Smart Hub Pty Ltd v Decathlon - [2022] APO 75

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Smart Hub Pty Ltd v Decathlon [2022] APO 75

Patent Application: 2019200673
Title:Diving mask having a built-in snorkel

Patent Applicant:                   Decathlon
Opponent:   Smart Hub Pty Ltd
Delegate:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  28 November 2022
Hearing Date:  Written submissions completed 5 July 2022

Catchwords: PATENTS – section 59 – a full face snorkelling mask – grounds of clarity, support, utility, novelty, and inventive step – grace period – section 24 – regulation 5.23 – no grounds made out – opposition unsuccessful

Representation: Counsel for the opponent: D. M. Logan KC
Patent attorney for the opponent: Wynnes Patent and Trade Mark Attorneys

Counsel for the applicant: A. D. B. Fox SC
Patent attorney for the applicant: Cotters Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2019200673
Title:Diving mask having a built-in snorkel

Patent Applicant: Decathlon
Date of Decision: 28 November 2022
DECISION
The opposition is unsuccessful. No grounds are made out.
I award costs according to schedule 8 against the opponent.
REASONS FOR DECISION
BACKGROUND

This matter relates to patent application 2019200673 in the name of Decathlon (the applicant), having an earliest claimed priority date of 5 May 2014 via a divisional status to application 2014393630 (the parent application). The patent application was examined and advertised as accepted on 27 August 2020. Following this, a notice of opposition was filed on 24 November 2020 by Smart Hub Pty Ltd (the opponent).
The request for examination was filed on 20 March 2019 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
The parties filed evidence in the matter with material also being filed outside of the normal rounds of evidence in support, answer, and reply. In their written submissions, the opponent pressed grounds of clarity, support, utility, novelty, and inventive step.
THE EVIDENCE
Evidence in support consists of the following:
·A first declaration by Dominic Spooner (Spooner #1) dated 24 May 2021 with exhibits DS-1 to DS-4
Evidence in answer consists of the following:
·A declaration by Christian Atichian (Atichian) dated 30 August 2021
·A declaration by Adam Barlow (Barlow) dated 26 August 2021 with exhibits AB-1 to AB-2
Evidence in reply consists of the following:
·A second declaration by Dominic Spooner (Spooner #2) dated 28 October 2021 with exhibits DS-5 to DS-6
·A declaration by Philipp Orth (Orth) dated 28 October 2021
With their written submissions for the hearing of the matter, the applicant submitted a further declaration as follows, suggesting it may be considered under regulation 5.23:
·A declaration by Delbert Jean-Charles (Jean-Charles) dated 15 June 2022 with exhibits A to D.
I wrote to the parties with an indication that I intended to rely on this declaration as it appeared on its face to be highly relevant to the outcome of the opposition matter, and as such, I provided an opportunity for the opponent to file evidence as required by regulation 5.23. The opponent chose not to file evidence but took the opportunity to file some additional brief submissions to which the applicant responded.
SPECIFICATION
The specification discusses an invention in the field of snorkelling masks. It points out that there are numerous disadvantages to known equipment starting with the fact that oral breathing may not be natural to some, and they might find it difficult using a snorkel that requires oral breathing. The specification also notes the tendency for goggles to fog up because a user’s nose is located in the same chamber as the eyes. These issues ultimately result in a lack of comfort. Thus, the present invention seeks to address such issues by way of a mask in which it is possible to breathe through the nose and the mouth.
After providing much discussion in the specification by way of consistory text, detail is provided with respect to a number of figures. I provide figures 1, 5 and 9 along with associated text below to depict the embodied invention.
Figure 1 gives an example of embodiment of a diving mask 10 conforming to the present invention. The diving mask 10 comprises a frame 12 of general oblong shape having an upper part 12a and a lower part 12b. In this example the frame 12 comprises an upper portion 14 forming an upper rim and a lower portion 16 forming a lower rim. The upper 14 and lower 16 portions of the frame are secured to one another to form a rim surrounding the user’s face. The diving mask 10 also comprises a faceplate 18 which is secured to the frame 12. In this example, the faceplate 18 is made in a hard, transparent plastic material. As will be understood with the help of Figure 1, the frame 12 surrounds the faceplate 18. This mask also comprises a purge valve 17 to evacuate any water which may enter inside the mask. In addition, the diving mask 10 comprises a snorkel 20 which has a lower part 20a connected to the upper part 12a of the frame. In this example, the snorkel 20 is removable. It can be unclipped from the frame 12, making the mask more compact when not in use….
