Richard Thomas Ross as trustee for Clear Focus Australia Trust - [2012] APO 39

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Richard Thomas Ross as trustee for Clear Focus Australia Trust [2012] APO 39

Patent:697657

Title:Image Display Apparatus

Patentee:  Richard Thomas Ross as trustee for Clear Focus Australia Trust
Delegate:  Ed Knock
Decision Date:  27 March 2012
Hearing Date:  8 February 2012, in Canberra
Catchwords:  PATENTS – third party request for post-grant re-examination – seven patent documents asserted to anticipate the claimed invention - four adverse re-examination reports – each report engendering proposed amendments in response - only one of the original seven patent documents invoked in the fourth report - “whole of contents” citation – further amendments foreshadowed at the hearing – amendments allowable - amended claims novel and inventive – patent as amended upheld

Representation: Patentee: Mark Horsburgh, assisted by Clarissa Wynne, Fisher Adams Kelly, Brisbane

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:697657

Title:Image display apparatus

Patentee: Richard Thomas Ross as trustee for Clear Focus Australia Trust
Date of Decision: 27 March 2012
DECISION

The amendments proposed on 16 March 2012 to Patent No. 697657 are allowable, and leave is granted for those amendments to be made. The claims of the patent as so amended are novel and involve an inventive step in light of the prior art referred to in the re-examination request, and thus no grounds exist for revocation of the patent as so amended.
REASONS FOR DECISION
Background
Patent application 81715/94 was filed on 22 December 1994. It obtained Convention priority of 18 October 1994 from United States patent application 08/324889. After several examination reports and requests under section 104 of the Patents Act 1990 by the applicant to amend the specification, the application was advertised as accepted on 15 October 1998. A patent was sealed on the application on 28 January 1999.
On 14 March 2007, Andrew Wilson of 3M Australia Pty Ltd, through the patent attorney firm of Freehills, Sydney, filed a request to the Commissioner to re-examine the patent. The request cited seven patent documents, in light of which it was said that various claims lacked novelty and an inventive step. However, due to a number of court actions related to infringement and a correction of the Register of Patents, a re-examination report was not issued until 7 May 2010. At the patentee’s request this report was re-issued on 21 July 2010. The report found that the claimed invention was anticipated by all seven citations. In response to that report the patentee filed a statement of proposed amendments under section 104 of the Patents Act 1990 on 21 September 2010 amending the claims. Another re-examination report issued, on 3 February 2011, but this time only two of the seven original citations were considered to be anticipatory. Further amendments ensued on 4 April 2011. A third re-examination report was issued on 6 May 2011, resulting in more amendments on 5 September 2011.
On 2 November 2011 a fourth and (as it turned out) final re-examination report was issued. This report found that now only one of the original seven documents anticipated the claims as they then stood. The re-examination report was accompanied by a letter from the Supervising Examiner in Patent Oppositions, Hearings and Legislation section, which noted:
“It seems that the re-examination has reached a stalemate, and it is not in the public interest or the patentee’s interest for this to continue indefinitely. It is appropriate to set this matter for hearing to resolve the stalemate.”
A hearing was set down for 8 February 2012. Representing the patentee was Mark Horsburgh, assisted by Clarissa Wynne, both patent attorneys of Fisher Adams Kelly, Brisbane. Gregory Ross, who had been the original applicant for the patent, was also in attendance. As well, Kerry Chrysiliou of Chrysiliou IP, Sydney, attended as an observer. I will say more on what transpired at the hearing in due course.
The specification
There will be few people who will not be familiar with the subject matter of the invention at some level. The invention is entitled “Image display apparatus”, and refers to the thin layer of material (such as plastic) commonly found placed on the rear windows of taxis, on the windows of buses and in a plethora of other applications in order to display an image. Commonly the image serves an advertising purpose, but often is just purely decorative. When used on a vehicle the image is visible to those outside the vehicle, but not to those inside the vehicle. Indeed, to those inside the vehicle the optical effect may be such that the presence of the layer of material itself may escape notice. This optical effect is achieved by the combined effect of there being numerous holes of relatively small size in the layer of material, the image-carrying surface of the layer of material being light-reflective in order to accentuate the image, and the opposite surface of the layer of material being light-absorbing in order to create an illusion of transparency.
Claim 1 of the patent is as follows:
“A one way vision panel assembly of the type whereby at least one image is visible from a first side of said assembly but whereby said image is not visible from a second side, opposite to said first side, of said assembly, said panel assembly including:
a light reflective front surface; and
a light absorbing rear surface;
said panel assembly being perforated by a plurality of through-holes passing through said front surface and said rear surface.”
Disregarding omnibus claims, the only other independent claim was an equivalent method claim to claim 1. It reads:
“A method of fabricating a one way vision panel assembly of the type whereby at least one image is visible from a first side of said assembly but whereby said image is not visible from a second side, opposite to said first side, of said assembly, said method including in any operative sequence:
providing a light reflective front surface;
providing a light absorbing rear surface;
perforating said panel assembly with a plurality of through-holes passing through said front surface and said rear surface; and
applying an image to said assembly.”
In response to the sequence of re-examination reports, the claims evolved through a series of proposed amendments until eventually (proposed) claim 1 read:
