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 notice of opposition to application 677139 was filed on 10 July 1997 by Beissbarth GmbH.  The serving of evidence was a rather drawn-out affair, with the numerous extensions of time exacerbated by

·     a request under section 104 by the applicant to amend its complete specification, the request being filed with the evidence in answer and being subsequently withdrawn

·     an objection to an extension of time to serve evidence in reply which required a hearing and decision by a delegate of the Commissioner

·     a request by the opponent to serve its evidence in reply as further evidence under reg 5.10(4) (in consequence of a request from the applicant that the Commissioner issue a direction that the evidence in reply is inadmissible because it is not properly in reply), leading to a decision allowing the request and the applicant being afforded an opportunity to file evidence in response to the further evidence.

All evidentiary stages including filing of the evidence in response to the further evidence were completed by 12 October 2000. The matter was heard on 21 February 2001 in Melbourne.  The applicant was represented by Mr Glenn McGowan of counsel, assisted by Messrs J Roger Green and Ata Maqbool, patent attorney and technical assistant, respectively, of the firm Freehills Carter Smith Beadle, Melbourne, and the opponent was represented by Mr Bruce Caine of counsel, assisted by Mr Stephen Krouzecky, patent attorney of the firm Wray & Associates, Perth.

GROUNDS OF OPPOSITION

The statement of grounds and particulars effectively states four grounds of opposition: non-compliance with paragraph 18(1)(a) (manner of manufacture), subparagraph 18(1)(b)(i) (novelty), subparagraph 18(1)(b)(ii) (inventive step) and section 40 of the Patents Act.
The principal items of prior art mentioned in the particulars are the opponent's own wheel alignment systems with the brand names Microline 4000 and Microline 4600-8, which are alleged to have been first imported into Australia in 1991 (although the latter was not to figure in the evidence), and an updated operating manual for these wheel alignment systems entitled BMW Kinematic Diagnose System, which is alleged to have been published in November 1993.  Other prior art referred to in the particulars are US Patents 4383370, 4341021 and 5220399.  The first and last these Patents is admitted prior art of the present specification.  The subject matter of US 4341021 is stated in the opponent's evidence to be the basic concept upon which a wheel alignment system known as the Microline 3000, a predecessor of the Microline 4000, is based.

THE SPECIFICATION

The invention relates a vehicle wheel alignment apparatus which comprises eight emitters and eight sensors forming eight sensor emitter-pairs for measuring the toe angles of the wheels of a four-wheeled vehicle.  There are two emitters and two sensors positioned on each wheel, housed in what is referred to in the specification as a "head".  One of the emitters and one of the sensors on each wheel are operatively associated with a sensor and emitter, respectively, on another wheel located on the same side of the vehicle, while the other sensor and emitter on the wheel are operatively associated with a sensor and emitter, respectively, on another wheel located at the same end (that is, front end or rear end) of the vehicle.  Heads, emitters and sensors which are located at the same side or the same end of a vehicle are referred to in the specification as "companion heads", "companion emitters" and "companion sensors", respectively.

Apparatus with these features are stated by the specification to be known in the art.  Two problems with the prior art arrangements are identified by the specification:

·     if a toe angle sensor becomes inoperative, for example by the light beam between operatively associated emitters and sensors being inadvertently blocked, the measurement system is interrupted and the toe angle information will either not be displayed or, if it is, it will not be current

·     the wheel alignment apparatus may get out of calibration and this may not be detected by the operator, in which case incorrect alignments will result.

As I understand the specification, the inventive concept of the present invention involves the recognition that there is a degree of redundancy in the measurements obtained from the eight sensors in terms of the calculations required in order to ascertain the full set of toe angle values.  The invention seeks to utilize this redundancy to obtain the full set of toe angle values even when one sensor or two companion sensors are inoperative.  Thus, in order to address the first problem referred to above, the computational means is configured to detect the occurrence of an inoperative sensor, and to then select an algorithm set for computing the toe angles using the signals generated by the remaining sensors.  The specification also sets out a way of addressing the second problem, which is by configuring the computational means to compare the toe angle values computed using all eight sensors with corresponding values computed using only six sensors, and signalling that the system requires calibration when the difference between these values exceeds a predetermined amount.  As an additional embellishment of the invention, the wheel alignment apparatus is said to be also able to compute wheelbase and trackwidth differences using all eight sensors, thereby eliminating the need for these values to be measured by hand.

