Sewlex Manufacturing Pty. Ltd. v Harcor Security Seals Pty. Ltd
[2016] APO 38
•21 June 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sewlex Manufacturing Pty. Ltd. v Harcor Security Seals Pty. Ltd. [2016] APO 38
Patent Application: 2007291921
Title:Tamper Evident Device
Patent Applicant: Harcor Security Seals Pty. Ltd.
Opponent: Sewlex Manufacturing Pty. Ltd.
Delegate: Dr W.E. Guinea
Decision Date: 21 June 2016
Hearing Date: 29 April 2016, in Canberra
Catchwords: PATENTS - section 59 – opposition to the grant of a patent – novelty – inventive step – full description – clarity – fair basis – opposition fails on all grounds
Representation: Patent applicant: Kerry Chrysiliou and Heather O’Kane, both of ChrysiliouIP
Opponent: Fisher Adams Kelly Callinans
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007291921
Title:Tamper Evident Device
Patent Applicant: Harcor Security Seals Pty. Ltd.
Date of Decision: 21 June 2016
DECISION
None of the grounds of opposition are made out. The opposition is unsuccessful. Costs are awarded against the Opponent according to Schedule 8 of the Regulations.
REASONS FOR DECISION
Background
Patent application 2007291921 (“the opposed application”) entered national phase in Australia on 31 March 2009 from PCT application PCT/AU2007/000929.
Harcor Security Seals Pty. Ltd. (“the Applicant”) requested examination on 18 May 2011, and the opposed application was advertised as accepted on 14 August 2014.
A notice of opposition was filed by Sewlex Manufacturing Pty. Ltd. (“the Opponent”) on 14 November 2014. The Opponent filed a statement of grounds and particulars (“SGP”) on 13 February 2015.
Evidence in support (“EIS”) was filed on 13 May 2015. This comprised:
· a first statutory declaration by Anthony Robert Milicia (“Milicia#1”) with supporting exhibits ARM-1 to ARM-9.
Evidence in answer (“EIA”) was filed on 14 August 2015. This comprised:
· a statutory declaration by Peter Schaede (“Schaede”), with supporting exhibit PS-1;
· a statutory declaration by Kevin Partridge (“Partridge”) with supporting exhibits KP-1 to KP-6; and
· a statutory declaration by Kerry Chrysiliou (“Chrysiliou”) with supporting exhibits KC-1 to KC-5.
Evidence in reply (“EIR”) was filed on 19 October 2015. This comprised:
· a second statutory declaration by Anthony Robert Milicia (“Milicia#2”) with supporting exhibits ARM-10 to ARM-12; and
· a statutory declaration by Robert Coco (“Coco”).
A hearing for this matter was set for 29 April 2016. On 14 April 2016 the Opponent advised that they would not appear at the hearing and would file written submissions only (“the Opponent’s written submissions”), with these submissions being received on the aforementioned date. The Applicant’s written submissions (“the Applicant’s written submissions”) were filed on 22 April 2016.
Further written submissions were filed by the Opponent on 28 April 2016 (“the Opponent’s further written submissions”). These further written submissions were also accompanied by a declaration and certain documents that the Opponent provided to the Commissioner to facilitate the operation of Regulation 5.23 in relation to these documents, of which more will be discussed later.
The Invention as Described
The specification deals with a type of security device for securing a container such as a bag, containing for example banknotes, which can be closed by means of a slide fastener using a slider, such as a zipper. In operation this type of security device is affixed to the bag such that one cannot open the bag by means of the slide fastener without first breaking a frangible seal. Consequently a person, such as a security guard or bank employee who legitimately attempts to gain access to the bag will immediately know that unauthorised access or an attempt at unauthorised access has occurred via the presence of a broken frangible seal. Hence the security device does not prevent unauthorised access as such to the bag, but it hinders such behaviour since it provides clear evidence of tampering or unauthorised access.
10. While such security devices are known in the art, the specification states that there is a problem with some of these in that an unauthorised user may be able to conceal unauthorised entry to the bag by levering the security device with respect to the bag such that the fasteners (typically rivets) “pop”, using for example a screwdriver, but without otherwise visibly damaging the security device, this being assisted by the rigidity with which prior art security devices are assembled. After accessing the bag it is stated that the unauthorised user can then use commonly available tools to re-fix the security device to the bag using the rivets, or other means, such that an authorised user may be unaware that the bag has been tampered with.
