Richard Arnot Jones v Interium Pty Ltd

[2000] APO 40

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 683874 in the name of RICHARD ARNOT JONES

Title:          A Sign Display System

Action: Opposition under sec. 59 of the Patents Act 1990 by INTERIUM PTY LTD

Decision:          Issued            .

Abstract

Opposition upheld.  Grounds of novelty, inventive step and section 40 established.  Ground of manner of manufacture not established.

The apparently inadvertent inclusion of an extraneous page in the description portion of the specification led to the specification being ambiguous as to the nature of the invention and therefore lacking sufficiency.  It also led to the inclusion in the description of a definition which appeared to greatly broaden the scope of a term used in claim 1, causing the claims to read onto an apparatus disclosed in a prior art patent specification, thus rendering the claims not novel.

The claims were found to be lacking an inventive step on two analyses: the "obvious to try" criterion as propounded in, for instance, Beecham Group Ltd's (Amoxycillin) Application, and the criterion of whether the invention was an inventive selection as set out in Clyde Nail Company Ltd v Russell.

An amendment making essential a feature which, in the specification as filed, had only been shown in a drawing was found not to result in the claims claiming matter not in substance disclosed in the specification as filed.  The amended claims were thus entitled to a priority date of the date of filing of the provisional application associated with the application in suit, and were not "self-published".

Costs were awarded against the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 683874 by Richard Arnot Jones, and an opposition thereto by Interium Pty Ltd under section 59 of the Patents Act 1990.

BACKGROUND

Patent Application 683874 was filed on 4 May 1994 by Craig Edward Douglas as application 61878/94.  It was associated with provisional application PL 8614 filed on 5 May 1993.  Application 61878/94 was advertised accepted on 27 November 1997 and given the six-figure number 683874.  The application was subsequently assigned to Richard Arnot Jones.

A notice of opposition to application 683874 was filed on 27 February 1998 by Interium Pty Ltd.  All evidentiary stages were completed, with some minor extensions of time, by 22 September 1999.

The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40.

The matter was heard on 10 March 2000 in Melbourne.  The opponent was represented by Mr Richard Smoorenburg assisted by Ms Susan McCausland, patent attorneys of the firm Watermark, Melbourne.  The applicant did not appear at the hearing, but provided written submissions.

THE SPECIFICATION

The invention described in the specification relates to an illuminated sign display panel assembly.  It is of relatively simple construction, comprising a panel of transparent material and a light source, such as a fluorescent tube, located along an edge of the panel.  Light passes through the edge of the panel into the panel and by exiting through a surface of the panel it illuminates the surface, and thus the panel.  To influence the distribution and overall quantity of light exiting a surface of the panel, a pattern of lines is applied to the surface.  The specification states that the pattern of lines can be applied to the transparent panel by etching, painting, sand blasting, screen printing or any other means of applying a medium to a transparent panel.  Alternatively, the pattern of lines may be applied to a transparent film which may then be adhered to one or both surfaces of the transparent panel.  The display material is either applied directly to the surface of the transparent panel, or is provided on a separate panel secured to the transparent panel.

The inventive concept resides in the specific form of the pattern.  In a passage that seems to be a "consistory statement", the invention is described as follows:

"The present invention thus provides an illuminated sign display assembly comprising a transparent panel adapted to support a sign, said transparent panel having a pair of opposite planar surfaces, and at least one linear side edge, a light source adjacent said one edge of said panel, and wherein at least one of said surfaces is covered substantially with a pattern of straight lines, said lines extending substantially normal to said one edge.

The present invention also provides a transparent panel for use in an illuminated sign display assembly, said panel having a pair of opposite planar surfaces and a substantially linear side edge adapted to be located adjacent a light source, and wherein at least one of said surfaces is substantially covered in a pattern of straight lines, said lines extending substantially normal to said one side edges [sic]."

However, the invention is defined by the claims in somewhat narrower terms.  Of the ten claims, only claims 1 and 8 are independent, and read as follows:

“1.  An illuminated sign display assembly comprising: a transparent panel adapted to support a sign, said transparent panel having a pair of opposite planar surfaces, and at least one linear side edge; a light source adjacent said one edge of said panel; and wherein at least one of said surfaces is covered substantially with a pattern of lines comprising a series of adjacent rows of straight lines, each of said lines extending substantially normal to said side edge, said rows extending in a direction substantially parallel to said side edge."

"8. A transparent panel for use in an illuminated sign display assembly, said panel comprising a pair of opposite planar surfaces and at least one substantially linear side edge adapted to be located adjacent a light source, wherein at least one of said surfaces is substantially covered in a pattern of lines comprising a series of adjacent rows of straight lines, each of said lines extending substantially normal to said side edge, said rows extending in a direction substantially parallel to said side edge."

Preferred features additional to those already mentioned include the lines being of the same length, equi-spaced and parallel, and the lines in each row being staggered in relation to the lines in the adjoining row.  The resulting arrangement of panel and light source may be depicted diagrammatically in plan view so:

Other optional features of the invention are that two light sources, each on opposed edges of the transparent panel, may be provided when more powerful illumination is required and that the density of lines may increase with distance from the light source to give even illumination of the panel.

Two background circumstances regarding the complete specification worth mentioning at this point are:

(1)In the complete specification as originally filed and also the identically-worded provisional specification, the feature which is defined by claims 1 and 8 that the pattern lines on the surface of the panel comprise

"a series of adjacent rows of straight lines, each of said lines extending substantially normal to said side edge, said rows extending in a direction substantially parallel to said side edge"

was not mentioned in the text of the specification.  A figure of the drawings does, however, appear to at least attempt to display this feature.  To what extent it succeeds in this is something I will address later in my decision.

