Richbury Pty Ltd v D&I Klein Investments Pty Ltd
[2013] APO 13
•24 January 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Richbury Pty Ltd v D&I Klein Investments Pty Ltd [2013] APO 13
Patent:2009100535
Title:Rails
Patentee: D&I Klein Investments Pty Ltd
Opponent: Richbury Pty Ltd
Delegate: Xavier Gisz
Decision Date: 24 January 2013
Hearing Date: 31 October 2012
Catchwords: PATENTS – innovation patent – opposition under Section 101M – opposed on the basis of novelty, innovative step, clarity, fair basis and sufficiency – all claims lack novelty and innovative step – opponent successful in the opposition – costs in accordance with Schedule 8 awarded against the patentee
Representation: Opponent: Fisher Adams Kelly
Patentee: Cullens
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2009100535
Title:Rails
Patentee: D&I Klein Investments Pty Ltd
Date of Decision: 24 January 2013
DECISION
Claims 1-5 of the innovation patent lack novelty and an innovative step over the “Australian Twisted Steel” webpage.
There may be patentable subject matter in the innovation patent specification. The patentee is allowed sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings, otherwise the innovation patent may be revoked.
Costs in accordance with Schedule 8 are awarded against the patentee, D&I Klein Investments Pty Ltd.
REASONS FOR DECISION
Background
The innovation patent 2009100535 in the name of D&I Klein Investments Pty Ltd (the Patentee) was filed on 2 June 2009 and granted on 15 July 2009. The Patentee requested examination and the patent was subsequently certified on 13 January 2012. A Notice of Opposition to the patent was served on 4 April 2012 by Richbury Pty Ltd (the Opponent). The Statement of Grounds and Particulars and Evidence in Support was also served with the Notice of Opposition on 4 April 2012. The Evidence in Support comprises a Declaration by Fraser Smith and exhibits FGS-1 to FGS-14. The Patentee did not serve Evidence in Answer.
The hearing was by telephone on 31 October 2012. The Opponent was represented by Michael Long of counsel, and Fraser Smith patent attorney of the firm Fisher Adams Kelly. The Patentee did not appear at the hearing or provide submissions to the hearing.
Specification
The specification relates to a hand rail with helical grooves on the external surface to provide improved grip.
Claims
The specification ends with five claims. The claims, with the Opponent’s numbering of the features in brackets, are provided below:
- (1) A metal hand rail (2) having one or more grooves (3) on an external surface thereof (4) wherein, along at least part of the length of the hand rail, the external surface has one or more non-overlapping grooves (5) extending helically around the hand rail, (6) the one or more helical grooves create a plurality of rounded raised portions intermediate successive turns of the one or more grooves and (7) which adapted to provide a user with an improved grip on the hand rail.
- A hand rail according to claim 1 wherein (8) the spacing between successive turns allows a user's fingers, when holding the hand rail, to engage with two or more of the said turns.
- A hand rail according to claim 1 or claim 2 wherein (9) the hand rail is tubular in construction and (10) adapted for the flow of a heating or cooling fluid therethrough.
- A hand rail according to any one of the preceding claims wherein (11) the hand rail is adapted for use as a grab rail, fence, balustrade or banister.
- A hand rail according to any one of claims 1 to 3 wherein (12) the hand rail is adapted for use in a ladder, walking frame, radiator, shower chair or towel rack.
Claim construction
The terms in the claims are construed as follows. The term ‘hand rail’ is given its plain meaning: a rail that is adapted to be gripped by a person’s hand. The term ‘groove’ is given its plain meaning: a relatively narrow channel formed in a surface. The term ‘non-overlapping’ is given its plain meaning: the groove does not cross or intersect with itself or another groove on the surface of the handrail. The term ‘improved grip’ is given its plain meaning: a person’s ability to grip onto the rail with the claimed features is improved in comparison with the features being absent.
The claim defines ‘rounded raised portions’ which are created by the helical groove(s). The term ‘rounded’ is given its plain meaning: curved and convex in section. The term ‘raised’ is also given its plain meaning, thus the rounded portions extend from and above the helical groove(s).
Claim 1 is phrased somewhat ambiguously. I consider this to be an ‘obvious mistake’; the ambiguity being readily overcome with minor editing as indicated in square brackets. Claim 1 is thus construed as follows:
A metal hand rail having one or more grooves on an external surface thereof wherein, along at least part of the length of the hand rail, the external surface has one or more non-overlapping grooves extending helically around the hand rail, the one or more helical grooves[:] [a)]create a plurality of rounded raised portions intermediate successive turns of the one or more grooves[,] and [b)] which [are] adapted to provide a user with an improved grip on the hand rail.