“A one-way vision assembly suitable for displaying at least one image, the image being visible from a first side of the assembly and substantially not visible from a second side, opposite to the first side of the assembly, the assembly comprising:
a first layer having at least a light reflective surface, bonded to:
a second layer having at least a light absorbing surface; and
an adhesive layer adjacent to a surface of the first or second layer,
wherein the assembly is perforated by a plurality of substantially round through-holes of a substantially uniform hole diameter of from about 0.035” to about 1.0” and arranged in a staggered hole pattern to provide an open area of up to about 70%, such that the holes through the first layer, second layer and adhesive layer are aligned.”
This edition of the claims did include a number of other independent claims to a device. However, since all fell within the scope of claim 1 there is no need to set them down here. As with the claims of the patent, there was an equivalent method claim to claim 1.
At the hearing Mr Horsburgh indicated that he wished to put forward yet another set of claims for consideration. His reason for doing so was that the allowability under section 102 of the Patents Act 1990 of the current proposed amendments had been challenged by Ms Chrysiliou in written submissions filed prior to the hearing. I will be going into this further later on in this decision.
Claim 1 of the new claims which were introduced into the hearing reads as follows:
“A one-way vision assembly of the type whereby at least one image is visible from a first side of the assembly and not visible from a second side, opposite to the first side of the assembly, the assembly comprising:
a first layer having at least a light reflective surface, bonded to:
a second layer having at least a light absorbing surface; and
an adhesive layer adjacent to a surface of the first or second layer,
wherein the assembly is perforated by a plurality of substantially round through-holes of a substantially uniform hole diameter of from about 0.001” to about 1.0” and arranged in a staggered hole pattern to provide an open area of up to about 70%, such that the holes through the first layer, second layer and adhesive layer are aligned.”
A comparison with the previous versions of claim 1, set out above, reveals that the preamble of this proposed version of claim 1 has substantially reverted to the preamble in the granted patent apart from the omission of the word “panel”, while the remainder of the new version of claim 1 is substantially the same as the version that had been the original subject of the hearing, differing only in a slight expansion in the range of hole-diameters defined in the new version of the claim.
There was one other claim to a device, but this was within the scope of claim 1. Also, as with the claims recited previously, there was an equivalent method claim to claim 1, claim 37, which reads:
“A method of manufacturing a one-way vision assembly, suitable for displaying at least one image, the image being visible from a first side of the assembly and not visible from a second side, the method comprising:
bonding a first layer having at least a light reflective surface to a second layer having at least a light absorbing surface; and
applying an adhesive layer adjacent to the surface of the first or second layer to form the assembly;
perforating the assembly with a plurality of substantially round through-holes of a substantially uniform hole diameter of from about 0.001” to about 1.0” and arranged in a staggered hole pattern to provide an open area of up to about 70%; such that the holes through the first layer, second layer and adhesive layer are aligned; and
applying an image to the assembly.”
The re-examination reports
The last of the re-examination reports (the fourth) found claims 1-4 and 10-50 to be lacking in novelty in relation to just one of the seven original prior art documents raised in the request for re-examination, namely AU36263/95 A (698239)(ROSS, GREGORY E.) 22 March 1996. This document was given the shorthand title D2 in the re-examination reports, and I shall refer to it likewise.
It is an important fact in this matter that D2 only became Open to Public Inspection on 22 March 1996, that is, well after the present patent’s priority date of 18 October 1994. D2 obtains its relevance in this re-examination because it has an earlier priority date than the present patent, namely 1 September 1994. It is thus available only for consideration as a “whole of contents” citation in respect to the ground of novelty under the Patents Act 1990, that is, it is not part of the prior art base for inventive step.
It is notable, but of no direct relevance in this matter, that the applicant for D2 is also the applicant of the present patent.
Crucially, D2 does not disclose any specific numeric dimensions for the holes through the assembly, whereas the latest version of the claims defines them to be substantially round through-holes of a substantially uniform hole-diameter of from about 0.001” to about 1.0”. As both Mr Horsburgh and Ms Wynne observed at the hearing, it is not particularly surprising that D2 is silent with respect to this feature, given that the present invention is concerned with the holes and their method of manufacture whereas D2 is concerned with the particular manner in which the image is formed upon the panel system. Specifically, D2 proposes the use of an electrostatic printing process (as, for example, is used in photocopiers), rather than the “conventional printing processes such as liquid ink silk screen, litho or similar inking processes”.
The re-examination report skirts around this absence in D2 of specific dimensions of the holes by running an argument that the size of the holes is inherently disclosed in D2, stating:
“…however it would appear that a person skilled in the art would realise suitable sizing for these holes would fall within the scope of the claimed range. This feature is inherently disclosed in the citation. It does not appear to relate to any unexpected advantage producing ‘unexpected and enhanced visibility’ through the assembly but would appear to be exactly what was expected by an ordinary worker in the art.”
According to the re-examination report, the hole-diameter feature is the only feature defined in claim 1 which is not explicitly disclosed by D2. The features of claims 2-4 and 10-50 are also asserted to be either disclosed in D2, or to be non-essential features of the claims in which they appear. Claims 5-9 were accepted by the re-examination report to be novel and inventive. The specific techniques defined by claims 5-9 for forming images on a one way vision assembly, namely, by projection, as a holographic image and as a lenticular image, were conceded by the re-examination report to have not been disclosed in D2.