…With reference to Figures 3, 4 and 5, it can be seen that the flexible skirt 40 is of general oblong shape substantially having the same dimensions as the frame 12 and faceplate 18. The flexible skirt 40 is arranged between the faceplate 18 and the frame 14. More specifically, the flexible skirt comprises a periphery 42 which has an upper part attached with the lower portion of the frame. The flexible skirt 40 further comprises a peripheral sealing lip 44 arranged to bear against the user’s face, so as to prevent water from entering between the user’s face and the faceplate. The flexible skirt 40 also comprises a partition 46 arranged to bear upon the top of the user’s nose. This partition 46 therefore delimits an upper chamber 50 for viewing, from a lower chamber 52 for breathing. As will be understood with reference to Figure 5, which illustrates the frame 12 assembled with the faceplate 18 and skirt 40, the user’s mouth and nose are positioned in the lower chamber 52, whilst the user’s eyes are positioned in the upper chamber 50. In other words, the upper chamber 50 is delimited by the faceplate, the user’s eyes, the upper wall 46a of the partition 46, and that part of the flexible skirt extending above the partition 46. The lower chamber 52 is delimited by the faceplate 18, the user’s mouth and nose, the lower part 46b of the partition 46, and by that part of the flexible skirt extending below the partition 46. In this example, the partition comprises a pair of passageways provided with check valves 54 arranged to allow circulation of inhaled air directed solely from the upper chamber 50 towards the lower chamber 52 during an inhalation phase by the user. In this example, the flexible skirt is made in silicone and forms one and the same part with the partition 46, the sealing lip 44 and the periphery 42….
…With reference to Figure 9, it can be seen that the first inner duct 90 extends between the top of the frame and a lower end 14a of the upper portion 14 of the frame. With reference to Figures 9, 10A and 10B, it is seen that the frame 12, and more specifically the lower end of the upper portion 14 of the frame 12, comprises a first lateral connector 110 which is engaged in the upper end 100b of the first coupling sleeve. To improve strength and sealing, the first lateral connector 110 is provided with ribs 112 on its outer surface 110a, the ribs 112 cooperating with the inner surface 101 of the upper end of the first coupling sleeve. Again with reference to Figure 9, it can be seen that the upper end of the first coupling sleeve lies flush with a side 12c of the frame 12. It will therefore be understood that exhaled air successively flows through the first coupling sleeve 100, through the first inner duct 90 then through the first escape channel for exhaled air 62. This outflow of air is illustrated by the arrow F2. The arrow F3 illustrates the other circuit for outflowing air which flows via the second coupling sleeve 200 and the second inner duct 92.
The claimed invention
The specification, as accepted includes 28 claims, with claims 1, 23, 25, 26, 27 and 28 being independent. Claim 1 is presented below.
.
A water-sport mask comprising:
a rigid frame;
a faceplate surrounded by the rigid frame;
a flexible skirt mounted on the rigid frame, the flexible skirt comprising a partition delimiting an upper chamber and a lower chamber, the partition being arranged to bear upon the top of a user's nose when the water-sport mask is worn by the user so that the user's mouth and nose are positioned within the lower chamber, the partition having at least one passageway arranged to allow circulation of air from the upper chamber to the lower chamber during an inhalation phase;
a conduit having an inlet channel enabling entry of ambient air and a first escape channel enabling exit of exhaust air, the conduit extending at an upper part of the rigid frame, the inlet channel being in fluid communication with the upper chamber, and the first escape channel being in fluid communication with the lower chamber, the rigid frame comprising at least one first duct, the first duct having an upper end opening into the first escape channel, and a lower end opening into the lower chamber.
THE PERSON SKILLED IN THE ART
The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [71], Finklestein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
It is clear that a skilled addressee will have a practical interest in the manufacture and use of snorkeling masks.
THE COMMON GENERAL KNOWLEDGE
In Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited(1980) 144 CLR 253 at page 292, Aickin J. stated:
"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."
As a starting point, the opponent asserts that the evidence establishes that (at least) the following features of snorkelling masks was common general knowledge (CGK) at the priority date:
·a snorkelling mask having a rigid frame (referring to Spooner #1 at [60])
·the provision of air passage within a rigid frame (referring to Spooner #1 [58])
·the provision of a mask with a lower chamber separated from an upper chamber, to avoid fogging (referring to Spooner #1 [59])
·full face masks enclosing eyes, nose and mouth (referring to Spooner #2 at [14])
Each of these first three points refers to evidence which states that a particular document discloses certain features, and that Mr Spooner believes that all of the features would have been known by an industrial designer and would have been obvious to add. However, I do not see how this evidence alone establishes the points as common general knowledge. Regarding the fourth point, Mr Spooner’s second declaration (Spooner #2 at [14]) makes the statement that full face masks were common general knowledge before the priority date. In this context I note that Mr Spooner is an industrial designer with no clear experience in the art of snorkelling or snorkel manufacture. While his evidence asserts full face masks as common general knowledge it does not purport to note any particular technical element of their construction as being common general knowledge, I simply cannot accept it as sufficient as demonstrating that the use of full face masks in the art of snorkelling was common general knowledge.
