Sebel Furniture Ltd v Furnware Limited
[2013] APO 19
•26 February 2013
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sebel Furniture Ltd v Furnware Limited [2013] APO 19
Patent Application: 2004283634
Title:Recline mechanism for seating furniture
Patent Applicant: Furnware Limited
Opponent: Sebel Furniture Ltd
Delegate: Ed Knock
Decision Date: 26 February 2013
Hearing Date: 5 December 2012
Catchwords: PATENTS - opposition to grant – tilting mechanism for chair seat and back rest – amendment in response to evidence in support - whether description and claims comply with section 40 – deficiencies in description able to be overcome by addressee - claims 1 and 2 held to be unclear - novelty and inventive step – whether claims novel in light of prior documents – claims 1, 3 to 6, 13 and 17 not novel - whether claims lack an inventive step – whether person skilled in the art would as a matter of course use prior art mechanism for an analogous purpose - lack of an inventive step of claims 1 to 6 and 11 to 19 established
Representation: Patent applicant: David Macaskill, James & Wells, Hamilton
Opponent:Fraser Old, Fraser Old & Sohn, Sydney
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2004283634
Title:Recline mechanism for seating furniture
Patent Applicant: Furnware Limited
Date of Decision: 26 February 2013
DECISION
Opposition succeeds. Applicant has 60 days to propose amendments. Costs awarded against Furnware Limited.
REASONS FOR DECISION
1. Application 2004283634 was filed by Furnware Limited (Furnware) under the provisions of the Patent Cooperation Treaty on 22 October 2004 as application PCT/NZ2004/000262. Australia was among its designations, and it was allocated Australian application number 2004283634. It claimed priority from New Zealand patent application 529154 filed on 24 October 2003. International publication of the PCT application took place on 6 May 2005, the application being accorded the International Publication Number WO 2005/039361. The application did not undergo international preliminary examination under the PCT, and instead an International Preliminary Report on Patentability (Chapter I) (IPRPI) was issued on 24 April 2006. The application entered the national phase of processing in Australia on 20 April 2006, and was advertised accepted on 11 March 2010.
2.A notice of opposition to application 2004283634 was filed on 10 June 2010 by Sebel Furniture Ltd (Sebel), followed by a statement of grounds and particulars on 10 September 2010. The evidence in support of the opposition was served on 14 October 2010, and the evidence in answer was served on 27 January 2012 after several extensions of time in order to do so. In the interim the applicant had, on 21 April 2011, filed a voluntary request under section 104 of the Patents Act to amend its complete specification. Allowance of these amendments was advertised on 8 December 2011. The opponent did not avail itself of the opportunity to file evidence in reply.
3.The opposition was set for hearing on 5 December 2012 in Canberra. The applicant opted not to appear or file written submissions. The opponent was represented by Fraser Old, of Fraser Old & Sohn, Sydney, who appeared by telephone.
THE SPECIFICATION
4.The title of the specification is “Recline mechanism for seating furniture”, and at the commencement of the specification the field of the invention is stated to be “in particular though not solely … a recline mechanism for use in seats or chairs which allows for tilt adjustment of the seatback and/or base of the seat or chair.” However this is a legacy of the specification as originally filed. Subsequent to the voluntary amendment of 21 April 2011, the invention as claimed in broad form has now been restricted to only a recline mechanism which allows for tilt adjustment of the base of a seat or chair. I note that there are numerous other similar inconsistencies between what is described and what is now claimed as a result of that amendment.
5.The specification acknowledges that seating furniture which allows the user to adjust the seat angle is well-known. The specification further notes that it is known to be able to lock such adjustable seats in a desired position, and to spring-load the seat so that the user does not completely lose support during the adjustment process.
6.The specification states the problem addressed by the present invention to be the following:
“Accordingly, existing mechanisms for adjusting the seat and/or of items of seating furniture are relatively complex and therefore expensive to manufacture and purchase. It would be an advantage to provide a recline mechanism for an item of seating furniture which was less complicated and simpler to manufacture and therefore could be incorporated into seating furniture at the less expensive end of the market to provide users of those seats with improved comfort and support whilst seated.”