Submissions
No written submissions were provided by the patentee.
At the hearing Mr Horsburgh commenced by making the observation that we had been through a number of reports until seemingly there remained just one last point to be resolved, which was around the question of inherency. He noted that there was no mention in D2 of the sizes of the holes, and if there was no mention of size “then where is this inherency argument coming from?” He referred to the often-cited quote from General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, (1972) RPC 457 at pages 485, 486, that:
"To anticipate the patentees claim, the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee."
In the present case, Mr Horsburgh contended that there had been no signpost in D2, as there had been no reference at all in D2 to the diameter of the holes. He posed the question that if the examiner is asserting that a person skilled in the art at the time would realise that the citation discloses those hole-sizes, then what led the examiner to that conclusion - what reasoning had been in his mind? He said that all we had at the moment was the expression of an opinion. Ms Wynne also made comments along these lines, asking “what are the clear and unmistakable directions in D2?” and noting that D2 is about forming an image, so that the addressee of D2, upon reading D2, would not do so for the purpose of obtaining information on hole-size. She noted that there is nothing in D2 which would lead an examiner to conclude that it discloses a hole-size of less than an inch.
I put forward the proposition that the hole-sizes are a natural consequence of the environment in which the one way vision panel was being used, and the use to which it was being put. I remarked that this was particularly the case given the wide range of values which had been defined in the claims. I also raised the issue of whether this is a case of “parameteritis”. Mr Horsburgh did not agree with any of these approaches. He said that it was true that the inventor had arrived at the hole-diameter by trial and error and experimentation, and included it in the description of the specification to overcome a “whole of contents” novelty citation that had been raised against it. But he said also that the patentee was entitled to do this to get around the prior art, as inventive step was not an issue in “whole of contents” scenarios. I drew Mr Horsburgh’s attention to the fact that the citation refers to the holes as providing “about a 50% open area for effective light transmission through the panel assembly” and asked whether that said anything about the hole-diameter, to which Mr Horsburgh disputed that the hole-diameter was derivable from this information. He reiterated that the examiner was just making an assertion, without reasoning, which is not based on the citation, and that the onus is on me (the hearing officer) to say why the patentee’s position is wrong. He noted that the standard of proof in the present matter is not such that I have to be satisfied that the claimed invention is novel and involves an inventive step; that is, the standard of proof is not that of the balance of probabilities, but rather is that of benefit of the doubt.
In relation to the staggered hole-pattern which is defined in the claims, Mr Horsburgh claimed that this configuration resulted in optical advantages in the finished product and assisted with the manufacture of the product, principally from the point of view of strength and resistance to tearing. Mr Ross produced several examples of the finished product at the hearing in support of this.
The final issue that was dealt with at the hearing was the allowability of the amendments. The examiner who had carried out the re-examination had at all stages of the re-examination found that the various sets of proposed amendments were allowable. However, a couple of months prior to the hearing Ms Chrysiliou had filed certain submissions alleging that the amendments in their current iteration (that is, the version which had originally been the subject of the hearing) were contrary to the Patents Act 1990. I will provide more details of those submissions later in this decision.
Mr Horsburgh conceded that some of the issues raised in the submissions were valid, but others he disputed. Nonetheless he indicated that he would be addressing all of the issues that needed addressing, and he provided me with a draft copy of some proposed amendments which he said would fulfil that purpose. On 16 March 2012 a formal statement of proposed amendments was duly filed.
I will provide more details of the patentee’s submissions, where relevant, later in my decision.
Law
Re-examination
The relevant legislation covering re-examination is set out in Section 97 and reads as follows:
"Re-examination of complete specifications
(2) Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re-examine the complete specification."
Upon these conditions having been fulfilled, in then undertaking re-examination Section 98 requires:
"(1) On re-examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim:
(a) is not novel; and
(b) does not involve an inventive step.
(2) For the purposes of subsection (1), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area)."
In this matter here are two discrete issues to be decided, which I am required to deal with in a particular sequence - see Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26. The first of these issues is whether the proposed amendments are allowable under section 102 of the Patents Act 1990 (and from henceforth when I say “the amendments” or “the amended claims” I will be referring to the section 104 proposed amendments submitted in informal form at the hearing by Mr Horsburgh and later formally proposed, that is, the amendments in their latest manifestation).
The second issue is the substantive re-examination question of whether or not the claims in the form they have acquired as a result of the amendments define an invention which is novel and involves an inventive step in compliance with the relevant provisions of the Patents Act 1990. If the answer to that question is in the affirmative, then the outcome of the re-examination will be that patent is found valid. If the answer is in the negative, then the patent will be revoked.
Section 104 amendments

