of spur gears in the embodiments described and in fact spur gears would not be suitable for transmitting rotary motion between gears having perpendicular shafts.
While I agree that spur gears would not be suitable for transmitting rotary motion between gears having perpendicular shafts as shown in the preferred embodiments, I note that claim 1 is not restricted to gear members having perpendicular shafts nor do any of the claims define the gear members as being spur gears. Also in my view it is possible to produce a joiner in which the shafts are parallel and the gear members are spur gears and still fall within the scope of claim 1. Hence the reference to spur gears in the description does not make the terms “first gear member” and “second gear member” in the claims not fairly based.
UTILITY
The opponent submitted that the claimed invention lacked utility as it fails to satisfy the following stated objects of the invention:
·“to provide a joiner that is relatively small in size and is convenient to install”.
·“to provide a joiner that is capable of applying clamping forces to the articles to be joined”.
·“to overcome, or at least substantially ameliorate, the disadvantages and shortcomings of the prior art”.
In relation to the first stated object there is nothing in the specification regarding the dimensions of the joiner and I see no reason why it cannot be made relatively small. The mechanism also appears to lend itself to convenient installation.
In relation to the second stated object the opponent argued that the spherical profile described would give inferior performance in relation to clamping forces, however I note that the stated object is to apply clamping forces and I believe that the claimed invention would be capable of applying such a clamping force, even if it is inferior in terms of performance.
In relation to the third stated object, it was the opponent’s view that the use of a spherical surface for the tooth face of the first and second gear members as claimed in claims 12 to 14 is inferior to conventional bevel gears and that this is supported by the statutory declaration of Mr van de Loo who is an expert in the field of gear design.
It is clear from Mr van de Loo’s resume that he certainly has the qualifications and experience to comment on gear design. He has also provided in exhibits (MAS-9 of Mr Summerfield’s first declaration and MAS-1 and MAS-2 of Mr Summerfield’s second declaration) extracts from two publications relating to gear design, which he asserts are routinely referred to by persons skilled in the art in Australia and that the knowledge contained therein would be fundamental to work in the field. This evidence has not been disputed by the applicant and I therefore accept it. Both of these extracts discuss the fundamentals of spur, helical and bevel gear design and it is clear from these texts that the ideal profile or shape for gear teeth is an involute profile and that this is the profile which is used in the vast majority of gears. Mr van de Loo concludes that in his opinion the spherical gear design used in the applicant’s design would not overcome or substantially mitigate any disadvantages and shortcomings of the prior art, but would in fact have inferior performance when compared to some prior art joiners.
The invention in its broadest form as described and as claimed in claim 1 does not specify any particular profile for the gear teeth. However the preferred embodiment discloses the profile of the bevel gear teeth to be rounded or spherical and this preferred profile is also defined in dependent claims 9-12.
Based on Mr van de Loo’s evidence which is undisputed I agree that there is a fairly strong possibility that the spherical gear profile would give inferior performance to prior art joiners which use bevel teeth having an involute profile. But this does not lead to the conclusion that the claimed invention lacks utility. It is clear from the authorities that the test for utility does not call for an evaluation of the performance of the invention compared to other prior art devices.
“If an invention does what it is intended by the Patentee to do, and the end attained is itself useful, the invention is a useful invention. A patent for such an invention cannot be held bad for want of utility by comparing it with other known methods or things which may be preferred to it.” (Fawcett v Homan (1896) 13 RPC 398 at 405).
It is my view that if the directions of the specification are followed, the joiner as claimed can be attained and such a joiner would be practically useful for the purposes indicated notwithstanding any inferior performance compared to prior art joiners.
I therefore find that claimed invention does not lack utility.
MANNER OF MANUFACTURE
The opponent argued that the facts they have submitted for the grounds of lack of utility also support the ground that the invention is not for a manner of manufacture. In particular, the alleged invention varies from the prior art including document D3 (WO 2005/085657), only in ways that make no substantial contribution to the working of the invention.
The applicant however has submitted that the invention as disclosed in the accepted patent application meets the “threshold of inventiveness” test as set out in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449.