It emerged from the evidence that the sort of market the invention has in mind is, for example, school chairs.
7.Although the invention is technically and conceptually a simple one, the specification is drafted in a manner which sometimes causes difficulty in comprehending what is being described (a situation which Mr Fraser had occasion to comment upon a number of times). Notwithstanding this impediment, it is apparent that the seat adjustment mechanism of the described invention achieves its objects through a particular functional arrangement of basic, commonplace components.
8. The specifics of that functional arrangement may be readily perceived in broad terms by going to claim 1 (as currently constituted), notwithstanding a minor clarity problem with that claim (which I shall detail later). Claim 1, which is the only independent claim other than an omnibus claim, reads:
“1. Seating furniture including:
· a frame,
· a seat adapted to provide support to a user in use,
· a recline mechanism connecting the seat to the frame, the recline mechanism including:
-a housing positioned on the seat or the frame,
-an extending portion positioned on the other of the seat or the frame to the housing,
-said housing receiving the extending portion within a cavity bounded by a cavity wall; and
-biasing means located inside the cavity between at least a portion of the cavity wall and the extending portion,
wherein the housing of the recline mechanism tilts with respect to the frame about the extending portion; and
wherein tilting movement of the seat causes a rotation between the cavity and the extending portion, thereby compressing the biasing means between the extending portion and the cavity wall causing said biasing means to generate a restorative biasing force against the rotation.”
9. There then follows eighteen dependent claims and an omnibus claim. These read:
“2. The seating furniture a[sic] claimed in claim 1, including a second recline mechanism connecting a back rest to the frame, the second recline mechanism including:
-a second housing positioned on the back rest or the frame, and
-a second extending portion positioned on the other of the back rest or the frame to the second housing,
-the second extending portion extending through a cavity in the second housing, and
-a second biasing means located inside the cavity between at least a portion of the cavity wall and the second extending portion,
wherein the second housing of the second recline mechanism tilts with respect to the frame about the second extending portion; and
tilting movement of the backrest causes a rotation between the cavity and the extending portion, thereby compressing the biasing means between the second extending portion and the second housing’s cavity wall, causing said second biasing means to generate a restorative biasing force against the rotation of the back rest.
3. The seating furniture as claimed in either one of claim 1 or claim 2, wherein the biasing means comprises an elastically compressible or extensible material.
4. The seating furniture as claimed in any one of claims 1-3, wherein the biasing means is cylindrical or tubular in shape.
5. The seating furniture as claimed in any one of claims 1-4, wherein the extending portions are plate-like in shape.
6. The seating furniture as claimed in any one of claims 1-5, wherein at least an end portion of the extending portions is rod-like in shape and the biasing means are positioned about the extending portions.
7. The seating furniture as claimed in any one of claims 2 to 6, wherein the cavity in the second housing is substantially triangular in cross-section.
8. The seating furniture as claimed in any one of claims 1-6, wherein the cavity in the first housing has a centrally-waisted cross-section.
9. The seating furniture as claimed in claim 8, wherein the extending portion extends longitudinally into the centrally-waisted cavity and is pivotable laterally about a central pivot point of the cavity.
10. The seating furniture as claimed in claim 8, wherein the extending portion extends laterally into the centrally-waisted cavity and is pivotable longitudinally about a central pivot point of the cavity.
11. The seating furniture as claimed in claim 6, wherein the biasing means are provided about both ends of the rod-like shaped end portion of the extending portion of the frame.
12. The seating furniture as claimed in any one of the preceding claims, wherein said housings are integral with said seat and/or back rest.
13. The seating furniture as claimed in any one of claims 1-11, wherein, said housing is connectable to said seat and/or back rest.
14. The seating furniture as claimed in any one of claims 1-12, wherein said housing comprises a first section integrally formed with the seat back and/or back rest and a second section connectable to the first section so as to define the cavity between the first and second sections.
15. The seating furniture as claimed in any one of the preceding claims, wherein the seat and/or back rest is provided with stopper means adapted to contact the frame.