The "detailed description of the preferred embodiment" explains how firstly the measured values at the sensors, referred to as Head Raw Sensor Data Values, are corrected for optical correction factors related to the vehicle suspension geometry and the location of the measurement heads relative to their respective wheels, giving Displayed Raw Sensor Data Values which can be displayed on a video display which is part of the wheel alignment apparatus.  These Displayed Raw Sensor Data Values can be further corrected for a factor called "runout" and for a calibating factor, giving values for toe angle measurements which the specification terms Processed Signal Values.  The computational means also converts the raw angle values from the receiver head to the projector head, and thus these Processed Signal Values are representative of the true angle of the projector head with which the value is associated, and not its companion receiver head.

From the Processed Signal Values various other intermediate, toe angle and vehicle geometric values can be calculated by the computational means based on the rules of geometry, and displayed.  The specification exemplifies a number of these.  They are: width difference (a value used in other calculations); ½ total toe of the rear wheels; ½ total toe of the front wheels; average steering direction of the front wheels; average rolling direction of the rear wheels (thrust angle); toe of left front wheel relative to the vehicle's thrust line; toe of the right front wheel relative to vehicle's thrust line; toe of left rear wheel relative to vehicle's geometric centreline; toe of right rear wheel relative to vehicle's geometric centreline, toe of left front wheel relative to vehicle's geometric centreline; toe of right front wheel relative to vehicle's geometric centreline; total front toe; total rear toe; angular setback of front wheels; linear setback of front wheels; angular setback of rear wheels, linear setback of rear wheels; wheel base difference; and track width difference.

As I have already noted, the present invention appears to arise from the realisation that it is possible to configure (programme) the computational means so that toe angle values can be calculated even if two "companion sensors" become inoperative, that is, there is sufficient data derived from the remaining six emitters and sensors to enable toe angle values to be calculated.  All toe angle, intermediate and vehicle geometric values may be calculated using the readings from just six sensors, although the calculation of some values from less than the full eight sensors relies on utilization of a stored value in the computational means of one of the values (namely, the width difference) calculated when there are eight sensors operative.

Two companion sensors may become inoperative, for example, if the passage of light is blocked by a workman or by a component of the vehicle, such as a spoiler.  The computational means recognizes that companion sensors have become inoperative when, in response to a polling instruction, no data is generated by one or both companion sensors.  It then accesses an appropriate algorithm set, identified by whichever companion sensors are inoperative, to enable the wheel alignment apparatus to continue calculating the toe angle values from the remaining six Processed Signal Values.  This feature is sometimes referred to in the trade as a "spoiler program".

The ability of the computational system to calculate toe angle values when two companion sensors are inoperative provides another benefit.  It means that there are, in total, five data sets available: the data set produced when eight sensors are operative and the four data sets produced when each of one of the four pairs of companion sensors is not available.  By comparison of the data sets it is then possible to detect when a calibration error has occurred.
As the description of the preferred embodiment progresses, it becomes evident that for certain specific toe angle values it is possible to detect a calibration error by a comparison of the toe angle value produced by just two sensors with the same toe angle value produced by the six other sensors.  The specification states:

“For example, if total toe of the rear wheels is computed with all eight sensors operative, Processed Signal Values from only the rear cross sensors are used.  If total toe of the of the rear wheels is then computed with the rear cross toe sensors inoperative, Processed Signal Values from the front cross toe, left track toe and right track toe sensors are used.  Since different Processed Signal Values are used, and all the sensors are used to generate these Processed Signal Values, an error in any one sensor will cause the total toe values to be different.  This difference is the calibration error.”

I say "as the description of the preferred embodiment progresses" because the possibility of comparing the signals from six sensors with those from a different two for calibration purposes is not really flagged by the specification except for the passage just quoted, which is virtually at the end of the description.  However, once alerted to this possibility, by backtracking through the specification it is relatively straightforward to see from the exemplified algorithms how this can be so.

The specification concludes with 13 claims of which three are independent. These read as follows:

“1.     An apparatus for determining toe angle information of the supporting wheels of a four-wheeled vehicle which comprises:

companion sensor means mountable relative to the planes of each laterally and longitudinally adjacent pair of wheels for generating data indicative of the relative orientation of each wheel;

means in communication with the sensor means for calculating toe angle information for all four wheels from the data generated by a first set of at least six companion sensor means;

means for determining whether at least one sensor means in the first set of companion sensor means is operable; and

means responsive to the determining means for calculating toe angle information for all four wheels from the data generated by a second set of at least two companion sensor means when the at least one sensor means in the first set of companion sensor means is inoperable;

wherein the first set of companion sensor means is different from the second set of companion sensor means.