The allowability of amendments is governed by section 102, which provides:
"(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
Certain amendments of complete specification are not allowable after relevant time
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment,
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
Meaning of relevant time
(2A) For the purposes of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted;
.
.
.
(3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification."

Section 40(2) requires that a complete specification describe the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention. Section 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

It is clear from section 102, which governs the allowability of a proposed amendment of a complete specification, that the test provided by section 102 is confined to matters which arise as a result of the amendment (see also Kornelis' Kunsthars Producten Industrie BV v WR Grace & Co-Conn, [1994] FCA 969; (1994) AIPC 91-056 at 38,204).
Subsection 102(1)
In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, the full Federal Court said that a "two stage" process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by section 102(1). The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment. Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed, in order to determine whether the specification would claim matter not in substance disclosed in the specification as filed. The court when discussing the second stage emphasised that:
"The subsection [102(1)] focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression 'matter not in substance disclosed in the specification as filed'. The key point to keep in mind is that the words 'as a result of the amendment' are not to be confused with the expression 'after the amendment'."
The test for whether an amended claim would claim matter not in substance disclosed in the specification as filed is essentially the same "real and reasonably clear" test for whether the claims are fairly based on the matter described in the specification (United-Carr Incorporated's Application [1971] RPC 23, Ethyl Corporation's Patent [1972] RPC 169 at page 195).
Paragraph 102(2)(a)
It is only a requirement that the claims fall ‘in substance’ within the whole set of pre-amendment claims, per AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283 at 289 in which it was stated: “as a result of the amendment, nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment”.
Also of relevance to the present matter is the statement in AMP Incorporated v the Commissioner of Patents (1974) AOJP 3224 at 3227 by Jacobs J of the High Court that:
"Although the Act does not now expressly say so, it is clear that within the limited framework which I have described an amendment [to a claim] may be allowed where it does no more than explain what is already in the claim when it is properly construed."
Paragraph 102(2)(b)
The rule of construction stated by Lord Shaw in B.T.H. v Corona Lamps 39 RPC 49 has some bearing in this matter.
"A specification must take its rank among all ordinary documents which are submitted to a reader for his guidance or instruction, and a reader ordinarily intelligent and versed in the subject matter. Such a reader must be supposed to bring his stock of intelligence and knowledge to bear upon the document, not unduly to struggle with it, but anyhow to make the best of it."
I also note that in Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69 it is stated:
"It is clearly ... legitimate and appropriate in approaching the construction of claims to read the specification as a whole. Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification."
Moreover one should, if possible, reject the meaning that leads to an absurd result (Henriksen v Tallon Ltd [1965] RPC 434) and one should read the specification liberally and be "willing and wishing" to understand the specification (Philpot v Hanbury (1885) 2 RPC 33).
Novelty
Under subsection 7(1) an invention is to be taken to be novel when compared with the prior art base unless, relevantly, it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
“(a) prior art information (other than that mentioned in paragraph (c)), made publicly available in a single document or through doing a single act;” and
“(c) prior art information contained in a single specification of a kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.”
Section 3 of the Act provides that certain expressions are defined, for the purposes of the Act, in the dictionary in Schedule 1 to the Act. According to the dictionary in Schedule 1, the term “prior art base” means:
“(a) in relation to deciding whether an invention does or does not involve an inventive 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.
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and

(ii) information contained in a published specification filed in respect of a complete application where:
(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

(B) the specification was published after the priority date of the claim under consideration; and

