Robb Farm Industries Pty Ltd v Yazaki Australia Pty Ltd

[1994] APO 60

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 614301 in the name of ROBB FARM INDUSTRIES PTY LTD

Title:  Electrically Operated Security Device

Action:  Opposition by YAZAKI AUSTRALIA PTY LTD under Sec 59

Decision:  Issued            . 

Abstract: Novelty, obviousness and sec 40 matters

considered. Adequacy of statement of

grounds and particulars also considered.

It is inappropriate at the substantive

hearing to argue issues of insufficiency

of the statement of grounds and

particulars.

Grounds of opposition not established.

Opposition dismissed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 614301 by ROBB FARM INDUSTRIES PTY LTD and opposition by YAZAKI AUSTRALIA PTY LTD under Section 59 of the Patents Act 1952

background

Patent application 614301 was lodged on 7 September 1987 by Robb Farm Industries Pty Ltd (Robb) accompanied by provisional specification PI 4195.  A complete specification was lodged on 6 September 1988.  Acceptance of the application and complete specification was advertised on 29 August 1991.

Yazaki Australia Pty Ltd (Yazaki) filed a notice of opposition to the grant of a patent on the application on 29 November 1991, and a statement of grounds and particulars on 30 December 1991.  The statement was subsequently amended unopposed under the provisions of reg 5.9 of the Patent Regulations 1991.  Service of evidence in support of the opposition was completed on 30 September 1992, and evidence in answer was served on 26 March 1993.  All evidence in reply was served by 26 July 1993.

A hearing to determine the opposition was held in Canberra on 9 May 1994.  Robb was represented by Mr G Cowin, patent attorney with Phillips Ormonde & Fitzpatrick, and Yazaki was represented by Mr D Carter, patent attorney with Carter Smith & Beadle.

the specification

The specification begins by stating that the invention generally concerns a security device for securing apparatus against unauthorised access or operation, and in particular an electrically coded security device which in use is connected to an operating system for selectively enabling and disabling the system to respectively permit and prevent operation of the apparatus.

The specification proceeds to describe the invention in relation to an exemplary application of the present security device in a vehicle electrical system for securing the system against unauthorised vehicle engine ignition.

According to the specification, a variety of arrangements have been developed for disabling operation of vehicle electrical systems in order to secure the vehicle against theft or unauthorised use.  Typically, these arrangements have involved "grounding" some critical component of the electrical system, such as the high tension lead connected between the ignition coil and distributor, or depriving a critical component of the system, such as an electronic management device, of electrical power.  Thus, normal operation through the use of an ignition key or "hot wiring" the system is inhibited.

However, some of these prior arrangements can be readily circumvented through the use of force or, alternatively, a part or component of the vehicle electrical system that is critical to the operation of the security arrangement, usually a part or component common to all systems, may be isolated, inserted or replaced.

More sophisticated approaches have involved integration of the security arrangement into the electrical system or components of the system.  These arrangements can, however, be expensive because of the need for alternative components.  Moreover, some of these arrangements may only be readily incorporated into new electrical systems during vehicle manufacture, and therefore may not be appropriate for existing systems.

Having discussed the prior art and its associated disadvantages, the specification continues with a statement of the invention in broad terms and then describes various preferred embodiments of the invention with the assistance of a number of drawings.  The specification concludes with a statement of thirteen claims, of which claim 1 reads as follows:

"An electrically coded security device for providing combined mechanical and electrical security against unauthorised operation of an operating system of a vehicle ignition system, the security device including:

(i)   a lock having a keyway;

(ii)  a portable actuating key insertable into the
keyway and, following insertion, actuable from an
inoperative position in which the lock disables the
operating system from operation to an operative
position of the operating system and thereby provide
mechanical locking security against unauthorised
operation of the operating system;

(iii) an actuating module carried by the actuating
key, and having encoder means operable to transmit
coded serial data signals in response to supply of
electrical power thereto; and

(iv)  a control module connectable to the operating
system, and being connectable to the actuating module
upon insertion of the key into the keyway, the control
module having decoder means operable to receive and
validate the transmitted serial data signals during
connection with the actuating module, and having
operating means enabling the operating system to
operate upon validation of the data signals and thereby
provide electrical locking security against
unauthorised operation of the operating system."

Claims 2 through 9 append directly or indirectly to claim 1, claim 10 is an omnibus claim, and claims 11 to 13 define a vehicle ignition system which includes a security device as claimed in any preceding claim incorporated into an operating system of the ignition system.

STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds and particulars as amended under reg 5.9 is reproduced below.

"Grounds of Opposition

1. The invention, so far as claimed in any claim, was
    published in Australia before the priority date of
    that claim.