11. The nature of the security device is best explained via figures 1 and 5 of the opposed application, which are reproduced below.
12. Figure 1 provides a perspective view of the security device 10 in an assembled state, while figure 5 provides an exploded view. As can be seen on figure 5, the body of the security device comprises a lower part 12, an upper part 20 and a cover 28. These components attach to one another to form a unitary body, with the upper and lower parts being fastened together via anchor legs 38 on the upper part and corresponding apertures 34 on the lower part. The upper and lower parts are also fastened together via rivets (not shown) placed through holes 33 in the upper part and holes 32 in the lower part. These rivets also fix the security device to the bag in question (not shown).
The cover mates to the upper part via ledges 64, although it is retained via the frangible seal 26, as discussed below. Attaching means 14 is fixed to the slider 16 via aperture 18 on the slider. The attaching means has a pivot 54 which fits into the rear 56 of the cover, such that the attaching means is pivotable with respect to the cover, with the cover preventing manipulation of the attaching means (and thus also the slider). The upper part comprises a passageway 24 which receives a frangible seal 26 via a slot 58 in the cover, such that the frangible seal retains the cover on the upper part. The frangible seal is retained in the passageway via legs 44 and barbs 46, 48. The frangible seal comprises areas of weakness such that the legs will separate from the main body 42 of the frangible seal if an attempt is made to withdraw the frangible seal from the passageway.
13. In use the bag can only be accessed by using force to separate the main body of the frangible seal from the legs, thus releasing the cover and allowing access to the attaching means such that slider can be manipulated. Thus unauthorised access or attempts to gain unauthorised access will be apparent to an authorised user by the presence of a broken frangible seal or via its absence. In the event that a person attempts to circumvent the security device by levering the rivets, an area of weakness 30 present on the upper part is designed to tear before the rivets pop, thus leaving visible evidence of tampering given that the area of weakness is clearly visible to an authorised user (see figure 1). In addition the use of the anchor legs and complementary apertures to help attach the upper and lower parts provides a degree of play in the security device that renders it more difficult to pop the rivets.
The Opposed Claims
14. The opposed application as accepted ends with 11 claims, with claim 1 being the only independent claim. Claim 1 as accepted is reproduced below:
“1. A security device for a container closeable by a slide fastener having a slider, the security device including:
a lower part adapted for attachment to the container;
an upper part defining a chamber and attached to the lower part, the upper part including an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container;
a cover for the upper part covering the chamber to limit access therein; and
a receiving member for receiving a frangible seal in a lateral movement, the receiving member disposed within the chamber and attached to the upper part, the frangible seal configured to break upon the lateral withdrawal of the frangible seal from the receiving member; and
attaching means for attaching the security device to the slider.”
The Opposition
15. In the SGP the Opponent pursued grounds under:
· s18(1)(a) – the invention is not a manner of manufacture;
· s18(1)(b)(i) – the invention as claimed is not novel;
· s18(1)(b)(ii) – the invention as claimed does not comprise an inventive step;
· s40(2)(a) – the specification does not describe the invention fully, including the best method of performing the invention;
· s40(3) – the claims are not fairly based on matter described in the specification and that the claims are not clear and succinct; and
· s33 – the Applicant is not entitled to grant of a patent.
16. In their written submissions the Opponent refers generally to the grounds raised in the SGP at [4]. However only grounds under s18(1)(b)(i), s18(1)(b)(ii), s40(2)(a) and s40(3) have been specifically pursued in the Opponent’s written submissions, and as such I have confined myself to those grounds in this decision.
Documents not in Evidence and Regulation 5.23
17. It is pertinent to note before I continue that two documents that the Opponent wishes to rely upon are not actually in evidence. These documents are US 4602405 (D1) and EP 1547932 (D5). As observed by the Applicant at the hearing and at page 4 of their written submissions, the Opponent cannot rely on these documents in line with the decision in Coal Corporation of Victoria v David William Hinkley and Brian Alan Nugent [1993] APO 56. This situation has apparently spurred the Opponent to supply the declaration and certain documents with respect to Regulation 5.23, including D1 and D5, as noted earlier.
18. Regulation 5.23 was introduced as part of the so called Raising the Bar reforms, and allows the Commissioner the discretion to consider certain documents that are before her in determining an opposition. It is repeated below:
“(1) For the purposes of deciding an opposition, the Commissioner may consult a document that:
(a) is relevant to the opposition; and
(b) has not been filed under this Chapter; and
(c) is available in the Patent Office.