(C) the information was contained in the specification on its filing date and when it was published.”
The test for determining whether the invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 235 where Aickin J stated:
"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."
Infringement occurs when "each and every one of the essential features" of the claim has been disclosed by the alleged anticipation: see Rodi and Wienenberger AG v Henry Showell Ltd [1969] RPC 367 at 391.
Inventive Step
The effect of subsections 7(2) and 7(3) of the Patents Act 1990, in the case of applications filed before 1 April 2002, is that 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.
So far as lack of inventive step in light of common general knowledge considered together with a single document is concerned, as a preliminary step it must be established whether the person skilled in the art could be reasonably expected to have ascertained, understood and regarded the document as relevant.
While inventiveness requires more than novelty, even a "scintilla of inventiveness" is sufficient and a step, if otherwise inventive, does not lose its inventiveness because the idea, once conceived, is very simple to put into effect (Winner v Ammar Holdings Pty Ltd [1993] FCA 93; 25 IPR 273). The test is objective, so that it is irrelevant whether the invention was a matter of chance or the result of long experimentation and much effort (Winner v Ammar at 294).
Common General Knowledge
As a precursor to any inventive step consideration, the state of the common general knowledge in the art has to be established. The common general knowledge is the background knowledge attributable to 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 [1980] HCA 9; 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.
Approach Used to Assess Inventive Step
There are a number of approaches which the courts have used to assess inventive step. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, Aickin J stated:
"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."
More recently, the High Court in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 56 IPR 129 at 142-143 referred with approval to this approach and further held:
"That way of approaching the matter has an affinity with the reformulation of the ‘Cripps question’ by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157. This court had been referred to Olin in the argument in Wellcome Foundation. Graham J had posed the question:
`Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result]?'
That approach should be accepted."
An important consideration is the impermissible use of hindsight. The High Court in Alphapharm (supra) also warned against the misuse of hindsight noting that the danger of such misuse will be “particularly acute where what is claimed is a new and inventive combination for the interaction of integers, some or all of which are known”. In that regard, the court referred with approval to Lord Diplock’s comments in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (at 362)]:
"Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."
Standard of proof
The standard of proof applying in matters such as the present was laid down by Lindgren J inEmperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996 at [107] in it is stated:
“107 I see no reason why the approach taken in pre-grant examination and in opposition proceedings should not be taken in relation to post-grant re-examination, that is, that it must be clear that a patent would be (or is) invalid before the Commissioner should refuse to grant (or should revoke) it; cf F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; (2000) 99 FCR 56 at [67] (opposition proceeding); Commissioner of Patents v Microcell Ltd [1958] HCA 58; (1959) 102 CLR 232 at 245 (examination stage).”
Although this decision was appealed to the Full Court of the Federal Court (Commissioner of Patentsv Emperor Sports Pty Ltd [2006] FCAFC 26), the Full Court maintained this approach.
Decision
Section 104 amendments
It is convenient at this point to set out in full the written submissions by Ms Chrysiliou on the allowability of the amended claims:
“Although it was stated in the 2 November 2011 report that the amendments are allowable, it is submitted that the amendments would not be allowed under
s 102(1) or (2) for the following reasons (references to ‘amended’ claims are references to the claims in the response lodged on 5 September 2011):
(a) Amended claims 1, 2, 37 and dependent claims do not now require that an image is included in the assembly. At grant, the claims required that an image be part of the assembly. The amendment clearly broadens those claims – at the very least because at grant a manufacturer of the blank material could infringe only indirectly, while now there could be direct infringement. The official records will show that each of the four infringement actions taken by the patentee against manufacturers or distributors of blank material were based on indirect infringement. These amendments are not allowable under s 102(2)(a).
(b) Amended method claims 37 to 42 do not include the image application step of the broadest method claim at grant, claim 39, and are not allowable under s 102(2)(a).