Particulars

Unites States Patents 4274080 Brunken; 4297569
    Flies; 4326125 Flies; 4366466 Lutz; 4379966 Flies;
    4438426 Adkins; 4148372; 3492494; 3628099; 3136307;
    3588865; 4192400 and 4463340.

French Patent Specification 2554771 Cherbe et al
    German Patent Specification 3436761 Bartel et al
    German Patent Specification 2557637 Angewandte

European Patent Specification 105774 Verine
    U.K. Patent No. 2045985
    U.K. Patent No. 2018482
    U.K. Patent No. 2069207

Each of the above prior art documents should be
    read in conjunction with the common general
    knowledge in the art of a vehicle steering lock
    which is key operated.

2. The invention, so far as claimed in any claim, was
    obvious and did not involve an inventive step,
    having regard to what was known or used in
    Australia on or before the priority date of that
    claim.

Particulars

The invention defined in any claim is obvious and
    does not involve an inventive step having regard to
    the following:-

1. The prior art documents as set out above in the
      Particulars to Ground 1.

2. The use in Australia before the priority date of
      encoder and decoder IC devices including, but
      not limited to, Motorola encoder and decoder IC
      device MC145026, MC145027 and MC145028.
    3. Common general knowledge in Australia relating
      to the documents set out above in the
      Particulars to Ground 1 and the use of products
      and methods as described in those documents and
      the use of products and methods described in
      paragraph 2 above.

3. The invention, so far as claimed in any claim, was,
    before the priority date of that claim, otherwise
    not novel in Australia.

Particulars

It was a matter of common general knowledge in
    Australia before the priority date that motor
    vehicles had steering wheel locks which were key
    operated.  It was also a matter of common general
    knowledge in Australia before the priority date
    that security systems for protecting various forms
    of premises, including motor vehicles were operated
    by means of a portable actuating key insertable
    into a keyway and actuable from an inoperative
    position in which the security system is active
    to an inoperative position [sic] in which the
    security system is disabled.  There was no
    inventive step at the priority date of any claim,
    in combining the function of a key operated
    steering wheel lock for a motor vehicle with a key
    operated security system of the above type.

The invention as claimed in any claim was also
    obvious and did not involve any inventive step
    having regard to the prior art detailed in the
    particulars associated with ground number 1.

In the light of the above, the invention so far as
    claimed in any claim is not a manner of new
    manufacture within Section 6 of the Statute of
    Monopolies.

4. That the invention, so far as claimed in any claim,
    was before the priority date of the claim,
    otherwise not novel in Australia.

Particulars

Invention as claimed in any one of the claims is
    not novel having regard to the following:-

1. The documents listed in the particulars to
      Ground 1 above.

2. The common general knowledge in Australia
      relating to the art of vehicle steering locks,
      vehicle security systems and vehicle alarm
      systems.

3. The use of products and methods as described
      above in the Particulars to Ground 1 and in
      the Particulars to Ground 2.

5. The complete specification does not comply with the
requirements of Section 40 of the Patents Act 1952.

Particulars

1. The claims are not clear and succinct and fairly
      based on the specification as lodged.

2. The amendments made to the claims on acceptance
      of the present application are not allowable
      since they claimed matter not in substance
      disclosed in the specification as lodged.  The
      mechanical system for providing security
      against unauthorised operation of an operating
      system of a vehicle ignition system is defined
      in amended claim 1 as including a lock having a
      keyway, a portable actuating key insertable in
      the keyway and actuable from an inopertive
      position in which the lock disables the
      operating system to an operative position of the
      operating system to provided mechanical locking
      security against unauthorised operation of the
      operating system.  This feature was not
      disclosed in the specification as lodged since
      the only disclosure was that the key may be of a
      conventional type which may form part of a
      mechanical security arrangement as well as part
      of an electrically coded operating security
      arrangement accoding to the invention.  There is
      no disclosure in the original specification that
      the key is operative to provide mechanical
      security against unauthorised operation of an
      operating system of a vehicle ignition system.
      The priority date of the amended claim must
      therefore be the date of allowance of the
      amendment, at which date the amended claim is
      anticipated by publication of the application
      under opposition.

3. The complete specification does not fully
      describe the invention including the best
      method known to the applicant of
      performing the invention.

4. At page 2a the invention is stated to include
      a portable actuating key insertable into a
      keyway whilst at page 5 it is stated the key is
      only a preferred form.

5. At page 5 it is stated a key is only one form of
      base member which can also be a carry card.

6. At page 5, the control module may or may not
      include operating means whereas at page 2a the
      operating means is an essential element.