Opposition under section 101M
Section 101M provides that:
The Minister, or any other person, may, in accordance with the regulations, oppose an innovation patent that has been certified and seek the revocation of it, on one or more of the following grounds of invalidity, but on no other:
(a) that the patentee is either:
(i) not entitled to the patent; or
(ii) entitled to the patent but only in conjunction with some other person;
(b)that the invention is not a patentable invention because it does not comply with paragraph 18(1A)(a) or (b);
(c) that the invention is not a patentable invention under subsection 18(2) or (3);
(d) that the complete specification does not comply with subsection 40(2) or (3).
Grounds of Opposition
The Statement of Grounds and Particulars states that the patent was invalid on the following grounds: novelty, innovative step, clarity, fair basis, sufficiency, manner of manufacture and entitlement. Of these grounds, the submissions were limited to novelty, innovative step, clarity, fair basis and sufficiency.
Onus of proof
The onus of proof in opposition proceedings lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; (2001) 50 IPR 305 at 311 [29], 319 [67]; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; (2009) 79 IPR 426 at 430 [18], 432 [22]).
Clarity [s 40(3)]
It is only where it is impossible to ascertain the invention that a claim should be found to lack clarity (see Décor Corp v Dart Industries 13 IPR 385 at 400). Although there is some ambiguity in the phrasing of claim 1, I have found ambiguity is due to an ‘obvious mistake’ which is easily corrected. The scope of the claims can be ascertained and consequently satisfy the clarity requirement of s 40(3).
Fair Basis [s 40(3)]
The accepted test for fair basis is that of a “real and reasonably clear” disclosure. In Rehm Pty Limited v Websters Security Systems (International) Pty Limited (1988) 81 ALR 79 Gummow J states at 95:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
The Opponent states at paragraph 27 of their submissions:
“The grounds upon which claim 1 is not fairly based are set out at paragraphs 3.2.1, 3.2.2 and 3.2.3 of the grounds of opposition.”
Paragraphs 3.2.1, 3.2.2 and 3.2.3 of the grounds of opposition are as follows:
“3.2.1. There is no real and reasonably clear disclosure in the specification as filed of the raised portions being 'rounded';
3.2.2. There is no real and reasonably clear disclosure in the specification as filed of the grooves being 'non-overlapping';
3.2.3. There is no real and reasonably clear disclosure in the specification of the claimed hand rail having an 'improved' grip as claimed in claim 1”
The Opponent states at paragraph 28 of their submissions:
“Claims to raised portions being "rounded" and the grooves being "non-overlapping" travel beyond the matter described in the specification.”
I consider the figures alone provide a “real and reasonably clear” disclosure of rounded raised portions and the grooves being non-overlapping. Specifically, in figure 1, a side view of the rail is shown wherein the diagonal lines that extend from the top edge to the bottom edge clearly illustrate a helical groove in the rail; the groove does not overlap itself at any point. The bumps at the top and bottom edge clearly illustrate the rounded raised portions. Consequently these terms are considered fairly based on the specification filed.
The Opponent states at paragraphs 29 and 30 of their submissions:
“A claim to the hand rail being "adapted to provide a user with an improved grip" travels beyond the matters described in the specification. The specification properly construed purports to describe only a hand rail where it is adapted to provide an improved grip only by reference to:
(a) the spacing of the turns of the helical groove;
(b) the depth of the grooves; and
(c) the pitch of the groovesInteger 7 of claim 1 is not so limited and would include, for example, treatments or alterations to the surface of the hand rail that would provide an improved grip or any other adaptations that might be made to the hand rail. Claim 1 is therefore not fairly based on the matter described in the specification.”
It appears that the Opponent’s argument that the scope of the claims includes an improved grip by any means, i.e. independent of the helical groove, is based the following construal of claim 1:
“A metal hand rail … which [is] adapted to provide a user with an improved grip on the hand rail.”
However, I have construed claim 1 (above at paragraph 7) such that the improved grip is provided by the helical grooves. The description states at page 1 lines 21 to 24:
“Conventional hand rails are generally fabricated with a smooth surface finish which, when hand rails are used in wet, slippery or unstable environments, may lead to a person being unable to fully grasp the hand rail, particularly if that person lacks physical strength in their hands.”