(2)In his written submissions to the hearing the applicant concedes the specification as accepted contains a mistake, in that the page numbered "1" which immediately follows the front page of the specification was mistakenly included by the applicant in the accepted version of the specification in the course of amending the specification, and should be deleted.

EVIDENCE

The evidence in support consists of the following:

·     A statutory declaration by Michael Timothy Seymour Royle.  Mr Royle appears to be independent in this matter, and his background seems to make him well-qualified to give evidence on the common general knowledge in the art.  In his evidence he contends that the present invention is lacking an inventive step over two prior art patent specifications, namely, Australian patent No. 637505 (hereafter referred to as "the Minitronics patent" after the patentee) and Australian patent No. 647834 (hereafter referred to as "the Ashall patent" after the inventor, John Ashall).

·     A statutory declaration by the same John Ashall referred to under the previous dot-point.  Mr Ashall is, in effect, an employee of the opponent company and thus cannot be considered to be independent in this matter.  I consider Mr Ashall has a background which enables him to have a good understanding of the common general knowledge in the art, although the clear fact of his own inventiveness suggests that he is not himself entitled to be regarded as a "person skilled in the art".  Mr Ashall compares the disclosure of the present application with a number of prior art documents, with particular emphasis on his own invention.  He concludes that the present application is anticipated by several prior art documents, and also that

"the claims of the [present] Application are merely a combination of features of common general knowledge and are thus an obvious combination of features which involved no ingenuity in combining."

The evidence in answer consists of two declarations by Richard Arnot Jones.  Mr Jones is the current applicant and nominated person.  The declarations state that Mr Jones has been involved in the research, development, production and design of edge lit signs for six years.  The declarations are dated 18 June 1999, so it appears that Mr Jones' background in the art does not extend to before the earliest priority date of the claims.  One declaration is a response to the Royle declaration in the evidence in support, the other is a response to the Ashall declaration.  Mr Jones' evidence reviews the evidence in support by Royle and Ashton, and contests a number of aspects of that evidence.  Mr Jones concedes that the only distinction between the claimed invention and the prior art lies in the particular characteristics of the pattern of lines of his device, but that this has an effect upon the overall operation of the device and results in the invention being both novel and inventive.

The evidence in reply is another statutory declaration by Michael Royle in which he disputes various aspects of Mr Jones' evidence in response to Mr Royle's first declaration.  Those aspects are mainly to do with what has actually been disclosed by the prior art and what "working differences" are possessed by the present invention.  The declaration in large measure relies upon a definition of the word "line" in the specification which seems to have the effect of expanding the scope of the word beyond its normally accepted meaning.  The definition in question appears in the page of the specification which the applicant has indicated was mistakenly included in the specification as part of the amendment process and which he has indicated he intends to propose amendments to delete.

Further details of the evidence, where relevant, will be given later in the decision.

SUBMISSIONS

The applicant's written submissions commence by conceding that, as already mentioned, the page of the specification numbered "1" was retained in the specification unintentionally in the course of amending the specification.  The applicant also concedes that there are some minor errors in claim appendancies.  However, he challenges the applicability of some minor clarity issues the opponent had raised in its statement of grounds and particulars.  He also disputes the allegation by the opponent that the specification as filed lacked sufficiency and that the claims are not fairly based on the disclosure of either the provisional specification or the complete specification as filed, both of which rely upon a drawing for the disclosure of certain of the essential features of the invention.

On manner of manufacture, the applicant cites several court decisions (of greatest significance being National Research Development Corporation v Commissioner of Patents 102 CLR 252) as establishing that his invention is a manner of new manufacture. He goes on to submit that his invention was not a mere collocation of known integers as

"there is no evidence that a pattern of lines comprising a series of adjacent rows of straight lines with the lines extending substantially normal to the side edge and the rows extending substantially parallel to the side edge is a known integer."

On novelty, Mr Jones submits that as a dot cannot be interpreted as a line, none of the cited prior art documents could be considered to give "clear and unmistakeable directions" to produce the invention as claimed (Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428, General Tire & Rubber Co. Ltd. v Firestone Tyre & Rubber Co. Ltd. [1972] RPC 457). He further submits that application of the reverse infringement test (Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] CLR 228) points to the present invention being novel, and that the invention could not be considered to plainly show no inventive merit, or comprise a mere mechanical equivalent or workshop variation (R.D. Werner & Co. Inc. v Bailey Aluminium Products Pty. Ltd. 80 ALR 134).

In relation to inventive step, Mr Jones contends that the evidence did not establish that Mr Royle qualified as a person skilled in the art.  He goes on:

"There is no evidence that a skilled addressee could have reached the same result as the inventor without the exercise of inventive ingenuity nor evidence that the claimed invention would have been obvious to a skilled addressee at the priority date.  There is no evidence that it was obvious to try the arrangement claimed in the current patent application: Johns-Manville Corp's Patent [1967] RPC 479".

Following this he reiterates assertions made in his evidence as to the working advantages of the invention.  He states:

"The intensity of light decreases with the square of the distance from the source.  The sign display assembly of the present invention is designed to allow greater reflection of light with distance from source.  This is a significantly different technique to that of the prior art described by Royle which is not designed to efficiently utilize "tir" [total internal relection] compared to the cascading effect of the pattern of lines achieved in the present invention".

Mr Jones then observes that in matters such as these the onus of establishing its case lay with the opponent, and cites authorities for that approach.  He concludes his submissions by pointing out that a number of other patents have been granted for illuminated sign display assemblies using different patterns to improve light diffusion, and that the current application provides a further pattern arrangement which provides improved diffusion.