16. The seating furniture as claimed in any one of claims 1-14, wherein the frame is provided with stopper means against which the seat and/or back rest comes into contact.
17. The seating furniture as claimed in any one of the preceding claims, wherein said biasing means are formed from elastomeric material or natural rubber.
18. The seating furniture as claimed in any one of the preceding claims, wherein a biasing force provided by the biasing means is adjustable by altering the length of the elastomeric or natural rubber material within the cavity.
19. The seating furniture as claimed in any one of claims 1-18, wherein a biasing force provided by the biasing means is adjustable by altering the density of the elastomeric or natural rubber material within the cavity.
20. The seating furniture substantially as hereinbefore described with reference to the accompanying figures.”
GROUNDS OF OPPOSITION
10. The grounds of opposition are those available under subsections 59(b) and 59(c) of the Patents Act, that is, firstly, that the invention as claimed is not a patentable invention as it does not comply with subsections 18(1)(a) or (b) (that is, the claimed invention is not novel and does not involve an inventive step), and, secondly, that the specification filed in respect of the complete application does not comply with subsections 40(2) and 40(3).
11. The particulars for the ground of novelty cited ten prior art patent documents. The particulars for inventive step also relied on these documents when considered in light of the common general knowledge represented by the sale by the opponent in Australia, before the priority date of the claims, of “large quantities” of a particular chair known as the “Program Chair”. Only two of the ten originally cited patent documents were relied upon at the hearing (recalling that the claims had undergone substantial amendment after the evidence in support had been filed).
12. The section 40 issues raised in the statement of grounds and particulars were extremely minor in nature and were not pursued at the hearing. It is not necessary to go into them further.
THE EVIDENCE
13. The evidence in support consists of a single statutory declaration by Kenneth William Payne, the R&D manager for the opponent Sebel. Copies of the ten prior art patent documents stated in the particulars are annexed to this declaration, as well as a copy of a sales brochure for a Program Chair (also referred to above), and sales figures and production figures for the Program Chair from the mid-1980’s to 2003.
14. The evidence in answer consists of two statutory declarations. One is by Jonathan Prince, in the role of an independent expert in the art of the invention. He declares as to his knowledge of the background art of the invention, and provides an analysis of the prior art adduced in the evidence in support.
15. The other declaration is by Murray Neil Pilcher, who is one of the inventors of the present invention. Mr Pilcher gives an historical account of the development of the invention, which is said to have arisen out of a need to provide a tilting mechanism for the seat and back rest of a chair which does not have any moving parts. The invention is said to have come from an “epiphany” whereby Mr Pilcher realised he could adapt a suspension mechanism used for trailers and caravans - which is known as a “duratorque” axle - for the desired purpose.
16. The evidence will be subjected to a more detailed analysis, where relevant, later in the decision.
SUBMISSIONS
17. As previously stated, the applicant did not avail itself of the opportunity to provide submissions, either in writing or at the hearing, other than what was contained in its evidence.
18. In its written submissions, the opponent drew attention to some newly perceived section 40 deficiencies in the specification. These were:
·the numbering of reference numerals in the drawings is confusing, and in one instance a mislabelling had occurred;
·there are no drawings which show the interrelationship between the frame as illustrated in the chairs and the rubber items illustrated in the recline mechanism;
·the claims prior to claim 17 are not fairly based, as only a rubber or elastomeric biasing means is illustrated and disclosed, but these claims are not so restricted.
19. In relation to novelty, in its written submissions the opponent sought to maintain its attack against the amended claims on the basis of two of the original ten citations, US 4,890,886, and US 2,796,920. The former of these eventuated to be the more significant to this opposition.
20. Regarding inventive step, the opponent’s written submission in toto was:
“In relation to obviousness, any reclining mechanism must have a fixed support formed by part of a frame (a first part), and a rigid member carried by the movable seat or backrest (a second part), and a resilient biasing arrangement or elastomeric member sandwiched between the first and second parts. This is clearly shown in the prior art. Accordingly it is essential that the claims be further amended so as to be restricted to the detailed disclosure.”