7. Many preferred features or elements are
      described but it is unclear whether or not these
      features are able to be used singularly or must
      be used in combination."

the evidence

The evidence in support of the opposition comprises declarations made by Campbell R. James, Douglas Charles Carter and Athol Joseph Cobcroft, and two declarations made by Bruce G. Clift.

Mr James is an honours graduate in electronics and is currently the Engineering Manager of the Research and Development Division of Yazaki, a position he has held for over five years.  He has gained considerable experience in the field of automotive electronic systems, both in Australia and Japan.  Mr Clift is a qualified communications engineer having many years experience in the field of security and alarm systems, including those for automotive use.

Mr Cobcroft is a translator of languages who has made two declarations respectively accompanied by verified translations of DE 2557637 and EP 105774 referred to in the statement of grounds and particulars.  The declaration of Mr Carter, the patent attorney acting for Yazaki, is accompanied by copies of various patent specifications referred to in the statement of grounds and particulars, and confirmation of the publication dates of these and certain other specifications included with the evidence of the remaining declarants for Yazaki.

The evidence in answer is solely comprised of a declaration by Anthony George Martin who has held the position of General Manager of Robb since August 1984.  He is also named as the sole inventor in respect of the invention claimed in application 614301.

The evidence in reply comprises declarations made by Godfrey Alexander Scicluna and John Thomas Cleary, and a third declaration made by Mr Clift.

Mr Scicluna is a qualified electrical engineer who since 1976 has been involved in the automotive electrical industry.  He has held his present position as General Manager, Engineering and Technical Services, with Yazaki since March 1993.  Mr Cleary states that in his capacity as Supervisor, Service Publications and Training with GMH he has access to a number of technical manuals, including the 1986 Chevrolet Corvette Shop Manual, for motor vehicles produced by the parent company General Motors Corporation.  Mr Cleary exhibits a number of pages from the shop manual which relate to the theft deterrent system of the Corvette vehicle, but makes no attempt to relate this material to the evidence of Mr Martin or to these proceedings in general.

I will discuss the relevant parts of the evidence where appropriate in my decision.
SUBMISSIONS AND DECISION

Preliminary Issues

Mr Cowin contended that the amended statement of grounds and particulars failed on a number of counts to properly inform Robb of the basis of the opposition.

In general terms, the purpose of the statement of grounds and particulars is to give the applicant fair notice of the case to be met, and to define the issues of the opposition.  As a consequence, the statement must set out the specific grounds of opposition on which the opponent relies, and the material facts on which each ground of opposition is based (Mobay Corp v The Dow Chemical Co 24 IPR 379).

In an action for dismissal in L'Aire Liquide v CIG Ltd, (1992)
AIPC 90-872, the Assistant Commissioner held that a statement of particulars which merely summarised the wording of sec 40 did not provide any material facts to support a ground of opposition under sec 59(1)(i). In the case of ICI PLC v Irenco Incorporated, 26 IPR 154, it was held that the listing under a particular ground of opposition of any more than 7 to 10 documents by number only would place an unreasonable burden on the applicant in determining the case against it.

These decisions appear relevant to the present statement of particulars in view of the "long list" of documents referred to in respect of ground 1 and the mere restatement of sec 40 by some of the particulars relating to ground 5. I am also of the opinion that the particulars to ground 3 and in paragraph 2 to ground 5 do not provide any material facts on which the grounds of want of novelty and non-compliance with sec 40, respectively, are clearly based, and I express here my reservations as to the effectiveness of the particulars set out in paragraph 7 to ground 5. It is worth noting, however, that despite the presence of a number of inadequate particulars, dismissal of an opposition with respect to a particularised ground can only occur where none of the particulars support that ground (Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd, 24 IPR 368). On its face, the present opposition has in my view been particularised to the extent that each one of the grounds on which Yazaki relies, with the possible exception of ground 3, is supported by at least some of the particulars.

Nevertheless, the substantive issues to be decided at a hearing of an opposition are constrained by the grounds of objection specified in sec 59(1), and thus it is not open to me to determine whether the opposition should be dismissed, or to give a direction for further and better particulars, based upon any deficiencies which may exist in the statement of grounds and particulars. Robb could have invoked the provisions of reg 5.5 at the appropriate time, but did not adopt this course of action. While one may speculate on the reasons why Robb chose not to request dismissal of the opposition, particularly in light of the criticism levelled at the statement of grounds and particulars on behalf of Robb at the hearing, the only decision I can reach in the circumstances is that the particulars must stand as they are.

Mr Cowin was also concerned that a number of issues raised at the hearing by Mr Carter involving sec 40 had not been foreshadowed in the statement of grounds and particulars. However, I believe these issues to be related to matters encompassed by the statement of grounds and particulars. In any case, the issues in question cannot be ignored since even if I were to discount them when deciding the opposition, they would need to be ultimately considered in the context of a bar-to-sealing action. Mr Cowin himself conceded this point.