At the hearing Mr Smoorenburg began by addressing the written submissions provided by the applicant.  He firstly indicated that the opponent would be opposing any attempt to delete the page of the specification which the applicant had indicated had been unintentionally included in the accepted version of the specification.  The reason given for opposing the deletion of this page was that "the focus of the invention will be changed" and that "as a result of the amendment, the specification would not comply with subsection 40(2) and 40(3)".  In particular, the removal of the page would result in the removal of a definition of the word "line", which Mr Smoorenburg contended "shifts the arrow pointing to the invention" and "leaves open to further interpretation by a court or other person what is a 'line' and may be broadening the scope of the claims".  Removal of the page also would result in removal of some statements of the invention, which was said by Mr Smoorenburg to also shift the arrow pointing to the invention and to raise issues of fair basis and whether the invention is a manner of manufacture.

Mr Smoorenburg submitted that the claimed invention lacked novelty in light of the Ashall patent, based on the reverse infringement test.  His reasoning relied on a perceived overlap between the definition of a "line" in the present application and that of a dot in the Ashall patent, which discloses a similar arrangement to the present invention except that dots are used instead of lines.  Mr Smoorenburg also advanced an argument, based on the case of Clyde Nail Company Ltd v Russell (1916) 33 RPC 291, that the claimed invention is not novel because the choice of the pattern of lines in the present application is a mere selection among possible alternatives, but with no clear advantages being indicated over the other possible line arrangements.

In written submissions to the hearing, the opponent also contended lack of novelty on the basis of two US patent specifications (5,130,898 and 5,134,549), but this was not touched on in oral submissions.

In relation to inventive step, the claimed invention was said by Ms McCausland to lack an inventive step on an "obvious to try" basis, citing Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261 as authority for this approach. Ms McCausland stated that the question to be asked is whether, on the basis of the common general knowledge which the opponent was alleging to exist, the non-inventive skilled person considering the problem of even illumination of an edge lit sign would consider attempting to use rows of lines, with the lines extending perpendicular to the light source, and submitted that the answer to that question was yes. And as there was no "unexpected result, product or an improvement or benefit of an unexpected kind" (per Beecham, supra), the invention must be obvious.

Ms McCausland further submitted that the invention was also lacking an inventive step when various patent documents in the evidence were considered in light of the common general knowledge.  This was on the basis that the differences between each patent document (which the person skilled in the art would have ascertained, understood and regarded as relevant) and the claimed invention amounted to mere choices that would be part of the uninventive skilled person's common general knowledge.

The opponent's submissions on non-compliance with section 40 were concentrated around issues of fair basis, including whether the amendment to the claims to include the feature of

"a series of adjacent rows of straight lines, each of said lines extending substantially normal to said side edge, said rows extending in a direction substantially parallel to said side edge"

had involved the claiming of matter not in substance disclosed in the specification as filed.  Because it did, so the argument went, this meant that the new matter was only entitled to a priority date of when the amendment was filed (section 114), and thus the claims claiming the new matter were not novel as a consequence of "self-publication".  The reason why the specification as filed did not provide a fair basis for the feature in question was, according to Mr Smoorenburg, that it did not attach any significance to the feature from the point of view of being inventive.  He said:

"the specification does not specify some advantage, some benefit, some problem solved or some outcome which has not been previously provided.  The specification does not state any advantage or benefit anywhere."

In thus arguing Mr Smoorenburg relied principally on the case of Coopers Animal Health Australia Ltd v Western Stock Distributors [1988] AIPC 90-491, as well as applying the rules set out in Mond Nickel Co's Application [1956] RPC 189.

It was also submitted by the opponent that the promotion of this feature to being a characterising feature of the invention meant the specification at filing lacked sufficiency, as it did not give an adequate description of the invention when filed.  Further lack of sufficiency was said to arise as a result of information contained in the applicant's evidence not being included in the description of the best method of performing the invention.

Lastly, Mr Smoorenburg contended that the invention was not a manner of manufacture (section 18(1)(a)), as it involved a mere collocation of known integers having no new or improved working result.  The absence of a new or improved working result followed, it was asserted, from the absence in the specification of any mention whatsoever of any advantages of the claimed pattern of lines.

I will set forth the submissions made by the parties in more detail, where material, later in my decision.

DECISION

Section 40

As mentioned previously, the written submissions from the applicant foreshadow an amendment of the specification to delete the page numbered "1" (which is actually the second sheet of the document).  The applicant claims that the page has been unintentionally included in the accepted version of the specification because of a mishap in the course of amending the specification.  The opponent's response was to state at the hearing that it will oppose any such amendment to delete the matter contained in the page on the basis that "the focus of the invention will be changed".  The prospect for such an amendment to be allowed is, of course, outside the scope of this decision.  I will therefore proceed on the basis that the page in question continues to be part of the specification.

However, the applicant's concession that page "1" should not be present in the specification impinges upon certain issues surrounding the content of that page.  One passage of that page in particular is important to the opponent's case, and, not unexpectedly, the prospect of its deletion was of concern to the opponent.  The passage in question reads:

"'Lines' used in the specification and in the claims, can be of any shape, or connected to form regular or irregular shapes, for example, triangles, rectangles, squares etc, they may be angled and or may vary in length and or thickness, be broken or staggered, be of one complete length, for example the lines may be, vertical, horizontal, angled, curved, squiggly, and can in fact be of irregular shape.  The lines are translucent or opaque, preference is made to light-coloured for example, white."