(2) If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
(a) notice of the Commissioner’s intention to do so; and
(b) a copy of, or access to, the document; and
(c) an opportunity to give evidence or make representations about the document.”
19. The operation of regulation 5.23 with respect to whether the Commissioner should rely upon a document has been considered in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 (“Merial”) at [25], where such documents were considered in the context of new information:
“In other words, the new information needs to be significantly better than what is already in evidence. Where the new information is a new citation, it should be considered whether it is likely that the ground of lack of novelty or lack of inventive step in the light of the citation would be made out, and whether the ground would not otherwise have been made out.”
20. At the hearing I noted that I did not, at that time, intend to resolve the matter of whether D1 and/or D5 would be considered under Regulation 5.23. For the purposes of this decision I will consider both D1 and D5 in relation to the grounds of novelty and inventive step, along with the other documents that are in evidence. Once this analysis is complete my decision under Regulation 5.23 will become apparent.
Onus of Proof
21. As examination commenced prior to 15 April 2013, the changes brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the opposed application. As such the previous burden of proof applies to this opposition, namely that the opponent will only succeed if they can convince the Commissioner that it is clear or practically certain that the patent is invalid; see F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17].
The Skilled Addressee
22. The skilled addressee is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to have the CGK in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
23. Given the nature of the opposed application, I consider that the skilled addressee is a person or a team of persons engaged in developing, manufacturing and/or using security elements for the purposes of securing containers or envelopes comprising valuables.
24. I observe that the Applicant has suggested that there are some deficiencies in Mr Milicia’s ability to represent the skilled addressee. These are said to be the dearth of available patents or designs that list Mr Milicia as inventor or designer (see Chrysiliou at [3] to [6]), and an alleged lack of detail about Mr Milicia’s experience in the art at the priority date (the Applicant’s written submissions at pages 5 to 6).
25. I note that at the hearing Ms Chrysiliou conceded that the small numbers of patents/designs attributed to Mr Milicia is not necessarily indicative of an inability to provide evidence as to what a skilled addressee would do. In addition it is apparent from Milicia#1 at [2] that Mr Milicia has been working in the field for some 19 years, and that even if we assume this 19 years includes the present date, this still indicates that Mr Milicia has some 9 years working in the art before the priority date. I therefore consider that Mr Milicia is in a position to provide evidence as to what a skilled addressee would do before the priority date.
26. Similarly it is apparent from the evidence that Mr Schaede and Mr Partridge are clearly in a position to provide evidence as to what a skilled addressee would do before the priority date; see Schaede at [3] to [7] and Partridge at [3] to [5]. It will be up to me to appropriately weigh the evidence of each of the above mentioned parties when and if a conflict between their evidence arises and in the event it becomes necessary to resolve such a conflict for the purposes of this decision.
27. Despite being General Manager of the Opponent (see Coco at [1]), there is no evidence establishing that Mr Coco has any skills or experience in the art before the priority date. To that extent I do not consider that Mr Coco is in a position to represent the skilled addressee before the priority date.
Clarity
28. The statutory basis for clarity is given at s40(3) of the 1990 Act which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) (“Austal Ships”):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use...The consideration is whether, on any reasonable view, the claim has meaning...In determining this, the expressions in question must be understood in a practical, commonsense manner… Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection...”
29. In particular one can consider that the claims provide a workable standard if a third party could, without difficulty, determine whether an act falls within the scope of the claim; see Monsanto Company v Commissioner of Patents (1974) 48 ALJR 59 (“Monsanto”) at 60-61:
“There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim…For these reasons I do not regard the use of the adjective “substantial” as giving rise to any uncertainty.”
The Opponent’s Clarity Arguments
30. In their written submissions the Opponent asserts that claim 1 is unclear. The Opponent’s arguments are based on alleged ambiguity in the phrases “lateral movement” and “lateral withdrawal” with respect to the frangible seal in claim 1. In particular the Opponent argues at [14] and [15] of their submissions that:
“(W)without any further clarification or bounds on what the term 'lateral' is 'lateral' with respect to, it has many different possible meanings. For example, it could be lateral with respect to the container, with respect to one part of the security device (e.g. the upper part or even just the receiving member), or to multiple parts of the security device (e.g. the device as a whole).