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”
In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 46 IPR 553, the majority summarised the effect of the Philips case as follows:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
It is clear from the above that the assessment must be limited to whether the invention passes any threshold of inventiveness, in light of prior knowledge as revealed by the specification. Evidentiary references would seem to play no part in this assessment. To introduce extraneous evidence as suggested by the opponent seems to trespass into the decision to be made in relation to section 18(1)(b)(ii).
Taking only what is described in the application as “known” I cannot find any lack of inventiveness. The application thus passes the “threshold of inventiveness” test. Therefore, it is directed to a manner of manufacture.
NOVELTY
The courts have made clear that, in general terms, the test to be applied in respect of lack of novelty is the reverse infringement test, that is, "whether the alleged anticipation would, if the patent were valid, constitute an infringement" (see Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 per Aickin J at 235 cited by Lockhart J in R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 25 FCR 565 at 568). The reverse infringement test requires that the prior publication contain "clear and unmistakable directions to do what the patentee claims to have invented" (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 per Sachs LJ at 486). In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is possessed by the prior disclosure (see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367).
The opponent in their submissions at the hearing expressed the view that the feature of “at least one nut threadably engaging the shaft” in claim 1 is an inessential feature as it does not interact with any of the other claimed features of the invention and that therefore this feature should not be taken into consideration for determining whether the claimed invention is novel.
The issue of determining essential features was discussed in Catnic Components v Hill and Smith Ltd. (1982) RPC 183 at page 228, as follows:
"... I think that one can venture upon the following generalisations on the question of essentiality. (1) If that feature of the claim which is under consideration is in fact essential to the working of the claimed invention, then it must be an essential feature of the claim. (2) If the feature is not in fact essential to the working of the claimed invention, the applicant for a patent may nevertheless have made it an essential feature of the claim, that is to say, he may by the terms of the claim as properly construed have clearly limited his claim to a subject matter having that particular feature."
Consequently, the presence of a feature in a claim is not conclusive proof that it is essential. If it is evident from a reading of the specification, either explicitly or by implication, that a particular feature is essential to the way the invention works, then the feature is essential. Conversely, if it is readily apparent that a feature would not materially affect the way the invention works, then the feature will be considered inessential unless it is clear that from a reading of the claim that the draftsman intended that an inessential feature is to be treated as essential.
I agree with the opponent that the only disclosure of the nut is at page 10, where it states “the other end of the threaded shaft can be either fitted with a nut or can be affixed to a section of furniture to be joined thereto, such that the first joining element is in a separate section of furniture.” There is no further elaboration as to how the nut interacts with the other section of furniture. Also none of the drawings illustrate the nut. However this does not then necessarily lead to the conclusion that the nut is an inessential feature of the claimed invention. The question that I need to ask is whether the nut is essential to the working of the claimed invention.
It is clear that for the joiner to perform its function of being able to join one section of furniture to another section of furniture, the free end of the threaded shaft needs to have some means to enable it to be affixed to a separate section of furniture. While a nut would certainly allow the free end of the threaded shaft to be attached to a separate section of furniture, the specification clearly envisages other forms of attachment other than the use of a nut. Also from a fair reading of the specification it is clear that the invention lies not in the mode of attaching the other end of the shaft to a separate section of furniture but rather in the compact arrangement of the gears in the engaging member with the shaft passing through the engaging member. I am therefore of the view that the nut does not materially affect the way the invention works.
But did the draftsman intend the feature of the nut to be treated as essential? As mentioned earlier I can find nothing in the description or claims to suggest that the nut plays an important role in the use of the joiner. In fact the lack of any disclosure as to how the nut interacts with the other integers appears to me to indicate that the nut is not of any great significance to the invention and was not intended to be treated as essential. I also note that the applicant in his statutory declaration does not express any comment on the feature of the nut either in terms of its essentiality to the invention or in terms of its advantages over other forms of securing. I therefore find that the feature of the nut threadably engaging the shaft is not an essential feature of the invention.
The opponents submissions on novelty at the hearing relied only on two prior art documents, namely D3 and D11. They said that they did not intend making any further submission in relation to any of the other documents other than what has already been stated in their Statement of Grounds and Particulars. I have briefly considered these other documents and in my view the only document which appears to be of relevance, as far I can make out from the English abstract and drawings, is document (D1) JP 2000-130414 (Exhibit MAS-1). However the specification of D1 is in the Japanese language and the opponent has not served an English translation of this document. I do not therefore intend to consider this document any further.