Given this, at most I can accept that the common general knowledge in the art at the priority date included ‘old-fashioned’ everyday snorkel and mask combinations, a fact that simply requires no evidence. I note the opponent also asserts that document D15 cited for novelty and inventive step is common general knowledge which I note at this point that I simply cannot accept. However, I will deal with this specifically under the ground of inventive step.
CLARITY
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399; 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Additionally, Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229) notes:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
Claim 8 – “wherein the partition forms one and the same part with the flexible skirt”
The opponent submits that dependent claim 8 is not clear. Claim 8 includes the limitation that the partition forms one and the same part with the flexible skirt. The opponent argues that claim 1 to which claim 8 appends does not include the possibility that it additionally envisages them being separately formed components.
In claim 1 the relevant feature is the ‘flexible skirt comprising a partition’. To this extent a flexible skirt is present, and part of that flexible skirt is a partition, however claim 1 clearly does not limit itself to the construction of that flexible skirt as to whether it is formed of a single part or multiple parts. Claim 8 limits claim 1 further by requiring the flexible skirt which comprises a partition to be formed of a single part. To borrow the words of the applicant, claim 8 is to the integrally forming of components and claim 1 additionally envisages the forming of the flexible skirt from separately formed components. I do not see claim 8 as unclear.
Claim 12 – “conduit intake”
Claim 12 appends to claim 1, the opponent submitting it is not clear because there is no reference to conduit intake anywhere in the specification. They add that there is reference to a snorkel intake and that it is possible the skilled reader might understand ‘conduit intake’ to refer to ‘snorkel intake’. In response the applicant refers to observations in Barlow at [26]:
“Whilst the conduit intake is not described previously in claim 1 or 12, it is clear to me from the remainder of claim 12 (“the conduit also comprising a float movable within said cage, said float being arranged such that when the conduit is submerged in the water the float is caused to move so that float closes the conduit intake.”) that the conduit intake is a newly introduced feature, and while the float feature is located at the distal end of the snorkel component, anyone skilled in the art would understand that the snorkel and conduit are in fluid communication. Therefore, I have no difficulty understanding what is intended, namely an intake in which air enters the conduit via the snorkel component.”
I agree with the applicant. The term is not specifically present in the specification, but a conduit is clearly graphically depicted as a flow passage from the tubular snorkel component which projects from the top of the mask. The intake to the conduit is closed and opened by the intake of the snorkel in the embodiment in the specification, however ultimately, I accept that the term ‘snorkel’ is simply a specific example of an element of the broader term ‘conduit’. The claim is clear in this regard.
All independent claims – “conduit”
The opponent submits that the use of the term ‘conduit’ is not clear in all of the independent claims. They note that the term only appears in the independent claims and the consistory statements in the body of the specification. They note that when describing the invention, the term ‘snorkel’ is used. In response the applicant points to the evidence of Mr Barlow and notes:
“At Barlow [18]-[19] he expresses the view that the “conduit” constitutes an air-flow channel between the lower mask chamber and the snorkel component at the top of the head. This position is supported (at Barlow [19]) by a concise summary based on Mr Barlow’s interpretation of that term. Mr Barlow concludes “the term conduit is used in this field to describe an element that enables fluid delivery from one location (e.g. lower chamber) to a second location (snorkel)” which clearly encompasses more than just the snorkel component. Barlow notes that conduit has a particular meaning in the art.
Importantly at Barlow [18] he states: “I do not agree that the conduit is the snorkel, and it is my view that a mask designer would consider a conduit in the context of a mask to include a fluid flow passage, and that this term has a broader meaning than a snorkel, which is the specific tube projecting from the top of the rigid frame.”
I see no reason to not adopt the approach of the applicant.
I do not see any lack of clarity in the claims.
SUPPORT
Having found the claims clear, I now turn to further issues raised by the opponent under section 40. Section 40(3) of the Act requires that the claim(s) must be supported by matter disclosed in the specification.
Burley J explored the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck) at [546]-[547]:

“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed”.

In this context the body of the specification must disclose the claimed invention in a way which will enable it to be performed by a person skilled in the art without undue burden, or the need for further invention.
Claim 8 – “wherein the partition forms one and the same part with the flexible skirt”
For reasons mirroring those provided under the ground of clarity, the opponent submits that claim 8 lacks support. They add that there is no passage in the specification that supports the components of the skirt being separately formed components. I acknowledge that beyond the consistory statement in the specification that is agnostic to the construction of the flexible skirt and reflective of claim 1, the specification only appears to refer explicitly to an example where the skirt and partition are formed from one and the same part.