(c) Amended method claims 37 to 44 are broader than the method claims at grant because they do not require that the assembly is of the type whereby at least one image is visible from a first side of the assembly but not visible from a second side. These amendments are not allowable under s 102(2)(a).
(d) Each of the amended claims 1 to 36 and 45 refer to the image being substantially not visible from a second side of the assembly. The claims at grant omitted ‘substantially’. The image had to be ‘not invisible’. The amendments are not allowable under s 102(2)(a).
(e) The amended claims now have a hole diameter with an upper range limit of about one inch. Claim 29 at grant is the only claim which had a hole diameter range and this had an upper limit of one inch. The amended claims allow the hole diameter to be more than [sic] inch. The amendments are not allowable under s 102(2)(a).
(f) The amended claims have a lower limit of hole diameter of 0.035 inch. There is no support in the specification for this diameter. The amendments are not allowable under s 102(1).”
Dealing with each of these in turn, item (a) has effectively been sidestepped by reinstating the preamble wording used in the claims of the granted patent, with one exception being the omission of the word panel, such that “panel assembly” has simply become “assembly”. Since Ms Chrysiliou has not taken issue with this omission I will deal with it after I have dealt with Ms Chrysiliou’s submissions.
In reverting to the wording of the claims of the granted patent Mr Horsburgh made a point of emphasising that the patentee was not conceding that that wording meant that the assembly was defined as having an image present on it. Since the question now has no bearing on the matter at hand, it is not necessary that I come to a concluded view on it.
Item (b) has likewise been overcome by reverting to previous wording. In the case of the method claims there was no doubt that the claims of the granted patent had included a step of applying an image to the assembly.
Item (c) seems to have been overcome by the latest wording of the claims in question. The preamble of the claim uses the turn of phrase “suitable for displaying at least one image”, and goes on to define that image as “being visible from a first side of the assembly and not visible from a second side”, but then the claim defines as the final step in the method the step of “applying an image to the assembly”. The words “suitable for” merely express a capability of displaying an image, but the fact that the claim subsequently defines a method step of actually applying an image leaves no doubt in my mind that an image of the type referred to in the preamble to the claim has been defined as being present in the one-way vision assembly which is the product of the claimed method.
With regard to item (d), the term “substantially” to which Ms Chrysiliou refers is not present in the latest set of claims.
With regard to item (e), given that the claims of the granted patent in broadest form did not define any range of values for the hole-diameter, it is difficult to see how the introduction into the claim of numerical limits for the hole diameter can do anything else than decrease the scope of the claims. If Ms Chrysiliou meant to invoke subsection 102(1) (“not in substance disclosed”), then there was a clear disclosure in the specification as filed at page 16:
“The size of the holes is preferably on the order of 0.001 inch to 1.0 inch or larger.”
Even though this passage does not use the word “about”, it conveys the same sense of imprecision.
Item (f) has been addressed in the latest claims by amending 0.035 inch to 0.001 inch. The passage I have quoted above provides the fair basis for this particular dimension.
The only other aspect of the amendments worthy of mention is the deletion of the word “panel” from the claims (as in “panel assembly”, which now just reads “assembly”).
The effect of deleting words and phrases from a claim from the point of view of paragraph 102(2)(a) was discussed Chrysler Aust. Ltd. v RegieNationale Des Usines Renault (1974) AOJP 4807. It was pointed out, inter alia, that:
"There is, of course, a considerable force behind the argument that deletion of a limiting clause from a claim would not be allowable under the provisions of sub-section (2) of sec 78 [1952 Act: sec 102(2)(a) of the 1990 Act corresponds]. But it is also clear that this argument may relate only to real limitations, and should not be necessarily extended to apparent limitations. In particular, one must be careful not to equate the deletion of words with the deletion of limitations, since not all words in a claim impose a limitation.”
The word “panel” is capable of a wide range of meanings and is conceptually very broad in scope. It is a term which, in accordance with the rules of construction, one would be impelled to resort to the context of the description to find meaning. In doing so it would be apparent that “panel” is used in the sense of being a layer of any suitable material. The claims introduced by the amendments now define a first layer and a second layer, in contrast to the claims of the granted patent, which just referred to front and rear surfaces of a panel assembly. Clearly, in the amended claims the panel has been substituted by the first and second layers, and, in that there are now two layers, the claim as a result is narrower than the claims of the granted patent.