As a further issue, I note from a review of the material before me in these proceedings that:

. Copies of US 3588865 and DE 3436761 listed under ground 1 have

not been filed

. The publication date of DE 2557637 listed under ground 1 has

not been established

. AU 572205 referred to in the second Clift declaration, and a

copy of which accompanied the James declaration, was not
  raised in the statement of grounds and particulars

As a consequence of the first point above, I cannot rely on the documents in question to find that the claimed invention has been anticipated.  In relation to the second point, a request to serve further evidence to establish publication of DE 2557637 in Australia before the relevant date was granted unopposed after the hearing under the provisions of reg 5.10(4).  In relation to the final point, the document concerned appears to have been used solely as an example of the common general knowledge in the art and, accordingly, is admissable as evidence (see Cooper Industries Inc v Metal Manufactures, (1994) AIPC 91-051).

Priority Date

On my understanding of the matter, the difficulty here according to Mr Carter lies with feature (ii) of claim 1 which defines a portable actuating key which is insertable into a keyway and actuable from an inoperative to an operative position.  He argued that this feature was not originally disclosed by the specification and that, as a consequence, the priority date of the claims should be postdated by virtue of sec 114 of the 1990 Act.  Mr Carter then reasoned that if the priority date of amended claim 1 was deemed to be later than the date of filing of the present application, the claim would in those circumstances be anticipated by its own specification.

Section 114(1) provides that where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.  Regulation 3.14 provides that where sec 114(1) applies to a claim of a specification, the priority date of the claim is the date of filing of the amendment that resulted in the disclosure referred to in sec 114(1). 

Thus the ultimate issue to be decided is whether by amendment claim 1 is directed to matter not in substance disclosed in the specification as filed.  In determining whether as a result of amendment a claim of a specification claims matter in substance disclosed or not, the claim may be tested for fair basis against the original disclosure (see United-Carr Incorporated's Application, (1971) RPC 23).

Although I believe Mr Carter to be correct in stating that the invention in its broadest sense did not originally include feature (ii) of claim 1, it seems to me from an overall reading of the specification as filed that the feature concerned was fairly foreshadowed prior to amendment.  In this regard I note from page 5 that the provision of an actuating key which may be used in a conventional manner with a mechanical security arrangement for a vehicle is described as one preferred alternative within the original broad invention.  Pages 6 and 7 of the specification as filed further contemplate the installation of the invention within a vehicle ignition system.  Thus in my opinion the incorporation by amendment of feature (ii) into claim 1 merely amounts to a choice from alternative embodiments given in the specification as filed which is not in the nature of a selection involving an inventive step beyond the original disclosure (c.f. Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd, 11 IPR 20).

On the basis of the foregoing, I do not agree with the submissions put to me that the addition of feature (ii) has caused the claiming of matter not originally disclosed and, consequently, I find that the priority date of the claims of the present application is not governed by sec 114.  I would add here that even if sec 114 could be properly invoked due to the presence in amended claim 1 of matter not disclosed by the specification as filed (i.e. before amendment), I can not see how claim 1 could possibly be anticipated by the unamended specification as submitted by Mr Carter.

Section 40

At the hearing Mr Carter relied on a considerable number of alleged difficulties to support this ground of opposition.  By way of illustration of matters raised Mr Carter said:

1) A number of passages contained in the description of the
   preferred features of the invention appear to contradict
   the consistory clause and, as a result of these apparent
   contradictions, it is difficult to determine where the
   invention lies.  For example, the consistory clause refers
   to an actuating key whereas the description at page 5
   suggests that this key is merely optional.

2) The drawings purport to illustrate a preferred embodiment
   of the invention yet do not depict a lock having a keyway
   or a portable actuating key which, according to the broad
   disclosure, are essential features of the invention.  The
   description as it relates to the drawings also omits any
   reference to these features.  The specification consequently
   does not describe the best method of performance known to
   the applicant.

3) The terminology used in paras (i) and (ii) of claim 1 is
   ambiguous and, as a consequence, fails to clearly define
   that it is the lock, and not the key, that is actuable from
   an inoperative to an operative position to provide mechanical
   vehicle security.

4) Feature (iv) of claim 1 defines the control module as being
   connectable to the actuating module merely upon insertion of
   the key into the keyway, and thus is not fairly based on the
   matter described in the specification where it is stated that
   the actuating and control modules interconnect upon insertion
   and subsequent rotation of the key in the keyway.