21. Mr Old’s submissions at the hearing in the main were a reiteration of the opponent’s written submissions. Regarding the section 40 deficiencies, Mr Old commented that they ”are such that the reader is caused to wonder” as to what is being described by the specification. Regarding inventive step, he conceded that the Program Chair’s significance as common general knowledge had been reduced as a result of the amendment of the specification subsequent to the filing of evidence in support.
22. Mr Old also submitted that it would have been obvious to combine two of the preferred embodiments disclosed in US 4,890,886 to arrive at the two-by-two array of biasing means that was a preferred embodiment described in the present application. This feature does not at present appear in any claim (disregarding the omnibus claim), but I understood Mr Old to be anticipating possible future amendments in consequence of the outcome of this decision. Since it is not possible to foresee the exact form such amendments might take, I regard them as being outside the scope of this decision on the basis of practicalities alone. But I also observe that in any case Mr Old’s submission raises issues that have not before been aired in this opposition, and due process would seem to require that the applicant be given an opportunity to make representations upon these issues before I express any concluded view on them.
23. I will provide more details of the opponent’s other submissions, where relevant, later in my decision.
DECISION
Evidentiary principles
24. In proceedings such as these before the Commissioner the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue, and the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding's Ltd.'s Application [1979] RPC 523). As a tribunal, I am entitled to act on any material which is "logically probative" (T. A. Miller Ltd. v The Minister for Housing and Local Government and Another (1968) 1 WLR 992). In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 Emmett J of the Federal Court found that in opposition proceedings the Court (and by implication the Commissioner of Patents in her role as a tribunal) should be "clearly satisfied that the patent, if granted, would not be valid". Where questions of fact such as obviousness and existence of invention are involved, "the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out" (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
25.The matter at hand is a little unusual, in that although inventive step is very much a live issue, there is little evidence relating to that issue aside from patent documents. However, that does not preclude a finding of lack of inventive step. The position of the Commissioner in relation to evidence has been considered by a full bench of the Federal Court in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 where the Court stated:
“23 Senior counsel for the Commissioner submitted that the Commissioner can draw legitimate inferences from the material available to her. He said that his Honour erred in referring to a perceived need for the Commissioner to act only on "evidence". In support of this argument senior counsel said that the stages of re-examination and report (ss 97 and 98), like the stages of initial examination and report (s 45) and acceptance (s 49), involved essentially an inquisitorial procedure. This was in contrast to the stages of opposition before grant (ss 59 and 60) and revocation by the Court after grant (s 138), both of which involved an adversarial procedure.
24 It is not necessary to explore the suggested inquisitorial/adversarial dichotomy because we accept the basic proposition put. The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory (see e.g. s 101(2)), he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations: R v Milk Board; Ex parte Tomkins [1944] VLR 187 at 197, Kalil v Bray [1977] 1 NSWLR 256 at 261, R v Industrial Appeals Court; ex parte Maher [1978] VR 126 at 142, Rodriguez v Telstra Corporation Ltd [2002] FCA 30; (2002) 66 ALD 579 at 585, Tisdall v Health Insurance Commission [2002] FCA 97 at [103]. On an appeal by way of hearing de novo the judge would not be a person credited with technical expertise of his or her own. In such event the judge may be able to take into account conclusions of the Commissioner based on his or her expertise, subject of course to the rights of other parties to call rebutting or supporting evidence.”
And
“32 In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary. In many instances the answers will be obvious to the parties, the Commissioner and the Court. In high technology areas for example it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required.”
26. Finally, it is worth noting that the construction of documents is always ultimately the responsibility of the hearing officer, and moreover, in particular, novelty is basically a question of construction. To quote from Blanco White, Fifth Edition, 4-105:
"The question whether a claim has novelty over what is disclosed in an earlier document is primarily one of construction of the two documents, once the court has been put by evidence of the state of the art into the position of a skilled reader of them. For this purpose the earlier document must be construed in the usual manner, but as of its own date; that is to say, its meaning must be the meaning it bore at the date when it was written. Just as in the case of infringement, however, the further question, whether or not what the prior document ought to be regarded as disclosing is or is not substantially within the claim, is a question of fact."