This definition of "line" is, at least in some respects, at odds with other parts of the specification, especially with regard to what is claimed.  For example, the stipulation in the definition that the lines can be angled, vertical or horizontal suggests that the lines can be oriented in any manner relative to the light source, whereas the claims limit the orientation to being substantially normal to the light source.  Also the definition states that the line can be continuous, in contrast with the claims where the lines are broken.  Thus the specification has an appearance of being internally contradictory.  However while it is clear that the specification contains some sort of mistake, the exact nature of that mistake (and, implicitly, its correction) is not obvious on the face of the document.  To assume the passage containing the definition of "line" is extraneous and should be disregarded (presuming such an amendment were to be allowable) is one possible way of overcoming the contradictions within the specification.  However other scenarios are within the realms of possibility, such as excision of only certain parts of the passage or amendment of the claims.  The upshot is that the description of the invention does not enable the scope of the claims to be determined with adequate certainty, and accordingly the specification lacks sufficiency in this respect.

As to the opponent's claim that the "focus" of the invention will be changed if the definition of "line" is deleted, I agree with the comment made by the opponent in its submissions that the presence of the definition in the specification results in the word "line" being interpreted more broadly than its literal meaning.  That is, the "change" of focus will be a narrowing of the focus.  For example, to say that a line can be a triangle, square or rectangle in my view goes beyond the normal connotation of a line, although there may be room to argue to the contrary in the case of rectangle since in practice a line will always have some transverse extent.  However, the narrowing of the "focus" in this way will not necessarily result in the claiming of matter not in substance disclosed in the specification prior to amendment.

Another concern held by the opponent regarding the deletion of the page numbered "1" is that it would result in excision from the specification of statements of the invention present on the page which indicate the invention to be something broader than what has been claimed.  I note, however, that even if the page were to be deleted the specification would still contain at least one statement of the invention of this kind (that is, couched in broader terms than the claims), and thus it is difficult to see the deletion of the page as making any practical difference in this respect.  My reading of the specification is that even if the page numbered "1" is present in the specification, it is the form of the invention as set out in the claims which is the invention described by the specification.  The wording of the specification is such that the addressee of the specification would see the claims as overriding any inferences drawn from the body of the specification that the invention is something broader than what is claimed.

I turn now to the main footing upon which the opponent argues its ground of non-compliance with section 40, namely, lack of fair basis - although I will observe at the outset that, strictly speaking, the circumstances do not concern fair basis, or even section 40.  The opponent submitted that amendments made to the claims in prosecuting the application to acceptance had resulted in the claims as accepted neither being fairly based on the complete application as filed nor the associated provisional application.  In actuality what the opponent was contending was that the amended claims claim matter not in substance disclosed in the specification as filed, in contravention of section 102(1).  However the point is a trivial one as it is well accepted that the tests for fair basis and in substance disclosed are substantially the same (United-Carr Incorporated's Application [1971] RPC 23 and Hoffman la Roche v Commissioner of Patents 123 CLR 529).

As a consequence of the amendments being contrary to section 102(1), so the opponent's argument goes, then because the amendments have been made section 114(1) of the Patents Act operates to accord a priority date to the amended claims of the date on which the amendment was filed and thus the claims as amended lack novelty on the basis of self-publication.

The first issue that needs to be addressed in resolving whether the present claims are fairly based on the disclosure of the specification as filed is whether there has been a clear disclosure at all in the specification of the feature:

"a series of adjacent rows of straight lines, each of said lines extending substantially normal to said side edge, said rows extending in a direction substantially parallel to said side edge".

The particular difficulty of the specification in this regard is that, as already mentioned, there was no description of this feature in the text of the specification as filed, but merely an illustration of it in the drawings.  In his first statutory declaration Mr Royle criticises the drawing, stating:

"it is poor and does not demonstrate any engineering interpretation of the lines being substantially normal or the rows parallel to the light source side edge".

I do not think there is any doubt that a disclosure in a drawing of a specification may provide a fair basis for matter defined in a claim of that specification - see the quote later in this decision from Stack v Brisbane City Council [1999] FCA 1279. In a situation such as the present where the matter in question concerns the specific form of a pattern, I think that is particularly so. What Mr Royle was alluding to is that the drawing does not show the lines as being precisely normal to the side edge adjacent to the light source. The drawing of the transparent panel shows the panel as being almost rectangular. However, the fact that it is not quite rectangular has the effect that whereas the lines adjacent the edge furthest from the light source are normal to the edge, the lines adjacent to the edge which is adjacent to the light source are angled slightly (about 10°) to the normal. Just what the skilled addressee would make of this is difficult to judge. When I first read the specification, I did not notice the lines are not exactly normal. However, I was reading the specification in its amended form, and as such had perceived the drawings with a preconception that the lines were normal. But what if the skilled addressee had noticed that the lines were not drawn precisely normal: would he or she have read the drawings as disclosing something other than the lines being "substantially normal" to the side edge, as is defined in the claims?

The applicant does not assist his case in this regard.  He merely states:

"Fig. 1 of the drawings is illustrative of the invention only and must be read in conjunction with the description to obtain a correct interpretation of the preferred embodiment of the invention".

Which is all very well.  But the problem is that apart from referring to "a pattern of lines", the specification as filed is otherwise silent as to the nature of the pattern.

Not without some hesitation, I lean towards the view there has been a disclosure of the feature in question.  I think there is a combination of factors at work here that would lead the addressee of the specification to conclude that the drawing disclosed lines that were substantially normal to the side edge.  In the first place there is the fact that on a superficial viewing the drawing does give that impression.  In the second place one edge of the transparent panel does indeed show this feature, and it is a reasonable assumption that the panel is intended to be rectangular.  In the third place is the perception gained from the drawing itself that the deviation from the normal of the lines at the edge adjacent to the light source could well have come about as a result of flawed drawing rather than being intentional.  Finally I note there only need be a disclosure of the lines being substantially normal to the side edge of the panel, and that some deviation from geometric preciseness is permissible.