I am satisfied that helical grooves forming rounded raised portions would improve the grip on the rail. Thus this feature is considered fairly based on the description. I find all claims to be fairly based, thus satisfying the fair basis requirement of s 40(3).
Sufficiency [s 40(2)(a)]
It was stated by the Full Court in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd:
“The question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
For the purposes of section 40(2)(a), it is enough that there is a disclosure in the sense of enabling the addressee to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty (Lockwood Security v Doric Products [2004] HCA 58 at [60]). It is not necessary for a claim to be enabled over its full scope (Lockwood (supra) at [83]).
The Opponent’s submissions state at paragraph 33:
“The specification is insufficient with respect to claim 1 in that there is no sufficient description in the specification of how a hand rail otherwise having the features in claim 1 is "adapted to provide a user with an improved grip”. Lines 9 to 15 on page 3 of the specification assert an "increase" in "grip quality", but provide no objective parameters for an addressee to produce an article in accordance with claim 1 (being one that provides a user with an improved grip). In particular, there is no objective parameters for the depth of the groove, or the pitch of the groove, that might produce that result.”
The figures give an approximate indication of the relative depth of the grooves and the pitch of the helix. The fact that the handrail that can be gripped gives an approximate indication of the diameter. Consequently, the dimensions of the rail, grooves and rounded portions can be approximately inferred from the specification. I am satisfied that the specification provide sufficient detail to enable the skilled addressee to produce something within each claim of the invention. The specification meets the requirements of s 40(2)(a).
Novelty [s 18(1A)(b)(i)]
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation or want of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co[2005] FCAFC 224 at [314]; [2005] FCAFC 224; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]).
The Opponent challenged the novelty of the claimed invention on the basis of the following documents: FGS-5, FGS-7, FGS-8, FGS-9, FGS-10, FGS-12, and FGS-13. The novelty of the claims in light of these documents is considered below.
FGS-5: JP 2001-329702
This document discloses a handrail with a “projected spiral part (21a)” formed on the outer surface of a handrail.
The Opponent argued that the space formed longitudinally between adjacent sections of the projected spiral part (21a) was a groove. However, I am not satisfied that such a space can be considered to be a groove. The term groove has been construed to mean a relatively narrow channel in a surface. The width of the projections relative to the width of the spacing between projections is simply too great to be considered relatively narrow, and thus not considered a groove. The claims are considered novel in light of FGS-5.
FGS-7: JP 09-041611
This document discloses a hand rail with a non-slip surface. The handrail is made of base layer and a coating layer made of a synthetic resin. I am not satisfied this constitutes a metal handrail as required by the claims.
I also note that there is no unambiguous disclosure of a helical groove. Although the illustration in figures 2, 4 and 5 show what appear to be sections of a helix, these illustrations could also be showing annular ribs. The claims are considered novel in light of FGS-7.
FGS-8: JP 2001-150090
This document discloses a handrail with a spiral groove on the surface. A cross section of the groove is illustrated in figure 4(b). From this illustration, it can be seen that there are no “rounded raised portions” as required by the claims. Instead, the raised portions of the handrail are flat and not rounded. The claims are considered novel in light of FGS-8.
FGS-9: D5: “Australian Twisted Steel” web page – archived version from 28 February 2009
Document D5 is an archived version of the “Australian Twisted Steel” webpage retrieved from the “Internet Archive”. The archive was retrieved from the following URL:
>
The “Internet Archive” is used by IP Australia in establishing the publication date of web pages (see Chapter 4.2 Annex E of the ‘Australian Patent Office Manual of Practice and Procedure’). I am satisfied that the “Internet Archive” is a trustworthy source of archived web pages and provides an accurate ‘time stamp’ of when information became available to the public. Consequently I accept that a webpage identical to the one shown in the archive (exhibit FGS-9) was made publicly available on 28 February 2009 and consequently constitutes prior art.
Claim 1
The second page of the website shows in the top left hand corner a “Single Tube Twisty™”. This image discloses a metal hand rail with non-overlapping helical grooves and rounded raised portions. Stated beneath the image is the text “An enhanced grip level over plain tube gives this material an advantage when used for hand railings”. Thus this document discloses all of the features defined in claim 1. Consequently claim 1 is not novel in light of FGS-9.