On the basis of the above reasons I therefore find that the proposed amendments contained in the statement of proposed amendments filed on 16 March 2012 comply with the requirements of section 102 of the Patents Act 1990, and I grant leave to amend the complete specification of patent 697657 in accordance with that statement of proposed amendments.
Novelty
As stated previously, in order for the invention defined by a claim to lack novelty in light of the disclosure of a prior art document, every essential feature of the claim must be disclosed by the prior art document. There are two features of the amended claims which are of particular relevance to the issue of novelty. These are
·the arrangement of the substantially round through-holes in a staggered hole pattern
·the substantially round through-holes having a substantially uniform hole diameter of from about 0.001” to about 1.0”.
As to whether or not these features are essential, the generally accepted authority on the issue of determining essential features is Catnic Components v Hill & Smith [1982] RPC 183. In that decision Denning J concluded that a feature will be essential to a claim if (a) it was essential to the working of the invention or if it materially affected the way in which the invention worked; or (b) if the applicant for the patent has made it an essential feature by the terms of the claim, properly construed.
On the basis of these principles, I am in no doubt that both these features have to be considered as essential features of the claimed invention.
This then leads to the question of whether these two features of interest have been disclosed by any of the cited prior art patent documents.
Staggered hole pattern
In all but two of the cited documents (D2 and GB 2244585 A (AKERS, Raymond Arthur Keith et al 4 December 1991)) the hole-pattern is a vertical-horizontal grid, like thus:
o   o   o   o
o   o   o   o
o   o   o   o
o   o   o   o
whereas in the present specification, the hole-pattern is arrayed in this way:
o   o   o   o
o   o   o   o
o   o   o   o
o   o   o   o
That is, each row of the grid is off-set from its adjacent row. In like manner to the illustration above, in the preferred embodiment of the present specification the holes of each row are shown offset from the holes of the previous row by half the distance between the centres of the adjacent holes within a row. Whether or not “staggered” is to be construed in this more narrow sense, or more broadly as just the rows being offset from each other, would, I think, require evidence from a person skilled in the art. Fortunately the issue does not come into play in this matter, as apart from D2 and GB 2244585, none of the other citations shows the rows as being off-set (that is, the holes are only disclosed as being arrayed in a horizontal–vertical grid pattern), and in D2 and GB 2244585 the holes of each row are in fact offset from the holes of the previous row by the required half the distance between the centres of the adjacent holes within a row.
GB 2244585, however, fails as a novelty citation for another reason. It does not disclose a layer having a light absorbing surface – at least not in those explicit terms, and, I believe, not in implicit terms. From the reading of the present specification as a whole it is clear that “light absorbing” is being used in the sense of absorbing practically all incident light. GB 2244585 does disclose a first layer having a light reflective surface and a second layer which is described as “an all over single colour(s) print layer(s)”. However, the fact that it is a coloured layer means that while it is absorptive of light at some frequencies it is reflective of light at others, and thus it could not truly be said to be light absorbing in the sense that that phrase is used in the present specification. Moreover, while the arrangement of GB 2244585 bears marked similarities to the present invention in the way it functions, it seems to achieve its desired optical characteristics through use of differential ambient lighting rather than differential absorption/reflection properties, and would thus appear to be conceptually different to the present invention.
Clearly then, putting aside D2 for the moment, the amended claims are novel in light of all the other citations, because only one of the other citations discloses a staggered hole pattern, and that one is deficient as a novelty citation for another reason as outlined above. It is apparent from the history of this matter that this was a road already travelled during the series of re-examination reports which led to this hearing.
Hole diameter of from about 0.001” to about 1.0”
D2 explicitly discloses all the features of amended claim 1 with the exception of the hole diameter values defined in the claim. To get around this difficulty an argument was run in the re-examination reports that the range of values was “inherent” in D2. Mr Horsburgh’s counter to this was, as already mentioned above, to assert that there was no “signpost” (per General Tire v Firestone (supra)) in D2 pointing to this range of values, and placing the onus on the Commissioner to provide reasons why the inherency exists. However, rather than doing that, I am inclined to agree with Mr Horsburgh’s position.
Inherency, as I understand it, most commonly arises where particular properties are inferred from the identity of a particular material. Applying that principle to the present situation, I think it is fair to say that it is inherent that the round through-holes will have a diameter, but that is as far is it extends – I do not think it is inherent that those through holes will have any specific diameter.
Mr Horsburgh invoked General Tire v Firestone, but I think it is useful to go all the way back to Hill v Evans [1862] EngR 365; (1862) 6 LT 90, wherein Lord Westbury stated, in relation to novelty:
"The invention must be shewn to have been before made known. Whatever, therefore, is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication ... Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use."
and:
“The antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand and be able to apply the discovery without the necessity for further experiments.”
Applying this to the case at hand, the particular diameter of the holes necessary for the “practical operation and real utility” of the vision assembly are clearly not disclosed by D2.
It is possible to approach this question from other directions, for example, by direct application of the “reverse infringement test” referred to previously. If the hypothetical question is asked: “would something made in accordance with the disclosure of D2 infringe the claims” (remembering that the hole diameter values are an essential feature of the claims), the answer is not quite “no”, but rather “we cannot tell”, which would appear to amount to the same thing.
Another approach is to look at this situation to see if it fits within the concept of “parameteritis”. In Williams Advanced Materials, Inc v Target Technology Company LLC [2004] FCA 1405 at [48], Bennett J stated:
As was the case in NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1992) 24 IPR 1 (‘Philips’), neither the patent nor the evidence suggest that the proportions or ranges ‘reflect any discovery or new scientific insight by the patentees...[n]o doubt the choices were carefully calculated....but the stipulated figures are arbitrary, in the non-perjorative sense of depending upon the will or discretion of the patentees’ (per Wilcox J at 35). Indeed, there is nothing in the specification that suggests that the proportions or the ranges of the metals in the alloys are in any way part of the invention, other than the mere reference to them. It is a case of ‘parameteritis’.
However, by using the qualification “nothing…suggests…are in any way part of the invention” Bennett J conveniently set a limit upon when this principle can be applied. In the present case, the hole diameter values are without doubt part of the invention.
Yet another approach draws upon the fact that D2 is only available for “whole of contents” novelty consideration, that is, it is only part of the prior art base for novelty by virtue of paragraph b(ii) of the definition of the prior art base for novelty, which has been set down earlier in this decision. In E I Du Pont de Nemours and Company v ICI Chemicals & Polymers Limited [2005] FCA 892 at [81], Emmett J stated:
“81 There are at least two possible interpretations of paragraph (b)(ii)(A). They are as follows:
• having identified a relevant piece of information, consideration is then given to whether that information was present in a document that would take priority over the claims under consideration; or
• having identified a relevant piece of information, consideration is then given to whether that information is the subject of an actual claim. If the information is the subject of an actual claim, consideration is then given to whether the claim would take priority over the claims under consideration. If the information is not the subject of an actual claim, consideration is then given to whether the information could be the subject of a claim. If the information could be the subject of such a notional claim, consideration is then given as to whether that notional claim would take priority over the claims under consideration.
One aspect of the second construction is whether any such notional claim needs to be capable of being characterised as a valid claim. That is to say, the question is whether such a notional claim would satisfy the requirements of s 40 in relation to the complete specification of the patent said to contain the relevant information.
82 Paragraph (b)(ii)(A) speaks in terms of ‘a priority date’. That directs attention to s 43 of the Act, which relevantly provides that:
• each claim of a complete specification must have a priority date; and