5) The definition of the invention provided by claim 1 is
   imprecise due to the broad nature of the functional terms
   used.  For example, the actuating key simply "carries" the
   actuating module and does not interact with the encoder means.
   As a consequence what is defined in claim 1 is a mere
   collocation of integers insofar as the mechanical and
   electrical components of the claimed invention are concerned.

I think it is fair to say that the present specification does not constitute a linguistically perfect example of a technical document. Nevertheless, I am mindful of the fact that when considering compliance of such a document with the requirements of sec 40, regard must be had to the long established rules of construction enumerated by Sheppard J in Decor Corporation Ltd v Dart Industries Inc, 13 IPR 385.

In relation to the first matter raised above, it is to be noted that a specification is primarily addressed to a person skilled in the relevant art.  It is significant to my mind that Messrs Clift and James, Yazaki's own experts in these proceedings, both depose that they have read and understood the present specification which clearly suggests that the skilled reader is able to discern the nature of the invention from an overall reading of the specification.  Moreover, the descriptive passages on page 5 to which Mr Carter has drawn attention concern features which were promoted by amendment to claim 1 during the examination process without corresponding changes being made to the description.  Thus, while the essence of the invention may not readily emerge from reading these passages in isolation from the remainder of the specification, I do not agree that the passages in question cause any difficulty in ascertaining what the invention is from a fair reading of the whole specification. 

In relation to the second matter, the applicable principles are stated in Patents for Inventions by T A Blanco White, 5th ed, in the following terms:

"[Para 4-504] A specification is not insufficient merely because some experiment of a routine character (as distinct from 'prolonged research, inquiry or experiment') is necessary in each particular case; nor because it fails to give detailed instructions as to matters which a 'practical person ... would naturally settle, and would expect to have to settle ... himself', provided he 'would find no difficulty in so doing'; nor merely because it fails to give detailed instructions as to matters not forming part of the invention".

In the present case I note that the illustrated embodiment of the invention is described in terms of its operation when installed in a vehicle ignition system.  I also note from the evidence and submissions that the conventional use in motor vehicles of electrical ignition systems controlled by a key actuated switch is common ground between the parties. 

Consequently, although the specification in describing the illustrated embodiment does not refer to the ignition system key and keyway, these features are so well known that I do not believe it necessary for the specification to include a detailed account of their constructional or functional details in order to describe the manner in which the invention is to be performed to the comprehension of any workman of ordinary skill in the particular art.  By similar reasoning, I consider there are sufficiently clear directions within the specification to enable a skilled worker to determine by routine experiment how the actuating module may be materially "carried" by the key, and it is again significant that no evidence has been produced to show that Yazaki's own declarants have experienced any difficulty in working the invention.

In relation to the third point, I note that a claim is not to be read in isolation from the description; it must be read in the context of the specification as a whole and given a purposive construction.  In my view I have no doubt that a skilled addressee would from a fair reading of the entire specification associate the inoperative and operative positions with the lock, and in this regard it seems from the evidence before me that a number of Yazaki's declarants had no difficulty in equating the features defined by paras (i) and (ii) of claim 1 with a conventional ignition lock and key.

In relation to the fourth point, I do not agree that claim 1 is ambiguous or drawn too widely.  In my view, and applying the principles of purposive construction, claim 1 would be understood by the skilled addressee as providing a security device in which the key must initially be inserted into the keyway before the control module can connect to the actuating module, but that actual connection of the modules will only occur following actuation (viz. rotation) of the key within the keyway.

In relation to the final point, the use of functional terms is frequently encountered in patent claims and, in view of the clear indication given in the specification that the invention is not confined to a vehicle security device when in use, is an appropriate form of definition in the present circumstances.

Furthermore, it is clear that claim 1 is not directed to a collocation per se when account is taken of the potential working interrelationship which exists between the integers of the claim.  In this regard I note that, in accordance with claim 1, the control module decoder means operates to receive and validate serial data signals transmitted from the actuating module encoder means during connection with the actuating module which is effected upon insertion of the key into the keyway.  The vehicle operating system is in turn enabled by the control module operating means upon validation of the transmitted data signals.  From this it is apparent that the electrical security component of claim 1 is functionally dependent upon the presence and operation of the mechanical security component.

Matters otherwise raised by Mr Carter at the hearing in relation to sufficiency and ambiguity can I believe be dismissed in similar fashion. Yazaki has therefore failed to establish that the specification does not comply with sec 40.

Novelty

In deciding whether a claimed invention lacks novelty, the courts have used the so-called reverse infringement test.  For example, in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228, the test was stated by Aiken J at page 235 as follows:

"The basis 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."

Furthermore in Yamazaki Mazak v Interact Tools, 22 IPR 79 it was stated at page 91:

"Where the patent under challenge claims a combination and the alleged anticipation does not incorporate the integers of the combination claim, so that the alleged anticipation would not constitute an infringement, there is no anticipation."