Even once a relevant integer with respect to which the relative 'lateral' movement and withdrawal relate to is identified, there are then still many different possible meanings as it is not clear which portion of that integer the lateral movement and withdrawal is lateral with respect to. For example, it could be lateral movement and withdrawal with respect to a specific side, the top, the bottom, or indeed any other portion of the relevant integer.”
31. The Applicant for their part counters at page 7 of their written submissions:
“It is clear that the context confines the term, ‘lateral,’ to a particular environment in which the orientation of the security device is set out. From that context, the meaning of ‘a receiving member for receiving a frangible seal in a lateral movement, the receiving member disposed within the chamber and attached to the upper part,’ is clear. The receiving member receives the seal from the side, the upper part of the device being uppermost and the lower part being beneath the upper part. The movement of the seal laterally is perfectly clear.
Similarly, the withdrawal of the frangible seal is from the side with the upper part being uppermost and the lower part being beneath the upper part. The lateral withdrawal of the frangible seal is perfectly clear (italics in original)”.
32. Unsurprisingly the arguments put forward by the Opponent and the Applicant closely follows the evidence supplied by the respective parties. This is exemplified by Milicia#1 at [8] and Partridge at [13].
33. Both parties also had recourse to dictionary meanings of the word “lateral” as demonstrated by ARM-4 and KP-1. These dictionary definitions are for all practical purposes identical and it is apparent that there is no dispute over the plain meaning of the term “lateral” as such. I repeat the Macquarie Dictionary definition of lateral below, noting that it has been used in the adjective sense in the claims:
“adjective 1. of or relating to the side; situated at, proceeding from, or directed to a side: a lateral view.” (Macquarie Dictionary Online, 2016, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, (“Macquarie Dictionary Online”)
34. The essence of the Opponent’s arguments can be summed up as asking the question “lateral with respect to what?”, since in the Opponent’s view there are a wide variety of entities that could provide the requisite frame of reference. However I do not agree with the Opponent that the terms “lateral movement” and “lateral withdrawal” are unclear. The context of lateral in claim 1 is important and I have reproduced this part of claim 1 below:
“…a receiving member for receiving a frangible seal in a lateral movement, the receiving member disposed within the chamber and attached to the upper part, the frangible seal configured to break upon the lateral withdrawal of the frangible seal from the receiving member…”
35. On reading the above passage it is abundantly clear that the receiving member receives the frangible seal in a lateral movement and that the frangible seal is configured to break on the lateral withdrawal of the frangible seal from the receiving member. It is thus apparent from the language of the claim that the receiving member is central to the movement and withdrawal of the frangible seal, as opposed to any other particular entity. Consequently I consider the “lateral movement” and “lateral withdrawal” is with respect to the receiving member. To my mind it is rather abstract given the claim language to consider that other items of the security device could provide a frame of reference for lateral as suggested by the Opponent, and is contrary to the principles laid down in Austal Ships.
36. I also do not agree with the Opponent’s assertion that it is not clear what portion of the integer, in this case the receiving member, provides the frame of reference for “lateral movement” and “lateral withdrawal” and that this leads to difficulties in determining the ambit of the claims. I first note that the Macquarie Dictionary Online comprises a series of definitions for “receiving”, with number 8, “to hold or contain”, being the most pertinent to the present situation. This implies that the frangible seal is somehow placed within or onto the receiving member. The receiving member will unquestionably have a side or sides. In placing the frangible seal into or onto the receiving member or in withdrawing it from the same it will be abundantly clear to the skilled addressee which of the side or sides provide a “lateral” frame of reference for the movement or withdrawal concerned. The fact that this may be more than one side is irrelevant. All that is necessary is for the skilled addressee to be able to discern, without difficulty, whether or not an act would fall within the scope of the claim, as outlined in Monsanto. It should be apparent that I do not consider that the skilled addressee will suffer any such difficulties.
Clarity – Conclusion
37. I consider claim 1 and thus all the claims to be clear. The Opponent has failed to make out this ground of opposition.
Novelty
38. The test for determining novelty is often expressed in the form of the reverse infringement test as given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; 13 ALR 605 at page 611 (“Meyers Taylor”):
“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.”