Importantly however, there is nothing in the specification to suggest that the construction of the skirt itself, as to whether it is unitarily formed or formed of parts is in any way part of the technical contribution to the art. This choice appears merely peripheral, exemplified in the specification as a unitary construction. There is no evidence of any burden in performing the invention across its full scope in this regard.
All independent claims
The opponent submits that:
“…the passages in the specification identified in Spooner 1, [13]–[33], all relate to features of the invention described in the specification as a whole, and comprised in the technical contribution to the art disclosed by the specification. Those features are not, however, all reflected in any of the independent claims: Spooner 1, [13]-[33].
It follows that, in this case, the consistory statements do not delimit the precise ambit of the invention. The slavish coincidence of language between the independent claims and the consistory statements does not mean those claims are supported by matter disclosed in the specification.
In these circumstances, the invention as claimed in each of the independent claims 1, 23, 25, 26, 27 and 28, is broader than the invention disclosed by the body in the specification. Accordingly, those claims are not supported by matter disclosed in the specification, as required by s.40(3).”
The applicant responds by noting:
‘The Opponent’s argument appears to be based on Spooner 1 [12]-[33] where Mr Spooner was asked about a series of ‘features’ cited in the body of the Application and whether he considered those features could be found in the claims. In each case, his answer was ‘no’ (his evidence was responded to in Barlow [27]-[29]). Based on that, the Opponent then suggests that the invention as claimed in each of the independent claims “is broader than” the invention disclosed “by the body of the specification”.’
As a key observation, the opponent does not appear to be contending with the necessity to determine the technical contribution to the art as put forward by the specification, nor do they present an argument that suggests any degree of burden in performing the invention. There is no evidence provided by the opponent that would establish an inability for the person skilled in the art to perform the invention as claimed.
To the extent that the opponent may be suggesting there to be a serios inconsistency between the claims and the body of the specification wherein the claims are “broader than” the invention in the “body of the specification” I note that there is no information before me to suggest that a particular feature is missing from the claims that is clearly essential to how the described invention works and achieves its stated benefits. There are also no assertions by the opponent that certain features disclosed in the claims are not present in the specification.
Therefore, I find the claimed invention is supported.
UTILITY
Principles relating to the ground of utility were helpfully summarised recently by Burley J in Merck, at [432], [433], [436] and [449] relevantly as follows:
“Section 18(1)(c) of the Patents Act provides that an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, is useful. Until recently, the requirement that an invention so far as claimed be “useful” within s 18(1)(c) was defined solely by reference to the common law development of that concept. The words in Lane Fox v Kensington & Knightsbridge Electric Lighting Co [1892] 3 Ch 424 at 431 … of Lindley LJ (with whom Lopes LJ agreed) set the scene (emphasis added):
The utility of the alleged invention depends not on whether by following the directions in the complete specification all the results now necessary for commercial success can be obtained, but on whether by such directions the effects which the patentee professed to produce could be produced, and on the practical utility of those effects.
What the patentee “professed to produce” is to be ascertained by having regard to what is now routinely referred to as the “promise of the invention” being the promise that the specification is said to make of the invention claimed: Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 84 and 96–7; 11 IPR 289 at 292 at 305–6 (Gummow J); Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 394 (per Lockhart J). This is assessed as a matter of construction of the specification: see generally ESCO Corporation v Ronneby Road Pty Ltd (2018) 358 ALR 431…[2018] FCAFC 46 at [182]–[239]…
In each case it is necessary to consider the nature of the promise of the invention by reference to the specification and also whether that promise is met by that which is the subject of the claims. Often that enquiry gives rise to a question of claim construction: if a broad claim includes something that does not meet the promise of the invention, will it be invalid for want of utility? …
There is no dispute that a promise may be implied from language used in the specification.”
It is crucial therefore, to first determine the promise of the invention, and then determine whether the claimed invention achieves that promise.
The opponent argues that in the specification, the word ‘advantageously’ is frequently used in addition to the words ‘preferably’, and that in the circumstances where the former is used and associated features are not claimed, then the claimed invention does not achieve all of the specification’s promises.
I refer back to my discussion of the specification earlier which discussed the drawbacks of well-known snorkel/mask combinations where a mask covers the eyes and nose, and a separate snorkel is used to breath via the mouth. The specification at this point also discussed prior art document FR 2720050 which discloses a mask with which it is possible to breathe through the nose and the mouth, this mask experiencing drawbacks for airflow during overtightening. The specification then notes that it seeks to overcome or at least ameliorate these discussed disadvantages or provide a useful alternative.
I have no doubt that the mere use of the term advantageous does not indicate that the specification is promising a particular result in the presence of that word, instead simply indicating the feature confers a benefit. The promise of the presently described invention appears to me to simply be to provide a useful alternative mask and snorkel apparatus that enables nose and mouth breathing via full face operation. No evidence is provided by the opponent that provides basis to consider any of the claims as failing to achieve this promise. I therefore find the claimed invention useful.