Claims 2-5
Claim 2 defines the spacing between successive turns (i.e. adjacent sections of a groove) to allow a user’s fingers, when holding the rail, to engage with two or more of the said turns. The diameter of the ‘Single Tube Twisty™’ is given as between 25mm and 100mm. It can be inferred from the proportions of the image of the ‘Single Tube Twisty™’ that the dimensions of the rail would allow the user’s fingers to engage two or more successive turns. Consequently claim 2 is not novel in light of FGS-9.
Claim 3 defines the hand rail to be of tubular construction and adapted for heating or cooling fluid to flow through. FGS-9 refers to fluids flowing through the rail as follows:
“Another advantage of this material is that services like water, electrical, air/gas, data etc can easily be hidden inside the tube.”
It is considered inherent that fluid such as water or gas flowing within the tube would provide some heating or cooling effect to the rail. Consequently claim 3 is not novel in light of FGS-9.
Claim 4 defines the hand rail adapted for use as a grab rail, fence, balustrade or banister. FSG-9 explicitly discloses the use of the rail for fences and balustradings. Consequently claim 4 is not novel in light of FGS-9.
Claim 5 defines the hand rail to be adapted for use in a ladder, walking frame, radiator, shower chair or towel rack. Although FGS-9 does not explicitly disclose a hand rail in any of these applications, I consider the disclosed hand rail to be of suitable dimensions for use in these applications, and thus falls within the scope of the phrase “adapted for use”. Consequently claim 5 is not novel in light of FGS-9.
FGS-10: “Wyoming metalsmiths” – Bar foot rail
Exhibit FGS-10 is an archived webpage which was publicly available on 4 February 2004. The archive was retrieved from the following URL:
>
FSG-10 discloses a “solid 2" forged iron rope bar rail”. This document appears to disclose all the features of the claimed invention except for the “hand rail”. Consequently the claims are considered novel in light of this document.
FGS-12: “Alodium enterprises”
Exhibit FGS-12 is a webpage with the following URL:
>
This webpage was retrieved from the internet on 19 March 2012, well after the priority date of 2 June 2009, and consequently cannot be considered prior art.
FGS-13: “I Forge Iron”
Exhibit FGS-13 is a webpage with the following URL:
>
This webpage was retrieved from the internet on 19 March 2012, well after the priority date of 2 June 2009, and consequently cannot be considered prior art.
Innovative step [s 18(1A)(b)(ii)]
Sub-sections 7(4) and 7(5) relevantly provide that:
(4) For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
(5) For the purposes of subsection (4), the information is of the following kinds:
(a) prior art information made publicly available in a single document or through doing a single act;
In other words, an invention is taken to have involved an innovative step if it makes “a substantial contribution to the working of the invention” compared to the prior art, as understood by a person skilled in the relevant art in light of the common general knowledge as it existed in Australia at the priority date of the relevant claim.
Guidance as to the level of contribution necessary to be "substantial" and thus meet the innovative step test is provided in the Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 (and Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225) where relevant indicators can be summarised as follows:
- Does the difference identified between the invention and the prior art convey an advantage to the invention?
- Does the difference provide a technical or functional contribution to the invention?
- Is the difference a significant aspect of the operation of the invention?
The Opponent challenged the innovative step of the claims in light of documents FGS-5, FGS-7, FGS-8, FGS-9, FGS-10, FGS-12 and FGS-13. I have already found that FGS-12 and FGS-13 do not properly constitute prior art and so require no further consideration. The innovative step of the claims compared to FGS-5, FGS-7, FGS-8, FGS-9 and FGS-10 are considered below.
FGS-5, FGS-7, FGS-8 and FGS-10
I consider the difference between the claimed invention and the disclosure of each of FGS-5, FGS-7, FGS-8 and FGS-10 provides, at the very least, a technical contribution to the invention. Overall I am satisfied that each of these differences constitutes a substantial contribution to the working of the invention. Consequently the claimed invention provides an innovative step over each of FGS-5, FGS-7, FGS-8 and FGS-10.
FGS-9
The claims lack novelty in light of FGS-9 and thus it logically follows that the claims also lack an innovative step.
Conclusion
Claims 1-5 are not novel and do not provide an innovative step in light of FGS-9 (the “Australian Twisted Steel” web page).
Pursuant to s 101N(6) I allow the Patentee 60 days from the date of this decision to propose amendments to the patent consistent with the findings of this decision.
Costs
The Opponent has successfully opposed the patent. Accordingly I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Patentee, D&I Klein Investments Pty Ltd.
Xavier Gisz
Delegate of the Commissioner of Patents
3
12
0