39. In determining whether a disclosure comprises an infringement, it is convenient to consider the principles laid down in General Tire & Rubber Company v The FirestoneTyre and Rubber Company Limited [1972] RPC 457 at pages 485-486) (“General Tyre & Rubber”) as to what a skilled addressee would do based on the disclosure in question:
“…if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated ... To anticipate the patentee’s claim the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee's invention will not suffice.”
Consideration of Novelty in view of the Prior Art
40. In their written submissions at [31] to [33.9] the Opponent alleges that claim 1 lacks novelty in view of D1 and US 6533335 (D2). Although not relied upon for the purposes of novelty I will also consider here D5 for completeness with respect to my considerations under Regulation 5.23. Each of these documents is considered below. For matters of convenience I will initially confine myself to considering claim 1, and will only revisit other claims when and if this becomes necessary.
D1
41. D1 relates to a security seal for a sealable slide fastener for sealing containers, like bags or envelopes, such that the container cannot be accessed without first breaking a frangible seal. The disclosure of D1 is best illustrated with reference to figures 1 to 5, which are reproduced below.
42. As illustrated in figures 1 to 5, D1 comprises a slide fastener having two rows of teeth 11, 12 that can be opened or closed via a slider 13. The security seal of D1 comprises a base 18 and plate 19 which are placed on opposite sides of the container 10 and are fastened together by integral parts 24 such that the container is sandwiched between the base and plate. The base and plate together form a chamber 25, 27. As is evident from the figures, the security device is aligned with the teeth such that the slider can be housed inside the chamber when the container is closed by the slide fastener. A puller 20 is attached to the slider via hook 13A and has an extension 32 comprising holes 38, 39. The holes 38, 39 are complementary to holes 36, 37 in the base and holes 43, 44 in the plate. With the puller located in the chamber the extension is placed between locating blocks 30 such that it sits flat against the base. In this arrangement the pins 41, 42 of a frangible seal 21 can be inserted into the holes 38, 39, 36, 37, 43, 44 as per figures 2 and 5 so as to effectively lock the extension, and thus the slider, in place. The container cannot be accessed using the slider without breaking the pins of the frangible seal, which would clearly bear witness to unauthorised access or attempts at tampering.
43. The Opponent alleges that D1 deprives claim 1 of novelty at [31] to [32.9] of their written submissions. However on reviewing D1 it is apparent that it does not disclose the following feature of claim 1:
“…the receiving member disposed within the chamber…”
44. The Opponent appears to contend at [32.7] of their written submissions that as the holes 36, 37, 43, 44 that receive the frangible seal are disposed on flanges of the container, then this is equivalent to having the receiving member disposed within the chamber. I do not agree that D1 discloses this feature as asserted by the Opponent. The chamber is defined by 25, 27 and the holes 36, 37, 43, 44 are not in any sense disposed within the chamber, as is apparent from figure 5 of D1. Consequently claim 1, and therefore all the claims, are novel in view of D1.
D2
45. D2 relates to a security device for a security container, such as a bag or envelope, comprising a slide fastener. The security device is arranged such that the container cannot be accessed without first breaking a frangible seal. I note that D2 is the document discussed in opposed application as having certain problems that are addressed by the alleged invention of the opposed application. The disclosure of D2 is best understood by reference to figures 1 to 7, which are reproduced below.
46. In the figures a container 14 includes a zipper 12, with the zipper being opened or closed by a slider 15. A housing 20, comprising a seal receptacle 36, is attached to the container by rivets 24. A closure member 22 is attached to a puller 16 of the slider via a pin 18 located in the closure member. In use the slider, with the closure member attached, is used to close the container by dragging the slider across the zipper until it is received inside a barrier 34 formed inside the housing; see figures 3 and 4 in particular. The closure member is then mounted to the housing by attaching arched claws 40 of the closure member to pivot members 32 of the housing. The closure member is then rotated on the pivot members such that it sits flush on top of the housing, as can be seen in figure 5. Finally a frangible seal 25 is pushed into the receptacle via an aperture 38 in the closure member; see figures 2, 5 and 6. The frangible seal is held in place in the receptacle by barbed hooks 28. It is apparent that in this configuration the slider is inaccessible without first breaking the frangible seal by separating the body 26 of the frangible seal from the barbed hooks, as can be seen in figure 7. Consequently any unauthorised access or tampering with the security seal of the container will be evidenced by a damaged or broken frangible seal.