NOVELTY
For the purposes of subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information. Subsection 7(1) also states that two or more documents can be read as a single piece of prior art information if the relationship between those documents is such that a person skilled in the art would treat them as a single source. Furthermore, prior art information includes a “prior use” constituting information made publicly available before the priority date through the doing of an act.
It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; 137 CLR 228 at [235]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case:
“A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
Certain prior art is excluded from the consideration of novelty and inventive step by way of section 24 of the Act which provides:
Validity not affected by making information available in certain circumstances
(1) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:
(a) any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b) any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;
but only if a complete application for the invention is made within the prescribed period.
The prescribed circumstances are regulations 2.2C and 2.3 respectively:
Information made publicly available--other circumstances
(1)This regulation sets out:
(a) for paragraph 24(1)(a) of the Act--a circumstance in relation to information made publicly available by, or with the consent of, the nominated person, patentee or predecessor in title of the nominated person or patentee; and
(b) for subsection 24(1) of the Act--a period for making a complete application for an invention if the circumstance applies.
Circumstance
(2) The circumstance is that the information has been made publicly available in circumstances other than the circumstances described in regulations 2.2, 2.2A and 2.2B.
Period
(3) The period for making a complete application for the invention is 12 months from the day the information was made publicly available.
Divisional applications--period
(1) For subsection 24(1) of the Act, this regulation applies to an invention if:
(a) the specification containing the claim in which the invention is defined was filed for a divisional application under section 79B or 79C of the Act; and
(b) the claim is entitled under regulation 3.13D or 3.13E to the priority date that it would have if the claim was in the specification filed with a previous application (the original application ); and
(c) a circumstance mentioned in regulations 2.2 to 2.2D applies; and
(d) the original application was filed in the period prescribed in the circumstance under regulations 2.2 to 2.2D.
(2) The prescribed period for making the divisional application is:
(a) if the divisional application was filed in the period mentioned in paragraph (1)(d)--that period; or
(b) otherwise--the period ending on the day the divisional application was made.
It is not in dispute, that the relevant date for the purposes of the present application is 5 May 2014, being the filing (and priority) date of the parent application.
Three documents are pressed by the opponent as depriving the claimed invention of novelty. They are:
D1: European design registration 002340224-001 published 20 December 2013
D2: YouTube video entitled ‘Masque Facial “Easybreath” – Full face snorkeling maks “Easybreath”’( published 20 December 2013
D15: FR 2720050 A1 published 24 November 1995
D1
The applicant argues that document D1 should be excluded as prior art because it was made publicly available by or with the consent of the applicant within 12 months before the relevant date. There is no substantive discussion from the applicant of disclosure of this document in terms of features of the claim, suffice to say that the applicant accepts that the document shows a product the detail of which is depicted in the specification. The key question for me to determine is whether D1 was made public with consent of the applicant as there is no dispute regarding the relevant dates.
The opponent points to document D1 and notes under the designated ‘Owner’ that the ‘Applicant legal entity’ is denoted to be ‘Legal Entity’. They note changes in name and address of owners on the document that were recorded on 5 May 2014 and 27 October 2014. It is true that the document contains no reference of the name of the owner as such, and there is clearly no mention of Decathlon (the applicant) in the document. In answer to this documentary evidence the applicant’s evidence of patent attorney Christian Atichian asserts in declaratory form (Atichian at [7] and [8]):
“On 17 May 2021, I advised the opponent’s attorney, Wynnes, that D1 and D2 are the patent applicant’s own publications and are not prior art in respect of AU 2019200673.
As such, it is not clear to me why D1 and D2 are still being relied on in opponent’s Evidence in Support dated 24 May 2021.”
The statement of Mr Atichian is clearly an unsubstantiated assertion, but it is nonetheless evidence that favours a necessity to disregard the citation for novelty and inventive step purposes. Importantly however, the opponent points out the need for me to be satisfied on balance, that the publication of D1 was made with the consent of Decathlon.
To address this issue, the applicant filed additional evidence in declaratory form by Delbert Jean-Charles. In his declaration Mr Jean-Charles makes the following observations as to the document D1, the applicant/owner of the registered design, and the address of record (Jean-Charles at [4]-[7]):
“Dl (002340224-0001) is a Registered European Community Design.
Dl was filed by DECATHLON on 6 November 2013, and the applicant identified at lodgement of the application was:
DECATHLON
4, boulevard de Mons
F-59650 Villeneuve d'Ascq, France.
A minor amendment was made 2 May 2014 to:
DECATHLON_Service juridique
4 boulevard de Mons
F-59650 Villeneuve d'Ascq, France.