(D3) WO 2005/085657 (Exhibit MAS-3)
Claim 1: The opponent directed me to figure 10 of this citation which discloses a joiner (1000), including an engaging member (1008), a screw threaded shaft (1006) passing through the engaging member, a first gear member (1012) adapted to receive the screw threaded shaft, a second gear member (1010) captively held within a slot (1020) within the engaging member and positioned to interengage with the first gear member and having a tool engaging means (1042), both the first and second gear members being located substantially within the engaging member whereby a turning of the second gear member facilitates a tightening of the joiner and wherein the at least one engaging member further includes at least one securing means to captively hold the first gear member to allow rotation thereof. The securing means comprises retaining members in the form of rib members (1028, 1030) which are positioned on the engaging member and project into a recess adapted to receive the first gear member and upon insertion of the first gear member into the recess the retaining member will hold the first gear member in place so as to allow rotation of the first gear member. The end of the shaft is provided with a head and shoulder to enable the shaft to be secured to a separate section of article to be joined.
Although D3 does not disclose a nut threadably engaging the shaft, I have found that this is not an essential feature of the claimed invention. As all the other features are disclosed in D3, I find that claim 1 is not novel over D3.
Claim 2: In D3 the teeth of the first gear member are aligned facing in the direction of the body of the shaft. Claim 2 is also therefore not novel.
Claim 3: I have earlier found the words “first” and “second” should be transposed as it is the second gear that is captively held within a slot. D3 clearly discloses on page 26, lines 26 to 29 that the second bevel member assists in retaining the first bevel member firmly in place within the slot. Claim 3 is therefore not novel.
Claim 4: D3 does not disclose the feature that the securing means on the engaging member is a slot adapted to receive the first gear member. Hence claim 4 is novel. However I note that I have earlier found that this feature in claim 4 is not clear.
Claims 5-19: As all these claims are appended, directly or indirectly, to claim 4, these claims are also novel.
Claim 20: This claim being an omnibus claim is limited to the essential features of the claimed invention as embodied in the drawings and associated description. There are many differences between the embodiment of the claimed invention and D3, including the teeth profile and the arrangement of the retaining member. Claim 20 is therefore novel.
(D11) DE 9010431 (Exhibit MAS-12)
Although this document is in German, the opponent did not file in evidence an English translation of this document. Instead at the hearing, the opponent chose to rely only on the drawings in making their submissions in respect of this document.
According to their submissions, the drawings of this document disclose a joiner including an engaging member (30), a screw threaded shaft (10) passing through the engaging member, a first gear member (40) adapted to receive the screw threaded shaft, a second gear member (50) captively held within a slot within the engaging member and positioned to interengage with the first gear member and having a tool engaging means (60), both the first and second gear members being located substantially within the engaging member whereby a turning of the second gear member facilitates a tightening of the joiner and wherein the at least one engaging member further includes at least one securing means to captively hold the first gear member to allow rotation thereof. The securing means comprises a retaining member (49) which is positioned on the engaging member and which projects into a recess adapted to receive the first gear member and upon insertion of the first gear member into the recess the retaining member will hold the first gear member in place so as to allow rotation of the first gear member. Specifically, as illustrated in figures 3 and 7, the retaining member cooperates with a groove (44) in the first gear member to hold the first gear in place.
In response to my query as to why they have not filed an English translation if they really consider that D11 is a strong anticipatory document, the opponent submitted that the drawings use standard convention to denote features like screw threads and that there is therefore no difficulty in interpreting the drawings.
However the opponent has put forward no evidence by way of Statutory Declaration to support their argument that a person skilled in the art would, by looking at only the drawings, be able to understand what this citation discloses and whether it anticipates the claimed invention. Their expert witness, Mr van de Loo does not discuss this document or any of the other prior art relied upon by the opponent.
Even though I am a mechanical engineer, if I were to have regard to only the drawings of this document, I would have great difficulty in identifying the features of the first and second interengaging gear members and the retaining member projecting into a recess to hold the first gear in place.
Consequently in the absence of an English translation or a statutory declaration by an expert witness, I am unable to accept the opponent’s submissions as to what each of the integers illustrated in the drawings are or how they function. I therefore find that the claimed invention is novel over this citation.