47. The Opponent outlines their novelty arguments in view of D2 at [33] to [33.9] of their written submissions. However on considering D2 it is apparent that the following feature of claim 1 is not disclosed in D2:
“…the upper part including an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container…”
48. In their written submissions at [33.4], the Opponent argues that this feature is disclosed in D2:
“As per the Declaration of Anthony Robert Milicia dated 13 May 2015 (Milicia#1) at paragraph 14, D2 discloses areas of weakness where the rivets pass through the device shown. At those points, the material of the device is appreciably thinner and inherently weaker and capable of being torn…” (italics added)
49. To the contrary, the Applicant contends that such standard rivet holes (presumably including countersinking as known in the art; see Milicia#2 at [9] and Partridge at [25]) do not comprise a known area of weakness at page 9 of their written submissions:
“There is no evidence that a standard rivet hole is a known area of weakness. It is not desirable for the area around the rivets to give way.”
This submission mirrors similar statements by Mr Partridge at [23] to [25] of his declaration.
50. However any argument over whether such rivet holes comprise an area of weakness is largely irrelevant in relation to claim 1. Claim 1 does not refer to an area of weakness as such (perhaps touched upon at page 9 of the Applicant’s written submissions); rather it refers to “…an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container…” (italics added). The Macquarie Dictionary Online defines configure as:
“verb (t) (configured, configuring)
1. to design or adapt to form a desired configuration.2. a. to set (a computer) so that it can run a particular application.
b. to design (a computer system) with a particular arrangement of computer and peripherals, such as printer, monitor, disk drive, etc.
51. It is clear that definition 1 is most appropriate in the context of claim 1. Thus I take the feature of “…an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container…” to mean that the area of weakness in question has been deliberately designed or made so as to tear upon movement of said upper or said lower part relative to the container. (italics added)
52. Consequently the merits of whether a countersunk rivet hole comprises an area of weakness or not is largely irrelevant with respect to the prior art disclosing the area of weakness as defined in claim 1. The difficulty for the Opponent is that there is no explicit disclosure in D2 of an area of weakness that is configured to tear upon relative movement of any kind, let alone with respect to the precise features of claim 1.
53. In addition no evidence has been supplied that would lead to the conclusion that the missing feature is inherent in D2. To the contrary, declarants for both the Applicant and the Opponent agree that it is not desirable for the countersunk area to be configured to tear in the manner defined by the claim, as evidenced by:
Partridge at [25]:
“Further it is my experience with prior art security devices of the type under consideration that the area in which rivets pass through were not designed as an area of weakness because it was not thought desirable for the area around the rivets to give way.” (italics added)
and Milicia#2 at [13]:
“Whilst the countersunk holes have not been designed as an area of weakness, they are by default an area of weakness. Peter Schaede’s own demonstration proved that when force is applied with a screwdriver to the Tebco security device, the device comes apart at the countersunk holes. If the countersunk holes were the strongest part of the chamber, then the chamber would give way somewhere else along the chamber besides the countersunk holes. The countersunk holes are therefore by extension the weakest part of the chamber.” (italics added)
54. In view of the discussion above I conclude that D2 does not disclose the feature indicated above at [47]. Therefore claims 1, and thus all the claims, are novel in view of D2.
D5
55. D5 discloses a security element for a zippered envelope. The security device is arranged such that the zippered envelope cannot be accessed without first breaking a frangible seal. The nature of the security seal of D5 is best understood with reference to figures 1 to 4 and 6, which are reproduced below.
56. The security device of D5 comprises a lock unit 1 which is secured at the closure end of a zippered envelope (see figure 6) by a series of rivets (not shown) placed through apertures 5. The lock unit also comprises a raised wall 4, a raised enclosure/chamber 6 and a catch 12. A fastener tab 2 comprises apertures 9, 10, 11. A frangible seal 13 comprises a body 15 and a head 14, with the head having barbs 16 and a line of weakness 18. In use the fastener tab is attached to a zipper puller (not shown) of the zippered envelope, with the fastener tab then mounted onto the lock unit, with the aperture 10 corresponding in shape to the raised enclosure/chamber and the aperture 11 engaging with catch 12, as can be seen on figure 3. The frangible seal is then pushed into the raised enclosure/chamber such that the barbs prevent withdrawal of the frangible seal unless they are separated from the body by breaking the seal at the line of weakness. In this position, as can be seen on figure 4, the body of the frangible seal overlaps the fastener tab such that it cannot be removed without first breaking the frangible seal as described above. Consequently a broken frangible seal is an indicator of unauthorised entry or tampering with the zippered envelope.