Section 40
27. The opponent has raised issues going to the sufficiency of the description of the invention. Firstly, it complains that “the usual convention” of numbering later versions of similar features by preceding them with a “1”, “2”, and so forth has not been followed. If this “convention” is in fact a convention, it is one that is adhered to less than universally. But in any case, I did not find the numbering scheme which was employed to be any impediment to my understanding of the invention and its best method of performance, and I do not consider that an addressee of the specification would be so impeded.
28. Secondly, the opponent complains that the various views of the invention shown in the drawings do not enable one to easily grasp what is exactly being described. Here I think the opponent is on somewhat firmer ground: despite having drawings, one does at times struggle to visualize features which are being described in the body of the specification. However, in the end I have concluded that there is enough in the description to enable the addressee to fill in the gaps and resolve the uncertainties. For example, the opponent states that “the part 11 of the recline mechanisms is not illustrated as anywhere forming part of the frame of the chair.” This is true, but the specification does state that, as the first possibility, “the extending plate 11 could comprise a flat plate extending substantially horizontally and laterally beneath the seat base 3”. Thus this flat plate, which is shown in transverse cross-section in the drawings, could be connected at its ends to the frame by means of flanges which are formed on the ends of the flat plate or which are formed on the frame.
29. Thirdly, the opponent has contended that the claimed invention is lacking in fair basis because the biasing means defined in claim 1 is not defined as being rubber or other elastomeric material. I understand the opponent to be saying that because the specification is silent on the possibility of using any other biasing means other than an elastomeric material, then this is an essential feature of the invention which should be included in any claim which defines the invention.
30.The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69 at 98-99 as being relevant to the consideration of fair basis is:
·whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
·whether the claims travel beyond the subject matter of the invention described in the specification [Olin v Super Cartridge [1977] HCA 23; (1977) 180 CLR 236].
31.An essential feature of an invention cannot be used for the determination of fair basis. In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (supra), the High Court stated:
“The comparison which s40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ ‘an over meticulous verbal analysis’ [76]. It is wrong to seek to isolate in the body of the specification ‘essential integers’ or ‘essential features’ of an alleged invention and to ask whether they correspond with the essential integers of the claim in question [77].”
32.In the present application there is no question that a device having all the features of the invention in all its claimed forms has been disclosed, and thus the requirement for fair basis has been fully met. In reinforcement of this I note in any case that, regarding the specific point made by Mr Old, there is an explicit statement in the specification at page 6, lines 17 to 18 that “Preferably, said biasing means is formed from elastomeric material or natural rubber.” (emphasis added).
33.Notwithstanding the above findings regarding the section 40 issues raised by the opponent, I do consider that claims 1 and 2 are lacking in clarity (subsection 40(3)) in another respect. In relation to clarity, Lord Russell in EMI v Lissen (1939) 56 RPC at 39 stated:
"It is the function of a claim to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers."
34. Claims 1 and 2 of the present application fail this test for clarity by having contradictory requirements. Considering firstly claim 1, at one point it contains the integer:
“a housing positioned on the seat or the frame”.
However, further on it has the integer:
“wherein the housing of the recline mechanism tilts with respect to the frame about the extending portion;”.
From the reading of the specification as a whole it is apparent that by “positioned on” is meant “in a fixed position in relation to”. Thus, if a housing is positioned on the frame (as is defined), then it would not be possible for it to tilt with respect to the frame (as is also defined). This ambiguity is not resolvable by application of the accepted rules of construction (see, for example, Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 38), such as by reading the specification as a whole or by use of the “dictionary principle”. However, while not assisting in overcoming the lack of clarity in claims 1 and 2, some insight into how the situation arose is afforded by having regard to the amendment history of the application. The second integer referred to above was introduced into the claim 1 by the latest amendment of the specification, and in doing so it is possible that an oversight has occurred by not deleting the phrase “or the frame” from the first integer quoted above, and also the phrase “the other of the seat or” in the subsequent integer. Additionally, I note that the words “to the housing” in that subsequent integer do not sit particularly comfortably in their context, although not to a sufficient degree to cause a lack of clarity.