Having concluded that the complete specification as filed did disclose this feature, the next issue that has to be addressed is whether a claim which includes that feature would, insofar as that feature is concerned, be fairly based on that specification.  The opponent says no, and has placed heavy reliance in this regard on Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (supra).  In this case a claim of a complete specification was found to be not fairly based on a provisional specification, because although a chemical compound defined in the claim was disclosed in the provisional, its promotion to being an essential feature of the invention was held to be an inventive selection over the disclosure in the provisional.  This situation does not arise with the present application.  The inclusion of the feature of the pattern of lines in the claim cannot be regarded as inventive.  The feature is specifically set out in the specification, such that there is a "real and reasonably clear disclosure" of it.  There is no question of it being inventive as a result of it being a selection (in the patent law sense) from what was disclosed in the specification as filed.  If there was any selecting involved, it was in selecting the pattern to describe in the specification in the first place from all other patterns, a point I will have more to say on later in this decision.

The following quote from Stack v Brisbane City Council (supra) serves, I think, to elucidate Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd vis à vis the law on fair basis:

"129  The question of whether Claim 1 of the petty patent is fairly based on matter disclosed in a prior specification is a narrow one.  It involves a question of whether the claim as expressed travels beyond matter disclosed in the prior specification: Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 240; CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) at 279. The task is not one which involves an overly meticulous verbal analysis of the documents. It is sufficient if a new feature was a development along the same line of thought which constitutes or underlies the invention described in the earlier document, provided the additional feature does not involve a new inventive step or bring something new into the combination which represents a departure from the idea of the invention described in the earlier document: Stauffer Chemical Company's Application [1977] RPC 33 at 52; Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 FC at 385, 389, 401; CCOM Pty Ltd v Jiejing Pty Ltd at 281. A claim may be fairly based on matter in the specification which is not verbal description, but accompanying drawings, and upon matter disclosed in a portion of the specification which does not include the description of the preferred embodiment: CCOM Pty Ltd v Jiejing Pty Ltd at 280, 283.

130  In CCOM Pty Ltd v Jiejing Pty Ltd, the Court (Spender, Gummow and Heerey JJ) concluded, after a review of the history of the relevant statutory provisions and the cases (at 281 - 282):

'In Rhone-Poulenc (supra) at 11 Fullagar J emphasised that disclosure without claim is enough.  Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, `essential integers' or `essential features' of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question: cfCoopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1986) 6 IPR 545 at 560-561, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification: cf Yamazaki (supra) at 93, 97.  Fullagar J also pointed out that the requirement of `fair basing' on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be `a real and reasonably clear disclosure'. This passage was adopted and applied by Gibbs J in Hoffman-La Roche at 537 - 539,....'"

The claims are therefore fairly based on the disclosure in the associated provisional specification, and entitled to a priority date of the date of filing of that document.

While applying the law on fair basis is a valid approach to determining the priority date of the present claims, an alternative approach, which bears more directly on the circumstances at hand, is to consider whether the claims claim matter not in substance disclosed in the specification as filed. The issue of whether an amendment which promotes a non-essential feature to an essential feature results in the claiming of matter not in substance disclosed in the specification as filed would seem to have been settled by the decision in A.M.P Incorporated v Hellerman Ltd. [1962] RPC 55. In that decision, Lord Denning stated the following:

"It seems to me that where the Court of Appeal fell into error was because they approached this case much as courts approached such cases under the previous Act.  They looked at the original specification so as to see what were the "inventive steps" claimed by it.  They found that the emphasis was on the pawl and ratchet device to prevent "under-crimping", and not on the stop to prevent "over-crimping".  They thought, therefore, that the patentee, so far from disclaiming anything by the amendment, was seeking to alter the emphasis of the specification, so as to add prevention of over-crimping to prevention of under-crimping.  In short, the patentee was not disclaiming any "inventive step", but claiming a fresh one.  If that were so, it would under the old law have been a good objection to an amendment because the patentee would be claiming an invention "substantially different" from the invention claimed in the specification.  The words of Luxmoore J in Eveno's Application 49 RPC 385, were spoken in that context. They have ceased to be of application today. For Parliament has altered the old law. It is no longer necessary to inquire into the niceties of inventive steps. It is only necessary to see whether the matter was in substance disclosed in the original specification, and that it clearly was. The tool with a stop was disclosed as well as the tool without a stop. The patentee disclaims the tool without a stop and confines himself to the tool with a stop. I see no bar in the 1949 Act to this amendment.

I would agree that if the amendment had introduced an entirely new integer, that is to say, a feature that had not been disclosed in the specification previously, then it could not have been allowed.  But here there is no new integer.  The "stop" was clearly disclosed in the original specification.  All that is done is to make it an essential feature, whereas it was previously optional.  And this, in my opinion, is permissible under the 1949 Act."

In the case in suit the feature of the pattern was clearly disclosed in the complete specification as filed, and thus the subject matter of the claims as amended was in substance disclosed in the specification as filed.  It follows that the claims are entitled to a priority date they would have if they were in that specification. Since that specification is identical to the provisional specification, it must follow the amended claims are entitled to the priority date of the provisional application, and the opponent's allegation of "self-publication" is unfounded.