The text "Service juridique", meaning "legal department" was not intended to be included in the applicant name field, as it is not part of DECATHLON's legal name. Accordingly, on 27 October 2014, an amendment was made to move the "Service juridique" text to the address field, as well as PI (abbreviation of Propriete Industrielle, i.e. intellectual property) such that the updated name and address of record is:
DECATHLON
Service Juridique PI 4, boulevard de Mons
F-59650 Villeneuve d'Ascq France”
Mr Jean-Charles provides a certified copy of the design application as originally filed in the name of Decathlon and a certified copy of the certificate of registration reflecting the changes noted above (Jean-Charles at [8] and [10]). He notes that as IP Legal Manager of Decathlon, Decathlon remains the legal applicant and owner of the European design registration and it is his understanding that this has been visible at all times on the EUIPO database (Jean-Charles at [1] and [9]). In their submissions the applicant points out that document D1 is not an extract from the EUIPO database but instead an extract from a different global database of design registrations.
I find this evidence convincing. The situation before me reflects that in in Rozenberg v Velin-Pharma A/S [2017] APO 61; 133 IPR 263, where the Delegate was able to consider there to be a prior patent publication made with consent of the applicant by inference (at [180]):
“… I will infer that there is an implied consent of the nominated person or patentee for publishing D13 when the application for D13 was filed in the name of Velin-Pharma A/S.”
I am convinced that I can infer there to be an implied consent by Decathlon for publication of the relevant design application by way of its filing. Decathlon is clearly the applicant of the relevant design application. Document D1 is therefore not prior art for the purposes of both novelty and inventive step.
D2
The applicant also argues that document D2 should be excluded as prior art for reasons analogous to document D1. Again, there is no substantive discussion from the applicant of disclosure of this document in terms of features of the claim wherein applicant accepts that the document shows a product the detail of which is depicted in the specification. I must again determine if D2 was made public with consent of the applicant as there is no dispute regarding the relevant dates.
Document D2 is a video that was placed on YouTube. I have viewed the video and confirm that video contains many references to branding of a company called Tribord, with mention that the device is “On sale at Decathlon Spring 2014”. The opponent contends that the material in the video supports the factual conclusion that it is Tribord who design and manufacture the face mask with it merely being retailed through Decathlon at the time. They argue that the evidence of Mr Atichian is entirely hearsay, being insufficient to substantiate the conclusion that the publication on YouTube was made with Decathlon’s consent.
In response the applicant’s evidence is expanded upon again by the declaration of Mr Jean-Charles. Mr Jean-Charles discusses the relationship between Tribord and Decathlon as follows (Jean-Charles at [11]-[18]):
“I confirm that D2 was uploaded to YouTube by DECATHLON.
In particular, Tribord is a department and brand of DECATHLON and not a separate legal
entity. SAVARY Baptiste of the TRIBORD department of DECATHLON uploaded the YouTube video in December 2013.
DECATHLON'S ownership of TRIBORD is made clear by the fact that beneath the video is a circular logo that says "TRIBORD by DECATHLON".
Clicking on that circular logo that says "TRIBORD by DECATHLON" takes you to TRIBORD's YouTube channel, and by clicking on the "ABOUT" text, the following information is presented:
Description:
Welcome to Tribord's official Youtube channel, Decathlon sailing brand
Bienvenue sur la chaine officielle de Tribord, la marque des sports de voile du groupe
Decathlon (voile legere, voile habitable : croisiere et regate)
The French text "la marque des sports de voile du groupe Decathlon" translates as "the brand of sailing sports by the Decathlon group".
The Information available in the YouTube link confirms that TRIBORD is a brand of DECATHLON. This information has been publicly available since D2 was published on YouTube in December 2013.
Exhibit D is a database extract from EUIPO made on 20 May 2022 and showing three trade marks filed in respect of the mark TRIBORD by DECATHLON since 2003. DECATHLON is the applicant and owner of each of those trade marks, and has been the applicant and owner continuously from the filing dates until present.
I confirm that the TRIBORD brand has been commercially used in respect of sailing and aquatic products by DECATHLON since at least as early as 2003 until present.”

With this information, I see no other conclusion than clear consent by Decathlon for publication of the YouTube video. The opponent asserts that it is unclear how Decathlon is situated within the Decathlon group and that the specifics of employment of Baptise Savary is unclear with respect to Decathlon. In response, the applicant points out consistently with the evidence above that the Decathlon group of legal entities are departments of the legal entity Decathlon and in the present circumstances this is the most reasonable position for me to take. Decathlon is the applicant of the present application, and the evidence shows purposeful intention to publish information under the general control of Decathlon for apparent marketing purposes. On balance I am satisfied of consent of Decathlon.
Document D2 is not prior art for both novelty and inventive step purposes.