57. On considering D5 it is apparent that the following feature of claim 1 is missing:
“…the upper part including an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container…”
58. Consequently claim 1, and thus all the claims, are novel in view of D5.
Novelty – Conclusion
59. The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack novelty.
Inventive Step
60. The statutory basis for inventive step is set out at s7(2) and s7(3) of the Act, and is reproduced below:
“(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious 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, 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 mentioned in subsection (2) 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.”
61. Although not expressly referred to in the 1990 Act, it has been accepted by the authorities that lack of inventive step in the 1990 Act is commensurate with the previous concept of obviousness under the 1952 Act; see Re James EarlWinner and Donna C Winner v Ammar Holdings Pty. Limited [1992] FCA 377 at [12]; (1992) 24 IPR 137 at 140. The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“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.”
62. The test outlined in Wellcome Foundation is demonstrative of the approach frequently taken to assess lack of inventive step or obviousness, being the so called problem-solution approach. In the present circumstances I find it unnecessary to adopt the problem-solution approach for reasons that will become apparent later. Consequently in assessing inventive step I will not be considering the problem to be solved.
Lack of Inventive Step in View of the Opponent’s Written Submissions
63. The Opponent’s lack of inventive step arguments are presented at [45] to [63] of their written submissions, where D1 to D5 have been cited to support the Opponent’s arguments. I have found it somewhat difficult to ascertain from these submissions whether the Opponent is expressly invoking s7(2), s7(3) or both. Nevertheless I will consider the Opponent’s inventive step arguments below in terms of s7(3) with respect to D1 to D5, and then consider s7(2), whereupon it will be apparent that nothing turns on which of s7(2) or s7(3) is invoked.
64. For matters of convenience I will put aside for the moment the question of whether each of D1 to D5 would have been ascertained, understood and regarded as relevant by the skilled addressee, and will only revisit this question for each of these documents if this proves necessary. Similarly I will also initially confine myself to discussing claim 1, and will only visit the other claims if this proves necessary.
D1
65. I note that I have identified “…the receiving member disposed within the chamber…” as the feature of claim 1 that is missing from D1. No evidence has been provided that establishes that this feature is CGK. Consequently the Opponent has failed to establish that claim 1, and thus any of the claims, lacks inventive step in view of D1 when combined with the CGK.
D2
66. I note that I have identified “…the upper part including an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container…” as a feature of claim 1 that is missing from D2. The Opponent’s written submissions at [48] to [52] appear to be an attempt to establish this feature as CGK. However these paragraphs merely assert that areas of weakness exist in prior art devices where rivets are countersunk, as attested by Milicia#2 at [9] and exemplified in D2 and D4. As I have observed previously, an area of weakness as such is not the same as “…an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container”. There is no evidence establishing that this is CGK. It follows that the Opponent has failed to establish that claim 1, and thus any of the claims, lacks inventive step in view of D2 when read with the CGK.
D3 to D5
67. These documents are not considered in any systematic detail with respect to claim 1. Nevertheless it is apparent on inspecting these documents that none of these disclose an “…upper part including an area of weakness configured to tear upon movement of said upper part or said lower part relative to the container…”. Consequently claim 1, and thus all the claims, do not lack inventive step over any one of D3 to D5 when considered in light of the CGK, for similar reasons as I have discussed with regard to D2.
Combinations of D1 to D5
68. There is no evidence indicating that the skilled addressee would combine any two or more of D1 to D5 in view of the CGK and so arrive at the invention of claim 1. It follows that any attack under this leg of s7(3) must fail.
Section 7(2)
69. From the above discussion of D1 to D5 it is apparent that the Opponent has failed to establish that two features of claim 1 are CGK. It follows that any putative attack under s7(2) must fail.
Inventive Step and The Problem to be Solved
70. For the benefit of any doubt, it should be now apparent that the dearth of evidence means that it is superfluous to consider the problem to be solved in assessing the Opponent’s lack of inventive step arguments.
Inventive Step – Conclusion
71. The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack inventive step in view of the evidence provided.
Conclusion on Regulation 5.23 with Respect to D1 and D5
72. As can be seen from the above analysis on novelty and inventive step, neither of D1 or D5 lead to establishing grounds of opposition that would not be otherwise made out without these documents. It follows that D1 and D5 fail the criteria set down in Merial and as such I will not invoke Regulation 5.23 in relation to these documents. Consequently I will not be relying on D1 or D5 in determining this opposition.