• the priority date of a claim is the date determined under the Regulations.
Regulation 3.12 relevantly provides that the priority date of a claim of a specification is the earliest of:
• the date of filing of the specification; and

• if the claim is fairly based on matter disclosed in one or more relevant applications, the date of making the relevant application in which the matter was first disclosed.
83 There is no mechanism under which information can be compared between documents for the purpose of giving that information a priority date. Only a claim can have a priority date. That consideration suggests that the second interpretation is to be preferred. If the first interpretation were to be adopted, it would be necessary to consider the relevant nexus between the information in a specification as filed and the information in the relevant priority document. The Act recognises no such process.
84 Further, there must be some relationship between the notional claims and the specification in which information is said to have been disclosed. That relationship is provided by the requirement that the notional claim must be a valid claim of the specification in question. To be a valid claim, the notional claim must be fairly based on the specification in question.”
In the present matter, any endeavour to concoct a notional claim having the particular range of values defined by the amended claims runs foul of this fair basis requirement. As already mentioned above, the generally accepted test for fair basis is whether there has been a “real and reasonably clear disclosure” (which has some resonance with the “clear and unmistakeable directions test” from General Tire v Firestone (supra)) of the invention in the specification - see Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79. In view of the silence of D2 on any range of values, there can hardly be said to have been a real and reasonably clear disclosure of this feature.
In his final re-examination report, the examiner’s inherency argument invoked an “unexpected advantage” test. This seems to be a consideration more related to obvious selections than to novelty, and I have difficulty in seeing its relevance to the question of whether D2 anticipates, in a whole of contents sense, the claims.
Finally, in Nicaro Holdings Pty Ltd v MartinEngineering Co 16 IPR 545, Gummow J stated:
"Where in a case such as the present, the question is whether one or more integers of a claimed combination is not disclosed in an alleged anticipation, and it is said that what is disclosed does not sufficiently reveal that integer within the principles ofHill v Evans, it will not be helpful to ask whether variations between the anticipation and the claimed combination answer the description "workshop improvement". Perhaps recognising this, in reply counsel for the appellants put his case simply on the alternative basis that the differences represented no more than the substitution of mechanical equivalents, thereby bringing his case back to the legal mainstream. But, as will later appear, to add an essential integer otherwise missing from a claimed combination would not ordinarily be to supply a "mechanical equivalent". The reasoning in the infringement cases ... suggests the contrary."
In my view to read into the citation the range of values defined in the claims in suit is to add an essential feature to the disclosure of D2.
Accordingly I find that the amended claims are novel in light of all the prior art raised in this re-examination.
Inventive step
Prior art document D2 was published after the priority dates of the claims under consideration, and therefore is not part of the prior art base for inventive step since it was not publicly available before the priority date of the present claims. It is therefore not available for consideration for inventive step purposes.
Of the remaining six citations, only one - GB 2244585 - discloses the use of a staggered hole pattern. The patentee asserts that the use of this scattered pattern rather than a horizontal-vertical grid pattern has useful optical effects in that it makes the presence of the holes less evident to the observer, and to me this has a ring of credibility about it. I also see the staggered hole-pattern as being more difficult to achieve from a manufacturing perspective than the repetitive rows of the horizontal-vertical grid pattern, and thus a prejudice against considering the former option would apply.
On this basis I am prepared to accept that the realization of the optical advantages to be had by using a staggered hole pattern required some use of the inventive faculty and that this difference over the prior art constitutes a scintilla of invention. This is particularly the case when account is taken of the fact that the benefit of any doubt in this regard goes to the patentee. Thus the claims under consideration involve an inventive step in light of the five citations that do not disclose any hole-pattern other than a horizontal-vertical grid pattern.
The one publicly available citation that discloses a staggered hole-pattern is GB 2244585. This patent document is closely aligned with the present application in subject matter, and I am in no doubt that it would have been ascertained, understood and regarded as relevant by the person skilled in the art. However, as I have already observed, GB 2244585 differs fundamentally from the invention defined by the present claims both in its structure and its principle of operation. Moreover, in the particular circumstances of this matter I have little background knowledge or information to draw upon to assist me in arriving at any sort of a firm view as to the state of the common general knowledge in the art - certainly not to the extent that I could confidently conclude that the common general knowledge is enough to bridge the difference between GB 2244585 and the present claims. These circumstances compel me to a finding that the present claims involve an inventive step in light of GB 2244585.
To summarise, I find that the amended claims involve an inventive step in light of all the prior art raised in this re-examination.
On the basis of the above findings made in respect of this re-examination I consider that there is no lawful ground upon which Patent 697657 (as amended by the amendments proposed on 16 March 2012 may be revoked.
Ed Knock
Delegate of the Commissioner of Patents