Based on an argument along similar lines to that raised in relation to fair basis (or, actually, in substance disclosed) the opponent also contends that at the time of filing the specification lacked sufficiency in that:

(i)   in the specification as filed there was no indication of the invention that the applicant is now claiming; and

(ii)  the best method of constructing the illuminated sign display was not included in the specification as filed in the light of Mr Jones assertion in his evidence that the present invention "has proven highly successful when used in conjunction with the proper ink."

Regarding the first of these, in finding previously that the claims were in substance disclosed in the specification as filed, I found there had been a sufficient indication of the features of the invention in the drawings accompanying the specification as filed.  It is true that those features were not accorded the status of being essential features of the invention (that occurred later), but the authorities, as previously explained, do not require that be the case.

Regarding the second of the aspects in which the specification is said to be lacking in sufficiency, it was held by Gummow J in in Rescare Ltd. v Anaesthetic Supplies Pty. Ltd. 25 IPR 119 that:

"The adequacy of the disclosure should be judged by reference to the time from which dated the monopoly granted the applicant in exchange for the disclosure.  This is the date from which the term of the patent runs."

It is clear from the judgement that the relevant date is the date of filing of the complete specification.  It follows that any discovery along the lines that Mr Jones appears to be referring to (that is, subsequent to filing) will not cause the specification to lack sufficiency.

In relation to clarity, the opponent has drawn attention to several incorrect claim appendancies.  The applicant concedes these cause the scope of the claims in question to be unclear and require amendment.

The opponent also sees lack of clarity in the use of the word "covered" in claim 1, citing the dictionary meanings of "concealed", "hidden" or "screened" as being inappropriate to the context in which the term occurs.  However, I do not consider there is any uncertainty surrounding the use of the expression "covered" in claim 1.  In my view it is clear that the word "covered" is being used in one of its usual senses of being distributed over the whole of whatever it is that is covered.

In summary, then, in relation to section 40 and related matters I find that the specfication lacks sufficiency due to uncertainty resulting from the interaction of the claims with the definition of "line" given in the description part of the specification.  I also find that claims 7, 9 and 10 are unclear in their appendancy.  Otherwise, the specification fully complies with the requirements of section 40.  I further find that the claims in their present form were in substance disclosed in the specification as filed and are fairly based on the associated provisional application and are entitled to take their priority date from that disclosure.

Novelty

The basic test for anticipation and lack of novelty is the "reverse infringement" test - see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (supra) and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (supra).  In applying this test I must ascertain whether each and every one of the essential features of the claimed invention is provided by the prior disclosure (Rodi and Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Flour Oxidising Co. Ltd. v Carr & Co. Ltd. (supra).

I do not think there is any doubt that every feature of claim 1 is essential.  A feature is essential if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed (Catnic Components v Hill and Smith Ltd [1982] RPC 183), and this seems to me to be the case here. This was not disputed by the opponent.

At the hearing the opponent relied mainly on the Ashall patent to establish its ground of lack of novelty.  This document does disclose something very similar to what is claimed in the present application.  The only difference would seem to be that whereas the present claimed invention uses lines normal to the light source, the Ashall patent uses dots.  The arrangement in rows parallel to the side edge is the same, as indeed is the optional feature of staggering between adjacent rows.

The Ashall patent even includes a definition along similar lines to that which I have quoted previously from the present application.  The definition from the Ashall patent states:

"'Dots' used in the specification and the claims can be of any size or shape, for example square, round, rectangular, triangular and in fact can be of irregular shape."

Were it not for the respective definitions of "dot" and "line" in the specifications, I would be satisfied that a distinction sufficient to be novelty conferring could be drawn between these terms in the context of the invention.  The Shorter Oxford English Dictionary (third edition) defines "line", apropos the present context, as "a long and narrow stroke or mark", and defines a dot as "a minute roundish mark".  "Narrow" and "round" to me convey opposed meanings.  However, the definitions alter the situation.  They operate to broaden the dictionary meanings (especially that of line) to the extent that they overlap.  A dot according to the Ashall patent can be square, rectangular or triangular or any irregular shape.  A line according to the present specification can also be inter alia, square, rectangular, triangular or irregular, and may be angled and or may vary in length and or thickness.  I am in no doubt that a "dot", as that term is understood from the Ashall patent, would clearly come within meaning of "line" in the present application, and therefore the sign display assembly disclosed in the Ashall patent would infringe the claims of the present application.  Accordingly the claims lack novelty.

However, perhaps recognizing this, the applicant has indicated it will delete the definition of line from the specification.  I consider that that would suffice to remove the matter disclosed in the Ashall patent from within the scope of the present claims.

The opponent also contended that the application in suit lacks novelty in light of two other patent documents, namely, US Patent No.s 5,130,898 and 5,134,549.  Mr Ashall made a similar assertion in his evidence.  However, on my reading of these documents what the opponent says are lines corresponding to the lines defined in the present claims are instead "cross-hatching" used to delineate certain areas within the drawings.  This being the case, neither of these citations anticipates the present invention.

One other submission made by the opponent on novelty was that the invention lacks novelty because it is not a patentable selection, based on the decision in Clyde Nail Company Limited v Russell (supra).  I am inclined to think, however, that the line of argument put forward by the opponent in this regard goes more to a lack of an inventive step rather than novelty.  To my mind the circumstances of the present situation are different to those obtaining in the case of a chemical selection, in which the selection is from a known field.  In the present case the matter defined by the claims is not known in the prior art (provided one ignores the overlapping definition of the Ashall patent).  This view is reinforced by the fact that in Clyde Nail v Russell, a case where the circumstances are quite similar to those of the case in hand, the issue seemed to be viewed as being one of whether the invention lacked subject matter, which, for all intents and purposes, is equivalent to the present day consideration of inventive step.  I will therefore consider the issue of whether the present invention is a patentable selection under the heading of inventive step.