Full Description (Sufficiency)
73. Section 40(2)(a) of the Act requires that a specification describe the invention fully. The High Court in Kimberly-Clark Australia Pty. Ltd. v Arico Trading International Pty. Ltd. [2001] HCA 8 at [25] (“Kimberly-Clark”) expressed the test for full description as:
“…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?”
74. The Opponent alleges that claim 1 is not fully described at [64] to [67] of their written submissions. In particular the alleged offense against s40(2)(a) is said to stem from lack of instructions as to how to laterally insert and withdraw the frangible seal into or from the receiving member.
75. These arguments appear more pertinent to an attack on the clarity of claim 1, rather than an alleged lack of full description. It should be apparent from my discussion on clarity at [35] and [36] above that I do not consider the skilled addressee faces any difficulties in determining how to laterally insert and withdraw the frangible seal into or from the receiving member. It follows that the attack on grounds of alleged insufficiency must fail.
Full Description – Conclusion
76. The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack full description.
Fair Basis
77. The statutory grounding for fair basis is given at s40(3) of the Act, which states that the claims must be fairly based on the matter described in the description. The requirement for the claims to be fairly based has been treated by the authorities as a requirement for consistency between the invention outlined in the specification and the invention as claimed in the claims, as noted in Kimberly Clark at [15]:
“... where the issue is one under s 40(3) of ''fair-basing" of a claim, what the 1990 Act requires is a comparison between the matter described in the specification and the claim which defines the scope of the monopoly.”
78. This requirement for consistency between the invention claimed and the invention as described has been expressed in the following terms in Rehm Pty Ltd v Websters Security Systems and Others [1988] FCA 162 at [54]; 81 ALR 79 at 95 (“Rehm”):
“…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’s Fair Basis Arguments
79. These are given at [68] to [70] of the Opponent’s written submissions. In particular at [70] the Opponent states that:
“Claims to a frangible seal received in a lateral movement and "the frangible seal configured to break upon the lateral withdrawal of the frangible seal from the receiving member" travel beyond matter described in the specification. These terms were added in an amendment without being fairly based on matter disclosed in the specification as originally filled. The accepted claims therefore have a priority date of the date of amendment, 29 April 2014.”
The Opponent makes similar arguments with regard to “lateral movement” and “lateral withdrawal” of the frangible seal with respect to the priority document, 2006904773, at [69] of their written submissions.
80. It is apparent that the Opponent is in fact questioning the validity of the priority date of the claims, rather than attacking the fair basis of the claims as such. I note that this is not, per se, a ground of opposition open to an opponent under s59 of the Act, though typically an opponent would use this allegation to pursue grounds of lack of novelty and/or inventive step via the use of documents that become available due to the alleged invalid priority. The fact that the Opponent has not supplied any such documents means that nothing turns on this issue. Nonetheless I shall consider whether the priority issues raised by the Opponent lead to any questions as to the fair basing of the claims.
81. I do not consider that there is any fair basing issue with respect to the use of “lateral movement” and “lateral withdrawal” in the claims. It is apparent that these features are recited in the consistory clause at page 2, lines 15 to 18 of the opposed application. In addition drawings 1 to 5 of the opposed specification demonstrate that the frangible seal is placed into and withdrawn from the receiving member in a manner that is lateral with respect to the sides of the receiving member. Even in the absence of explicit recital of the term “lateral” in the body of the opposed specification, it is perfectly acceptable for drawings alone to provide fair basis for the features of a claim; see Leonardis v Sartas No 1 Pty Ltd and Another [1996] FCA 449; (1996) 67 FCR 126; (1996) 35 IPR 23 at 35. It follows that the claims are fairly based.
82. Although somewhat academic, it also follows from the above that I consider the Opponent’s concerns with respect to the priority date of the claims to be unfounded.
Fair Basis – Conclusion
83. The Opponent has failed to make out this ground of opposition. None of the claims were demonstrated to lack fair basis.
Conclusion
84. None of the grounds of opposition were made out. The opposition is unsuccessful. Subject to appeal, I direct that the opposed application proceed to grant.
Costs
85. Costs normally follow the event. I see no reason to do otherwise here. I award costs against the Opponent according to Schedule 8 of the Regulations.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
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