D15
This document is clearly prior art for both novelty and inventive step purposes. It was published many years before the present application. Figures of document D15 are provided below. Document D15 discloses a full face snorkelling mask having a plastic transparent “visor” of generally semi-spherical shape. It has an internal partition made of flexible silicon with two valves that enable air to travel from an upper part of the mask associated with the eyes to a lower part which provides air to the nose and mouth. Air enters the upper part of the mask via channel ‘A’ in the snorkel component. Air exhaled in the lower part of the mask is directed into a silicon seal via small holes, wherein the silicon seal surrounds the mask and fixes to the visor. The air which enters the silicon seal travels back to the top of the mask and can exit via channel B in the snorkel component. The silicon seal has two tubes, one for suction of the mask to the face of the user, and the other for expiration of air from the mask. A honeycomb structure opposing the mouth allows for the user to communicate sounds while underwater.
Document D15 is quite similar to the described invention in describing a full face snorkelling mask that is partitioned to enable nose and mouth breathing, with air flowing into an upper chamber, across the partition into a lower chamber. A conduit takes air from the lower chamber back to the snorkel component for exhaust of air. I note each of the independent claims are limited to inclusion of the features of a rigid frame and a faceplate surrounded by the rigid frame. It is these features that the applicant focusses argument upon as not being disclosed in document D15.
As to this point, the opponent submits that the opposed specification does not disclose that the rigid frame cannot be integrally formed with the face plate, and that there is nothing in the specification that requires the frame and faceplate to be two separate parts. They essentially submit that the faceplate of D15 includes a rigid frame upon which the flexible skirt (silicon seal) is mounted.
In response the applicant argues that D15 does not include any kind of frame, and that it is the faceplate or ‘visor’ that provides structural aspect to D15. They point to FIG. 2 which shows the visor 6 and a compressible perimeter sealing gasket 15 which has an internal airflow channel in which air enters via holes 14. They submit that even if the faceplate in D15 were taken to be a rigid frame, it would not constitute a ‘faceplate surrounded by a rigid frame’ as required by the independent claims.
I cannot agree with the opponent that there is a rigid frame described in D15 such that the rigid frame surrounds the faceplate and a flexible skirt is mounted to the rigid frame. On plain reading of the independent claims, there is a component that is distinct from the faceplate to which the flexible skirt mounts. No intermediate component is present in D15. The flexible skirt of D15 mounts directly to the faceplate. On ordinary meaning a frame is something akin to a border or case, there is no such border or case surrounding the faceplate in D15.
The claimed invention is novel in light of document D15.
INVENTIVE STEP
The test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“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.”
The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53];; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which 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 a useful [desired result]?”
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
The Problem
As discussed above in this decision, the specification discusses a number of limitations in prior art snorkel mask devices that the present invention seeks to solve. As pointed out by the opponent in their submissions these include:
·     Some people have difficulty breathing orally through a snorkel
·     It is not possible to talk under water when wearing a snorkel
·     The onset of fogging due to the fact that the user’s nose opens into the viewing chamber located between the face plate and the user’s eyes;
·     A drawback of prior art D15 is that if the straps are over tightened by the user airflow in the exhaust passage of the silicon seal will be restricted, and if under tightened water may enter the lower or upper chambers.
The specification then discusses that the invention seeks to overcome or ameliorate one or more of the disadvantages above or to provide a useful alternative. I need not specify the problem posed by the specification any more specifically than that above as seeking to address at least one of these noted issues.
Prior Art Base
The prevailing attack in the light of my findings regarding documents D1 and D2 by the opponent as to a lack of inventive step is based on common general knowledge, document D15 plus common general knowledge, and document D6 (being US 20130074835 published 28 March 2013) plus common general knowledge/D15.
Was the invention obvious in light of common general knowledge alone?
The opponent argues that the invention is obvious in view of common general knowledge alone. As I noted above, they assert the common general knowledge to include:
·a snorkelling mask having a rigid frame (referring to Spooner #1 at [60])
·the provision of air passage within a rigid frame (referring to Spooner #1 [58])
·the provision of a mask with a lower chamber separated from an upper chamber, to avoid fogging (referring to Spooner #1 [59])
·full face masks enclosing eyes, nose and mouth (referring to Spooner #2 at [14])
I noted that I could not see the evidence of Spooner #1 as establishing the points as common general knowledge. Regarding the fourth point, I noted that while Mr Spooner’s evidence asserts full face masks as common general knowledge and does not purport to note any particular technical element of their construction as being common general knowledge, I simply cannot accept it as sufficient as demonstrating that the use of full face masks in the art of snorkelling was common general knowledge. The opponent also asserts that document D15 is common general knowledge.