Inventive Step

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

(a)   common general knowledge; or

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

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

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

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

At the hearing the opponent made certain allegations as to the common general knowledge in the art based on the concurrence of the applicant to assertions made by the opponent's declarants as to what was well known in the art.  While I have some doubts as to the degree of reliability that ought to be placed on the applicant's evidence as to the common general knowledge, given his lack of background in the art, I am not aware of anything tending to suggest the common general knowledge is otherwise.  Under the circumstances I think I must accept the existence of the common general knowledge in question to have been proven.  That common general knowledge is:

(i)    a transparent panel with a light source adjacent at least one side of the panel;

(ii)   applying a diffusing pattern to both sides of the panel for double-sided illumination;

(iii)  using shapes such as dots with edge lit panels;

(iv)  increasingly changing the density or thickness of lines away from the light source;

(v)   applying a translucent sheet to a transparent panel; and

(vi)  applying a pattern by etching, painting, sandblasting or screen printing.

There was one feature which, contrary to what was asserted by the opponent, the applicant did not concede to be common general knowledge, and this was the principle of using parallel or perpendicular lines to attempt to provide even illumination across a display area of an illuminated sign.  Mr Royle stated he "considered" this to be well known, but this appeared to be surmise based on the knowledge that two products having this feature were being sold in 1991.  I do not consider this to be adequate evidence of common general knowledge.
Another item of prior art which the opponent contended was common general knowledge was the Ashall patent.  Mr Royle states that he "understands" a certain product he considers is well known on the market is the subject of this application.  I do not think that this is a sufficient basis upon which to conclude that the totality of the patent specification is common general knowledge.

However, in my view the Ashall patent falls within the category of documents that "could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art".  As I have indicated earlier its subject matter is very closely related to that of the present application, and indeed it appears that Mr Douglas (the original applicant), who at that point did not have professional assistance, used the Ashall patent as a basis for drafting his provisional and complete specifications.

There are another two patent documents in the evidence whose disclosures are very close to that of the present application and which accordingly I consider could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.  These are the Minitronics patent and US Patent No. 4,811,507 (hereafter referred to as "the Blanchet patent", after the inventor).

The Minitronics patent discloses an illuminated sign which differs from that defined by the present claims only in that the lines normal to the light source are continuous (rather than being broken) so as to form a series of rows of lines which are parallel to the side edge adjacent to the light source.  The Blanchet patent discloses an illuminated sign which is exactly the same as that defined by the present claims except that the lines are parallel to the side edge adjacent to the light source.  Thus it is apparent that the invention occupies a very small niche not covered by the prior art.

There is no evidence that the particular pattern defined in claims 1 and 8 (the independent claims) is common general knowledge in the art.  Thus it is not possible to argue on a straightforward basis of considering common general knowledge with a prior art document or act that the claimed invention lacks an inventive step.  To overcome this, the opponent has put forward an "obvious to try" argument, based on the decision in Beecham Group Ltd's (Amoxycillin) Application (supra), citing the following passage from the decision:

"It is clearly established that, for a particular step or process to be obvious for the purpose of either section, it is not necessary to establish that its success is clearly predictable:  Johns-Manville Corporation's Patent [1967] RPC 479 at 494. It will suffice if it is shown that it would appear to anyone skilled in the art but lacking in inventive capacity that to try the step or process would be worthwhile: Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346, per Lord Reid at 355 and 356; Johns-Manville, supra, per Diplock LJ at 493 and 494;  Tetra Molectric Ltd v Japan Imports Ltd [1976] RPC 541 at 581, 583-4. Worthwhile to what end? It must, in my opinion, be shown to be worth trying in order to solve some recognised problem or meet some recognised need. The uninventive expert (see [1972] RPC page 355 line 5) should not be supposed to be attempting to discover something new, that is, to be striving for inventiveness. Having been shown what was disclosed by the prior art, he must be supposed to be attempting to solve some problem or fulfil some need which has not been resolved or satisfied by the prior art but which appears to his uninventive mind to be possibly capable of solution or satisfaction by taking the step or doing the thing under consideration. This, it seems to me, must involve the uninventive but skilled man having a particular problem or need in mind. If on carrying out this test he finds that the new step has the sort of consequence he had hoped but in an unexpectedly high degree, this would or might not mean that the new step was inventive or other than obvious; it might merely mean that a new and obvious step has solved the problem or met the need unexpectedly well. The question would, I think be one of degree. If on the other hand, the new step produces some unexpected result, product or an improvement or benefit of an unexpected kind it may well be held to be invention, the association of the new step with its result not having been obvious."

The opponent submitted that, to a person endeavouring to solve the problem of even illumination of an edge lit sign and equipped with the common general knowledge of the principle of using lines both parallel and perpendicular to the light source to provide even illumination across a sign, it would have been obvious to substitute the dots of the Ashall apparatus with lines of either orientation.  According to the opponent, this step could not be rendered non-obvious because of some unexpected result, because the specification does not disclose one. 

It is true that the specification does not disclose some unexpected result.  The applicant has, however, attempted in his evidence and submissions to explain the theoretical basis of his invention.  Although I had a good deal of difficulty making sense of this explanation, I believe this quote from the applicant's evidence may give the gist of it:

"By running the line in a broken or staggered row pattern, it allows more of the light (half the resistance in travel - approximately twice the light at the end) to travel further than if they were in a solid line and thus gives the better result of more even illumination."

This seems to be self-evident to me, and it is not clear to me why simply using a thinner unbroken line, as in the Minitronics device, would not achieve the same result, but in any case nowhere has the applicant suggested there is anything unexpected in the results his pattern achieves.  And it would be surprising if there was one, given that the science of light and optics is a highly developed one and the present invention seems to involve a very simple application of that science.