At the hearing Mr Carter relied on only some of the large number of citations exhibited by the evidence.  My views on the most relevant of these are as follows.

US 4366466

This specification discloses a vehicle security system wherein information contained on a data carrier which is combined with a mechanical key is read by a read/write unit when the key is inserted in the ignition lock.  If the information on the data carrier corresponds to information contained in a comparison circuit, an output signal is triggered to enable the vehicle ignition system.  There is no mention of the encoder and decoder means defined in paras (iii) and (iv) of claim 1, a difference which has in fact been conceded by Messrs Clift and James and, consequently, the disclosure of the US specification is not "for the purposes of practical utility" the same as the claimed invention ( Hill v Evans, (1862) 6 LT 90). In addition, I do not consider these features to be mechanical equivalents of the data carrier and the read/write unit and comparison circuit, respectively, as argued on behalf of Yazaki.

US 4192400

The vehicle security system disclosed by this specification incorporates an electronic key containing a pre-coded shift register which is energised upon receipt of the key in a receptacle in the vehicle dashboard.  An electronic clock contained within the vehicle can deliver this code as a series of impulses to a decoder which is electrically coupled to the receptacle to enable the starter or ignition system of the vehicle.  This security system does not, however, provide for combined mechanical and electronic security against unauthorised vehicle operation as required by claim 1; although the electronic key fits within the receptacle to activate an "operating system" of the vehicle ignition system, it is evident from the disclosure of US 4192400 that the electronic key and receptacle do not operate in the manner of a conventional key activated mechanical locking system.  Similar comments apply with respect to the electronic key arrangement disclosed by DE 2557637 and the magnetic key arrangement of US 4274080.

US 3492494

This specification discloses a vehicle security system wherein the vehicle starting circuit is enabled by an electronic switch circuit upon insertion of an electrical impedance of a predetermined magnitude which forms part of the ignition key into the switch circuit.  Like the first specification, there is no disclosure or suggestion of features (iii) and (iv) of claim 1, and on this point I do not accept Mr Carter's submission that these defined features may be equated with the associated circuitry and electrical characteristics of the impedance disclosed by the US specification.  Similar comments apply in respect of US 4148372.

EP 0105774

The vehicle security system disclosed by this specification incorporates an electronic element carried by the vehicle key.  The electronic element forms a transmitter in conjunction with an electronic circuit upon insertion of the key into a keyhole to disable the ignition lock.  The transmitter emits a coded signal to a receiver which triggers various components or accessories of the vehicle, such as the starter motor or ignition, via a central control unit. 

I am not convinced that the electronic element has an encoding characteristic within the context of claim 1 as suggested by Mr Carter.  In its illustrated form, the electronic element comprises a piezo-electric quartz crystal which presumably oscillates at a predetermined frequency when supplied with power from the vehicle battery.  From my reading of EP 0105774 there is no basis for equating the characteristics of such a device with those of an encoder device containing information in code form and which operates to transmit coded serial data signals.  Furthermore, I note that the security system disclosed by EP 0105774 relies upon the use of a part key carried/part vehicle mounted transmitter (viz "actuating") arrangement which in my view represents a fundamental departure from the key carried actuating module with signal transmitting encoder according to the claimed invention.

As an additional line of argument under this ground of opposition, Mr Carter submitted that the disclosures of DE 2557637 and US 4366466 could be combined given the cross-reference in the latter document.  Given that the purpose of the single reference is to simply identify a defect in the system disclosed by the earlier DE specification, I see no basis for the view that a reader of US 4366466 would be "clearly and unmistakably" directed to DE 2557637 for details or elaboration of any features of the claimed invention missing from the US specification (see Nicaro Holdings Pty Ltd v Martin Engineering Co, 16 IPR 545).

However, even if the disclosures of these two specifications could be considered as a single source of information, there is in my view no more disclosure of the claimed invention than as already stated for US 4366466.  In particular, it is clear that the electronic circuits disclosed by the DE specification are not carried by a key which is actuable to provide mechanical locking security of the vehicle ignition system, nor can it be said in my opinion that these circuits are equivalent to features (iii) and (iv) of claim 1.

Summary

On the basis of the foregoing I conclude that none of the prior patent specifications relied upon by Yazaki provide a disclosure of the combination of features of the claimed invention.  Accordingly, and having regard to the reverse infringement test, these documents do not deprive the claimed invention of novelty.