35. Similar considerations apply in respect to claim 2.
36. In view of the circumstances, in proceeding to consider the grounds of novelty and inventive step it is convenient to disregard the presence of the phrases “or the frame” and “the other of the seat/back rest or” in claims 1 and 2.
Novelty
37. 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) 137 CLR 228 at 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 whether the alleged anticipation would, if the patent were valid, constitute an infringement."
38. 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.
39. The opponent Sebel only perseveres now with its ground of lack novelty against claim 1 on the basis of just a single prior-published patent document, namely US Patent 4,890,886. In common with the invention defined by claim 1, the chair disclosed by US 4,890,886 has a seat tiltably mounted on a frame (in this case, a pedestal arrangement), with the tiltability being achieved by means of a recline mechanism connecting the seat to the frame. The recline mechanism has something that fits the description of a housing (seat supporting means 6) which is positioned on a seat (albeit, beneath the seat). The recline mechanism includes an extending portion (plate 2) which is positioned on the pedestal portion of the frame. The housing has an identifiable cavity (and, in any case, a cavity may even be implicit in the notion of a housing) into which the plate extends. Also in the cavity is a biasing means comprising two cylindrical “elastic rubber” blocks 8a and 8b, 108a and 108b in another embodiment, and 208a and 208b in a third embodiment, each of which are each located between a portion of the cavity wall and the plate. Because of the elasticity of the blocks, depending on the forces being applied, the housing (and thus the seat) will change orientation (that is, will tilt) with respect to the plate and frame. The elasticity of the blocks will result in a restorative biasing force.
40. As is evident from that analysis, the mechanism of US 4,890,886 falls within the scope of the claim 1 in suit, and thus that claim is not novel.
41. Claim 2 is appended to claim 1. It claims another tilting mechanism which is exactly the same mechanism as defined in claim 1, except applied to the back rest of the frame of the seating furniture defined by claim 1. The applicant has cited another document – US 2,796,920 – in respect to the lack of novelty of claim 2. However, US 2,796,920 is concerned solely with the back rest of a chair, so while its subject matter has close links to what is defined in claim 2, it could not succeed as a novelty citation. Its disclosure would need to be combined with that of US 4,890,886, but it is not possible to mosaic documents in this way for novelty purposes. Its relevance, if any, could only be to the ground of inventive step, and I will return to it when considering that ground.
42. The reason the opponent was led to cite US 2,796,920 against the novelty of claim 2 seems to have been due to statements made in the paragraph at page 9, lines 3 to 11 of the specification that the recline mechanism of the invention could be associated with either the seatback 2 or the seat 3. As I have mentioned earlier, as a result of narrowing amendments having been made to the claims without corresponding amendments being made to the description, there is now a mismatch between the claims and some aspects of the description. In the present situation it has been appropriate to resolve such conflicts in favour of the claims, and this is the course of action I have taken.
43. Turning to the remainder of the claims, the following claims all lack novelty in light of US 4,890,886: claim 3 (see column 4, lines 25 to 54), claim 4 (see column 4, lines 25 to 54), claim 5 (see column 3, line 53), claim 6 (see Figures 11 to 13), claim 13 (see column 4, lines 3 to 6), claim 17 (see column 4, lines 25 to 54).
Inventive step
45.Section 7 of the Act states that:
“(2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to the person skilled in the relevant art in light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person... could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
46.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).
47.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."
48.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.
49.In regard to the assessing of inventive step, there are a number of approaches which the courts have used. In Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (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."
50.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 claimed invention] in the expectation that it might well produce [the desired result]?'
That approach should be accepted."
51. The documents of interest for inventive step purposes are US Patent 4,890,886 and US Patent 2,796,920. The applicant has not raised any issues concerning whether these documents could have been reasonably expected to have been ascertained, understood and regarded as relevant by the person skilled in the art (in this case, a furniture designer), and, as US patent documents which are closely related technology-wise to the present invention, I am satisfied that they would so have been. It follows from my findings on novelty that I find that claims 1, 3 to 6, 13 and 17 also do not involve an inventive step.