The reasoning used by the opponent in its "obvious to try" argument rests upon the principle of using lines both parallel and perpendicular to the light source to provide even illumination across a sign being common general knowledge.  As I have indicated, I do not think the evidence supports this.  However, I do think the evidence establishes that it was common general knowledge to try various patterns upon the transparent panel to achieve desired optical effects, and that, as the opponent put it, "the differences between each patent document and the claimed invention amount to mere choices that would be part of the uninventive skilled person's common general knowledge".  On that basis I am persuaded that, even making allowance for "the seductive clarity of hindsight" (Allsop Inc & Another v Bintang Ltd & Ors (1989) AIPC 90-615), the invention defined by claims 1 and 8 is lacking an inventive step when each of the Ashall, Minitronics and Blanchet patents are considered with the common general knowledge.

There is another manner in which this may be approached (which may really amount to the same thing), and that is by application of the selection principle set down in Clyde Nail Company Ltd v Russell (supra).  This case would appear to be closely analogous to the present situation.  The invention related to a particular shape of blank for forming varieties of nails.  In his judgement Lord Parker states:

"A mere selection among possible alternatives is not subject matter.  A selection to be patentable must be a selection in order to secure some advantage or avoid some disadvantage.  It must be an adaptation of means to ends impossible without the exercise of the inventive faculty.  It follows that in describing and ascertaining the nature of an invention consisting in selection between possible alternatives, the advantages to be gained, or the disadvantages to be avoided, ought to be referred to.  Suppose, for example, that in the present case the Patentees had said this:-

'We have selected a blank of the shape shown in the annexed drawing for making dog-spikes in a nail-cutting machine.  All you have to do is make a knife of a shape corresponding to the contour of this blank, and use it in the machine, turning over the metal strip after each cut in the usual way.  We claim the blank shown in the Drawing'.

In my opinion, such a Specification would be wholly insufficient.  It would not in any way ascertain or describe the nature of a patentable invention.  It would be equally applicable to any shape of blank.  It would be treating mere selection, apart from any adaptation of means to ends, as patentable subject-matter."

In the case of the present invention, the invention involves the selection of a particular pattern from what is probably an infinite variety of patterns.  The specification is wholly silent as to the advantages of the particular pattern which is the characterizing feature of the lines.  It is true that Mr Jones has attempted in his evidence and submissions to elucidate the advantages of the invention.  However, as I have already observed, these would seem at the very most to amount to no more than, in the words of Clyde Nail Company Ltd v Russell, an "adaptation of means to ends".  I am thus led to conclude, on the basis of  Clyde Nail Company Ltd v Russell, that the invention defined by claims 1 and 8 is not patentable subject matter, or, in other words, is lacking an inventive step.

Of the appended claims, claims 2 and 3 involve further characterization of the pattern on the panel and therefore lack an inventive step for the reasons explained previously in relation to claims 1 and 8.  The features defined in Claims 4 to 7 and 9 and 10 are disclosed in the Ashall patent as features of the illuminated sign display described in that patent specification, and thus as claims 1 and 8 are lacking an inventive step in light of the Ashall patent it is reasonable to conclude that claims 4 to 7 and 9 and 10 also are lacking an inventive step in light of the Ashall patent.  Alternatively, the features defined in Claims 4 to 7 and 9 and 10 are, I think, established by the evidence to be common general knowledge and do not contribute an inventive step to the claims to which those claims are appended, which themselves are lacking an inventive step.  It follows, therefore, that Claims 4 to 7 and 9 and 10 are also lacking an inventive step.

Accordingly I find that, in light of the evidence in this opposition, the invention defined in claims 1 to 10 does not involve an inventive step.

Manner of Manufacture

The opponent contends under this ground that the invention does not meet the threshold of inventiveness required by paragraph 18(1)(a) as it is not a patentable combination. In my view this allegation is without foundation. This invention does not appear to relate to a new combination of old integers. The invention appears to involve an old combination in which an improvement has been made to one of the integers - in particular, to the panel of the illuminated sign display by forming a specific pattern on it. The courts have drawn a clear distinction between a new combination and an improvement in one integer of an old combination, as in May v Higgins 21 CLR 119, Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc 26 IPR 565, and Winner v Ammar Holdings Pty Ltd (1993) AIPC 90-971. Thus the present invention cannot rely on being a new combination to satisfy the requisite level of inventiveness. That may, however, come from the existence of an inventive step in the improvement made to the old integer. Whether such an inventive step exists is a matter for consideration in accordance with section 18(1)(b)(ii). The "threshold of inventiveness" required by section 18(1(a) imposes no additional requirement for inventiveness over that of subparagraph 18(1)(b)(ii) (Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 (22 March 2000)).

As the invention is an apparatus, it is clearly a manner of manufacture.

Accordingly I find that the invention is a manner of manufacture as required by paragraph 18(1)(a) of the Patents Act 1990.

CONCLUSION

I have found that the ground of opposition of non-compliance with paragraph 18(1)(a) of the Patents Act 1990 (manner of manufacture) has not been established, but I have found that the opponent has been successful in its grounds of opposition of non-compliance with paragraphs 18(1)(b)(i) (novelty), 18(1)(b)(ii) (inventive step) and section 40. Moreover, I am unable to discern any inventive matter whatsoever disclosed in the specification.

I refuse the application.

COSTS

In accordance with the general principle that costs follow the event, I award costs against the applicant Richard Arnot Jones.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the opponent   :  Watermark, Melbourne