INVENTIVE STEP
Section 7(2) provides a definition of inventive step for the purposes of the Patents Act.
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”Prior art information in relation to inventive step is set out in the definition of prior art base in Schedule 1 of the Act, which reads as follows:
“(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:
(i) information in a document that is publicly available, whether in or out of the patent area; and
(ii) information made publicly available through doing an act, whether in or out of the patent area”Aickin J set out the following test for inventive step or obviousness in Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286:
"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."
According to the specification existing joiners for joining articles such as “flat-pack” or “knock-down” furniture have the problems that they are not convenient to install within the structural members of the articles to be joined, it is difficult to manipulate the fastener head due to restricted space and also they do not provide adequate clamping forces.
The opponent submitted that Mr van de Loo is a person skilled in the art and that in his declaration he has clearly asserted that the persons skilled in the art like him often conduct searches of patent literature and that they would have no difficulty in ascertaining, understanding and assessing the relevance of such patent documents.
The applicant on the other hand has submitted that the person skilled in the art would be a cabinet maker like Mr Pilja who is regularly involved in the use of joiners. While they concede that Mr van de Loo may have been involved in the development of similar joiners, they have argued that his contribution appears to be directed towards the selection and production of gears as opposed to the development of any joining device as a whole and that therefore he cannot be considered to be a person skilled in the art of joiners.
I am not convinced by this argument. It is clear from the evidence filed, that Mr van de Loo has been involved in the design and development of similar joiners and is also listed as an inventor for at least two patent applications filed by the opponent Rapidjoint. I am therefore satisfied that Mr van de Loo has the knowledge and experience of a person skilled in the art as does Mr Pilja.
The applicant submitted that it could not be reasonably expected that a person skilled in this particular art would conduct a search of patent documents similar to the finding of the full court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26.
I disagree. While the court held that an Australian Rules or Rugby League coach would not have conducted a search in the United States Patent Office, they affirmed the general correctness of the approach that a person skilled in the art would conduct a search of patent literature. The present invention relates to a technical art involving engineering considerations including application of forces and design of gears and therefore there is a reasonable expectation that the person skilled in the art would consult patent documents for a solution to the problem.
In relation to document D3, it is my view that it would have been ascertained, understood and regarded as relevant as it clearly relates to joiners that are sufficiently compact to be installed into a recess or cavity of an article to be joined to another article.
In relation to D11, as I have not been provided with an English translation of this document, I cannot determine whether this document is dealing with the same technical issues as the present invention. Therefore I am unable to make a finding as to whether a person skilled in the art would have ascertained, understood and regarded this document as relevant. I do not therefore intend to consider this document any further in the determination of the inventive step of the claimed invention.
(D3) WO 2005/085657 (Exhibit MAS-3)
Claims 1-3: I have already found these claims to be not novel. Consequently they also lack an inventive step.
Claim 4: The opponent submitted that the feature of the slot adapted to receive the first gear member is taught in document D11 and that it would be obvious to a person skilled in the art to combine the teachings of this document with that of document D3 and therefore claim 4 lacks an inventive step.
In relation to D11 I have earlier decided that, in the absence of a translation, I am unable to accept the opponent’s submissions as to what each of the integers illustrated in the drawings are or how they function. Also I have no evidence presented to me to suggest that the feature of the slot adapted to receive the gear is common general knowledge in the art. I therefore find claim 4 to be inventive over the prior art.
Claims 5-19: As all these claims are appended, directly or indirectly, to claim 4, these claims are also inventive.
Claim 20: I have been presented with no evidence to establish that any differences between the features of the joiner as shown in the embodiment described and document D3 are merely matters of design choice. I therefore find that claim 20 is inventive.
CONCLUSION
I have found that claims 1-3 are not novel or inventive. I have also found that claims 3-5 lack clarity.
As these deficiencies can be overcome by amendment, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings. If suitable amendments are not proposed within that time, I will refuse the application.
COSTS
Both parties submitted that costs should follow the event. I have found that the opponent Rapidjoint has been successful in this action. I therefore award costs against the applicant Milan Pilja.
R Subbarayan
Delegate of the Commissioner of Patents
11 February 2009Patent attorneys for the applicant: Collison & Co, Adelaide
Patent attorneys for the opponent: Watermark, Melbourne
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