In reaching this conclusion, I have not overlooked the fact that it is permissible to read a document in the light of common general knowledge which exists at its date of publication for the purpose of establishing an objection of lack of novelty (see General Tire & Rubber Co v Firestone Tyre & Rubber Co, (1972) RPC 457). The documents relied on for establishing the ground of anticipation were published between 1971 and 1984, and there is no clear evidence of what was the common general knowledge at that time. However, as Robb did not dispute the proposition that mechanical key-actuated vehicle ignition locking systems have been well known to those in the art for many years before the priority date (see para 14 of Mr Martin's declaration), I think it is reasonable to conclude that such systems may be regarded as common general knowledge under this ground of opposition. Even so, there is nothing before me to suggest that a skilled reader of any one of the documents upon which Yazaki relies would interpret or extend its disclosures in the light of that common general knowledge to arrive at the claimed invention.

Other Material

Several other pieces of evidence should be mentioned at this point regarding the issue of novelty.  Firstly, Mr Scicluna's evidence refers to an alarm system which was fitted to certain motor vehicles manufactured by General Motor-Holden's and sold under the trademark "COBRA".  However it is not clear whether the sales and service literature exhibited by Mr Scicluna was publicly available and if so when.  In any event, this literature only provides a broad outline of the techniccal details of the COBRA system and, consequently, does not constitute a disclosure which renders the claimed invention not novel.  The extract from the Chevrolet Corvette shop manual exhibited with Mr Cleary's declaration is similarly deficient.

And secondly, Mr Clift explains in his first declaration that he has been asked to design, absent any detailed knowledge of the invention claimed by the present specification, a security system for a motor vehicle which provides both mechanical and electronic security in the vehicle ignition key.  As a basis for his design, Mr Clift relies upon the disclosures of US 4366466 previously discussed above.  In short, the system developed by Mr Clift utilises as a data carrier certain electronic devices (specifically a CMOS microprocessor and an EPROM) in conjunction with the system disclosed by the US specification.  In addition, Mr Clift briefly refers to a "simpler version" of his design which avoids the need for the EPROM device.  However, there is no evidence to establish whether either of these designs ever became publicly available.

Obviousness

The question of obviousness under the 1952 Act involves an investigation of whether the claimed invention would have been obvious to a non-inventive skilled worker in the field equipped with the common general knowledge as at the relevant priority date (see Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd, (1982) RPC 343). Thus a consideration of the question of obviousness must be made against the background of the common general knowledge in the art in Australia.

Mr Cowin questioned the credibility of Yazaki's declarants.  He argued that because of the long experience of Messrs Clift and James in the field of the invention, and the position the latter  holds with the opponent company, they do not belong to the category of non-inventive skilled workers in the art.  Mr Cowin also referred to the design exercises exhibited by Mr Clift to support this contention.  However, I am of the opinion that I should not dismiss what Yazaki's declarants allege to be part of the common general knowledge in the art merely because they may be said to be inventive.  In this respect I note the view reached by the delegate in Braas & Co GmbH v Humes Limited, 26 IPR 273, that evidence provided by "overqualified" experts may still be of high probative value in relation to the state of the common general knowledge in the art. As stated by the delegate at page 289:

"It is the weight to be given to such evidence of "overqualified" persons which is the issue, and this will depend on the facts of the matter.  It is not the case that such evidence is automatically shut out of contention."

I believe that this is equally true of experts who may be said to be inventive.  In any event, Robb's only declarant in these proceedings is named as inventor on the present application which in itself is sufficient prima facie evidence of his inventiveness in the art (see, for example, Hood Computers Pty Ltd v On-Line Furniture Pty Ltd, 28 IPR 347). Thus any shortcomings in Yazaki's evidence must by the same reasoning exist in the evidence of Robb.

Turning now to the details of the ground of obviousness levelled against the claimed invention, Yazaki contends that there are essentially two elements of common general knowledge whose combination involves no inventive step.  They are:

. motor vehicle theft deterrent systems as exemplified by the

prior patent specifications listed under ground 1 of the
  statement of grounds and particulars, and other exhibited
  documents

. encoder and decoder IC devices such as the Motorola MC 145026

encoder device and MC 145027 and 145028 decoder devices

It is clear from reported cases that documents in existence, or other matters of public knowledge, at the priority date can not be considered in the determination of the obviousness question unless they are proven as forming part of the common general knowledge amongst those in the trade at that time.  There is no evidence in these proceedings which establishes that the prior patent specifications discussed above were part of the common general knowledge.  Although Messrs Clift and James depose that they have read a number of these specifications, there is no clear indication, either by way of explicit statements or by implication, that they formed part of the common general knowledge available to all in the trade at the relevant date.  There is also no evidence establishing that the COBRA alarm system and the Chevrolet Corvette shop manual respectively referred to in the Scicluna and Cleary declarations formed part of the common general knowledge.