52. I only have available to me very limited declaratory evidence of the common general knowledge in the art. All that can be really be said with an appropriate level of confidence is that it was common general knowledge in the art to provide tilting mechanisms for the seats and/or back rests of chairs in all their manifestations. Of course, the person skilled in the art would have to possess all the engineering competencies relevant to the art of furniture design, and tilting mechanisms in particular.
53. I will turn firstly to US 2,796,920. This discloses a mechanism for attaching a seat back to a seat frame. The attachment mechanism allows the seat back to swivel (that is, tilt in all directions, including a reclining direction) with respect to the frame. The tilting mechanism comprises a housing in the form of a rounded cup bolted to the frame, a biasing means in the form of an elastic rubber O-ring located in the cup, and an extending portion in the form of a stud which is attached to the seat back and passes through the centre of the O-ring. This mechanism thus differs fundamentally from that which is claimed in claim 2, in that it lacks the feature of:
“wherein the second housing of the second recline mechanism tilts with respect to the frame about the second extending portion”.
54. I consider that the person in the art could be reasonably expected to have combined the disclosures of US 4,890,886 and US 2,796,920 (especially since the parts of a chair to which they relate – the seat and the back rest, respectively – essentially operate independently of each other). But that would not be enough to sustain a finding of lack of inventive step. It would also need to be obvious to then further fundamentally alter the disclosure of US 2,796,920 to overcome the difference referred to above and to then arrive at the invention of claim 2. This is not, to me, something which the person skilled in the art would be directly led to try.
55. There is, however, another line of approach to the question of whether the invention defined by claim 2 involves an inventive step, which is by considering US 4,890,886 alone. A comparison of claim 2 with claim 1 reveals that claim 2 defines exactly the same mechanism as claim 1, except that the mechanism of claim 1, which is fully disclosed by US 4,890,886, is now utilised for the back rest of the chair as well as the seat. The question thus is, is there any inventive step involved in deploying the mechanism of US 4,890,886 in the back rest of a chair? US 4,890,886 does not specifically disclose the use of the mechanism described therein for that purpose, but it goes fairly close to doing so by making it clear that the potential application of the disclosed tilting mechanism is not confined to chair seats alone. In particular, the first sentence of the specification states: “The present invention relates to a tilting mechanism, preferably for a chair seat or similar article …” (emphasis added).
56. Given the problem being addressed by the invention defined by claim 2 (see [6], above), it seems to me that the person skilled in the art would be directly led to try to utilize the mechanism of US 4,890,886 for the back rest as well as the seat for the chair. As well as the advantages referred to in [6], having a common or similar tilting mechanism for both the back rest and the seat would provide further gains in the simplification of manufacturing. Accordingly, I find that claim 2 does not involve an inventive step in light of US 4,890,886.
57. As to claims 11, 12, 14 to 16, 18 and 19, these appear to be mere arbitrary design variations which, while they may achieve desired outcomes of a functional, economic or aesthetic nature, do not appear to involve any exercise of the inventive faculty.
58. In summary, I find that claims 1 to 6, and 11 to 19 do not involve an inventive step.
CONCLUSION
59.I have found that claims 1 and 2 are not clear and thus do not comply with subsection 40(3), that claims 1, 3 to 6, 13 and 17 lack novelty in the light of prior art and that claims 1 to 6, and 11 to 19 do not involve an inventive step in the light of prior art, for the reasons detailed above.
60. As the specification clearly contains patentable subject matter, I allow the applicant 60 days from the date of this decision in which to propose suitable amendments to overcome the above findings. If suitable amendments are not proposed within that time, I will refuse the application.
COSTS
61. In proceedings such as these it is usually the case that costs follow the event. In this matter not only has the opponent Sebel been successful in the outcome of the opposition, but also the applicant has been compelled to amend its complete specification along the way. I see no reason to vary that usual approach on this occasion. I therefore award costs against Furnware Limited.
E J Knock
Delegate of the Commissioner of Patents
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