Turning to D15 the opponent submits that acknowledgement of prior art in a patent specification is an admission which can carry great weight. They add that in not providing evidence to contradict the assertion of common general knowledge for a document that is some 18 years prior the present application, it must be taken as such. In response, the applicant notes that Mr Spooner’s evidence does not address why D15 is common general knowledge aside from simply stating in Spooner #2 at [14] that its publication was on 24 November 1995. They do not accept full face masks to be common general knowledge in the relevant art (snorkel masks) before the priority date because, amongst other things:
·     “The mere fact of publication does not provide any basis to conclude that a document formed part of the common general knowledge.”
·     “..it is also not without significance that there is no evidence of any commercial success of a mask embodying the design disclosed in D15.”
·     The applicant’s evidence from Mr Barlow points to only the following as being a concession of potential common general knowledge: “I consider a designer working on snorkel masks would have an understanding of conventional two piece snorkels, consisting of a mask and separate snorkel tube”.
·     The specification does not admit to the document forming common general knowledge.
I agree with the applicant. There is simply no evidence to establish D15 as common general knowledge. The onus lies on the opponent to do so.
Given this, as above at most I can accept that the common general knowledge in the art at the priority date included ‘old-fashioned’ everyday snorkel and mask combinations, a fact that simply requires no evidence, but in any event appears supported by the evidence of Mr Barlow. It is true that such devices generally have rigid frames around a mask, again this being a plain fact that simply requires no evidence in my reckoning. With this basic knowledge of snorkelling mask devices as a starting point I must determine whether the skilled addressee would have been directly led to the claimed solution.
I consider it plain that a person skilled in the art cannot be directly led from the demonstrated common general knowledge to the claimed invention. There is simply no contemplation of a full face snorkelling mask having upper and lower chambers as claimed, along with a rigid frame surrounding the faceplate, a flexible skirt being mounted on the rigid frame. The claimed invention is inventive in view of common general knowledge alone.
Was the invention obvious in light of common general knowledge and D15?
The opponent argues that the evidence provided supports the conclusion that in view of the common general knowledge outlined, considered with document D15 as relevant prior art information, claim 1 would lack an inventive step as the only difference between D15 and the claimed invention is a rigid frame including air ducts. In this regard, the best evidence provided by the opponent are general statements by Mr Spooner that he believes the relevant features would have been known by an industrial designer and that he believes they would be obvious to add to various prior art devices if they are absent.
It is clear that document D15 does not disclose a rigid frame, the rigid frame comprising a first air duct with an upper end opening into an escape channel and a lower end opening into a lower chamber. The evidence does not establish that such a feature is common general knowledge, and it does not approach the question of inventive step from a point of view that would demonstrate a direct leading to the claimed invention from document D15 without prior knowledge of the claimed invention.
The remaining independent claims include a variety of features that are not demonstrated as obvious for reasons analogous to those above. The opponent does not make any specific arguments with respect to those claims.
It follows I cannot conclude the invention to be obvious in view of common general knowledge and D15.
Was the invention obvious in light of common general knowledge and D6?
Document D6 discloses a snorkel mask device with a face mask which has a transparent window portion covering the eyes of the user, and a mouthpiece. An air passage extends from the mouthpiece to a point above the user’s head. The air passage can be formed in a hollow part of the frame surrounding the transparent window (see Figs 1 and 2).
There is no disclosure in document D6 of a full face mask as required by the claims, wherein there is a rigid frame surrounding a faceplate, there being two chambers defined and a duct operating as required by claim 1. The common general knowledge is clearly insufficient to provide additional teaching that would directly lead to the claimed invention. The invention defined by claim 1 is inventive in light of document D6 and common general knowledge. The remaining independent claims are inventive for reasons analogous to those discussed above.
Was the invention obvious in light of D15 and D6?
The opponent has also pointed to the combination of D15 and D6 as rendering the claims as obvious. As already demonstrated, D15 relates to a full face mask without a frame while D6 is more of a classical (yet modified) arrangement where the nose is located in a separate air compartment to the mouth and air is breathed via a channel in a frame. Fundamentally I see no clear motivation to combine these documents in order to arrive at the claimed invention as they relate to completely different working arrangements for delivering and expelling air using a snorkel/mask device.
CONCLUSION
I conclude that the opposition is unsuccessful. The opponent has not established the claims as obvious, lacking novelty, lacking utility, or being unclear or unsupported.
COSTS
The applicant has successfully defended the application. It is normal in such matters before the Commissioner for costs to follow the event. I note that the applicant has filed further evidence that I have considered relevant under regulation 5.23 in arriving at this decision. However, from an early stage the applicant has forewarned the opponent as to the nature of publications D1 and D2 which do appear to clearly be publications made with the applicant’s consent. Furthermore, it is not clear to me that document D1 or D2 would have provided a clear and unmistakable disclosure of all of the features defined in an independent claim. As such I see insufficient reason to depart from the normal approach, and I award costs against the opponent.
Dr N. R. Madsen
Deputy Commissioner of Patents