Mr James refers to a number of articles published in the magazine "Electronics Australia" and which describe several forms of security devices for vehicles.  In General Electric Co's Application, (1936) 53 RPC 221 at page 250, the Court of Appeal held:

"A piece of particular knowledge as disclosed in a scientific paper does not become part of the common general knowledge merely because it is widely read and still less because it is widely circulated.  Such a piece of knowledge only becomes common general knowledge when it is generally known and generally regarded as a novel basis for further action by the bulk of those engaged in the particular art; in other words when it becomes part of their common stock of knowledge relating to the art."

Whilst I have no doubt that the magazine Electronics Australia enjoys widespread circulation, I note that it is not specific to the field of the claimed invention and there is insufficient evidence before me to conclude that the magazine is widely read among those working in that particular field.  Yazaki's declarants are silent on this issue.  Mr Martin for Robb deposes that he has kept informed of developments in the art by subscribing to technical and industry publications including Electronics Australia, however, in my view this falls well short of conclusively establishing that the magazine Electronics Australia may be regarded as part of the body of knowledge of all those in the art.

Even if I were to assume otherwise, I note that the majority of the magazine articles to which Mr James has referred were not published until the period December 1986 to December 1987 and thus were unlikely to have constituted matters of common general knowledge at the relevant time.  The remaining articles, although published during 1984, refer to electronic theft deterrent systems which differ significantly from the mechanical key activated system of the claimed invention.

As to the second element of alleged common general knowledge, the present specification describes the particular Motorola IC devices identified above as preferred forms of the encoder and decoder means of the claimed invention.  However, it is clear from the authorities that the contents of a single patent specification cannot by itself be relied on as statements of common general knowledge (see, for example, Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd, (1980) 144 CLR 253).

Mr Clift refers to a Motorola data sheet exhibited with his second declaration which provides information concerning the operating characteristics of the IC devices in question.  In para 14 of that declaration he deposes as follows:

"Data sheets of this type and relating to devices of this type are part of the information base used by electronic engineers, circuit designers and others in my field.  I obtain copies of such fact sheets as well as receiving data books from various manufacturers detailing various devices available ... Accordingly, the Motorola data sheet referred to herein would have been available to myself and other design engineers as part of our library of information well before the priority date of the patent application."

This evidence is corroborated by Mr James.  Although it is not clear when the Motorola data sheet was published in Australia, I am prepared to accept in the absence of any contrary argument  that the Motorola IC devices were in fact part of the common general knowledge at the relevant time.  In this respect I note  Mr Martin's statement that he has been aware of these devices since "about 1985" (i.e. some two years before the priority date).  However, the evidence fails to establish that such devices have found common use in vehicle security systems, and  there is nothing before me to even suggest their application in a security system according to the claimed invention.

Finally, I feel it is worth mentioning that where a combination patent is involved, it needs to be shown that it would have been obvious to not only select the separate features which make up that combination, but also to select the particular combination of those features (Minnesota Mining and Manufacturing, supra).

The evidence presented on behalf of Yazaki fails to show that it would have been obvious to arrive at the combination of features claimed by claim 1, and tends rather to isolate a particular feature of the combination claimed and then allege that the addition of that feature can be shown to be obvious.  In particular, and assuming for the moment that US 4366466 is part of the common general knowledge contrary to my earlier findings on that issue, Mr Clift asserts in his second declaration that the claimed invention can be arrived at by simply substituting the Motorola devices for the data carrier and read/write unit disclosed by the US specification.  However, if this substitution was an obvious design choice as suggested by Mr Clift, it is surprising that the system designs outlined in the first Clift declaration did not include the Motorola devices as substitute components.  In my view it is significant to the question of obviousness that Mr Clift's design exercise was undertaken before he had read the present specification, while his statements concerning the obvious incorporation of the Motorola devices into the system disclosed by US 4366466 were not made until after reading the specification.  This suggests to me that Mr Clift's evidence is an example of the ex post facto dissection of an invention which has been criticised on many occasions by the courts.

On the basis of the above, I find that the claimed invention is not obvious.

Manner of Manufacture

Mr Carter did not make any submissions in relation to this ground of opposition.  As I do not consider the subject matter of the claims to be such that it manifestly is not a manner of manufacture, I do not uphold the opposition on this point.

conclusion

I have decided that Yazaki has not succeeded on any of the grounds relied upon.  Accordingly, I dismiss the opposition and, subject to any appeal being filed, direct that the application proceed to sealing. 

In accordance with the general principle that costs follow the event, I award costs against Yazaki.

O.L.Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Phillips Ormonde & Fitzpatrick,

Melbourne

Patent attorneys for the opponent   :  Carter Smith & Beadle, Melbourne