Snap-on Technologies Inc. v Beissbarth Gmbh - [2001] APO 20

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 677139 in the name of SNAP-ON TECHNOLOGIES INC.

Title: Eight Sensor Wheel Aligner

Action: Opposition under sec. 59 of the Patents Act 1990 by BEISSBARTH GMBH

Decision: Issued .
Abstract

The opposition was upheld on the grounds that the invention is not fairly based on matter described in the specification, and that the invention as claimed is not novel and does not involve an inventive step in light of the prior art. The ground that the application was not in respect of a manner of manufacture was not upheld.

The invention relates to an eight sensor wheel alignment apparatus in which there are two sensors located on each wheel, one of which co-operates with an emitter on the wheel on the same side of the vehicle and the other of which co-operates with an emitter on a wheel at the same end of the vehicle. Such devices were known. Also known (and common general knowledge) were six sensor wheel alignment apparatus which were the same as the eight sensor arrangements except that the back wheels had only one sensor per wheel. The inventive concept of the present invention is that whenever a sensor or companion pair of sensors becomes inoperative, the software performing the wheel alignment calculations switches to an algorithm which performs calculations appropriate to a six sensor arrangement (referred to as a "spoiler program" because it is usually triggered by a spoiler on the vehicle blocking the beam from the emitter to the sensor).

It was held that this did not involve an inventive step, although one form of the invention which involved storing a reference value calculated when all eight sensors were operative to enable a greater range of wheel alignment values to be calculated when just six sensors were operative was considered to have an inventive step.

Claims to forms of the invention which specify numerical values for the sensors which are not considered to be supported by the specification as a whole were considered to be not fairly based on the matter described in the specification. Certain of these claims in which the wheel alignment apparatus was defined as having "at least eight" sensors and which could be read onto prior art arrangements of twelve sensors were also held to be not novel.

Costs were awarded against the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 677139 by Snap-On Technologies Inc., and an opposition thereto by Beissbarth GmbH under section 59 of the Patents Act 1990.

BACKGROUND

The present application was filed on 31 January 1995 by FMC Corporation as application. 11482/95. It claims Convention priority from United States application number 08/190751 filed on 1 February 1994. The application underwent modified examination, and was advertised accepted on 10 April 1997 and given the six-figure number 677139. The application was subsequently assigned to the present applicant, Snap-On Technologies Inc.

A…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2001] APO 20
Decision Date: 14 May 2001

CaseChat Overview and Summary

Snap-On Technologies Inc. opposed a patent application 677139 filed by Beissbarth Gmbh. The invention relates to an eight sensor wheel alignment apparatus for a vehicle. Snap-On Technologies Inc. argued that the claims were not fairly based on the matter disclosed in the specification, that they were not novel, that they did not involve an inventive step and that they were not in respect of a manner of manufacture. The court found that the claims were not fairly based on the matter disclosed in the specification. The court also found that the invention was not novel and did not involve an inventive step. The court found that the invention was in respect of a manner of manufacture. Costs were awarded against Snap-On Technologies Inc.

Orders