7.     An apparatus for determining toe angle values of the wheels of a vehicle having at least two front and two rear wheels which comprises:

at least eight angle measuring instruments mountable relative to the planes of the wheels, including two companion angle measuring instruments mountable to each laterally and longitudinally adjacent pair of wheels, for generating data indicative of the angles between the plane of each wheel and the planes of the laterally and longitudinally adjacent wheels;

computing means in communication with each angle measuring instrument for calculating a set of toe angle values for the vehicle from the data generated by a first set of at least six companion angle measuring instruments and for calculating the set of toe angle values from the data generated by a second set of at least two companion angle measuring instruments;

the first set of companion angle measuring instruments being different from the second set of companion angle measuring instruments;

means for displaying the toe angle values;

means for determining whether at least one angle measuring instrument in the first set of companion angle measuring instruments is inoperative; and

means for selecting for display on the displaying means the set of toe angle values determined from the second set of companion angle measuring instruments when the at least one angle measuring instrument in the first set of companion angle measuring instruments is inoperative.

13.     An apparatus for determining the toe angle values of the wheels of a vehicle having at least two front and two rear wheels which comprises:

eight angle measuring instruments mountable relative to the planes of the wheels, including two companion angle measuring instruments mountable to each laterally and longitudinally adjacent pair of wheels, for generating data indicative of the angles between the planes of the laterally and longitudinally adjacent wheels;

computing means in communication with each angle measuring instrument for calculating a set of toe angle values for the vehicle from the data generated by the angle measuring instruments, calculating a reference value related to the geometry of the vehicle from the data generated by the angle measuring instruments, storing the reference value, and calculating the set of toe angle values from the reference value and the data generated by the companion angle measuring instruments on the laterally adjacent pairs of wheels and the companion angle measuring instruments mounted on one pair of longitudinally adjacent wheels.

THE EVIDENCE

The evidence in support consists of the following statutory declarations:

·a declaration by Werner Alt, who is employed as a research engineer by the opponent, which is located in Germany; in this declaration Mr Alt gives details of the Microline 3000 and 4000 devices, and provides evidence regarding the sale of the latter in Australia; he also expresses his belief that US Patent 5220399 teaches the use of a redundant pair of sensors for calibration purposes and in case of beam blocking, as is described in the present application

·a declaration by Paul William Webb, who is the managing director of the opponent's Australian subsidiary, in which he provides evidence of the sale in Australia of the Microline 4000 and its equivalent, the BMW-KDS (an abbreviation of the previously mentioned BMW Kinematic Diagnose System)

·a declaration by Douglas Graham Myers, a senior lecturer in electrical and computer engineering at the Curtin University of Technology with considerable experience in both the academic and practical aspects of computer related system design in industrial applications in Australia; Dr Myers' evidence is mainly an analysis of the specification and a discussion of the mathematical basis of the invention

·a "supplementary declaration" by Dr Myers which is mainly devoted to discussing US patent 5220399 and comparing its teaching of the use a redundant pair of sensors with the utilization of the same principle in the present invention.

The evidence in answer consists of a declaration by Malcolm Campbell Good, professor of mechanical and manufacturing engineering at the University of Melbourne, in which Professor Good compares the disclosures of US Patents 4383370, 4341021 and 5220399 with the present invention and concludes that the invention is not anticipated, and also asserts that some lack of clarity issues raised by Dr Myers "are trivial and selective".

The evidence in reply/further evidence is the following:

·another statutory declaration by Mr Alt in which he responds to the evidence of Professor Good with further observations regarding the correspondence between the present invention and US Patents 4383370, 4341021 and 5220399, as well as between the present invention and the Microline 3000 and 4000 devices, even though these last devices were not the subject of any of Professor Good's evidence (at least not directly)

·another statutory declaration by Dr Myers in which he replies to the evidence of Professor Good with observations on the extent of the common general knowledge in the art of the present invention and whether any inventive step is involved with respect to the Microline 3000 and 4000 devices and US Patents 4383370, 4341021 and 5220399

·a statutory declaration by Zoran Klimevski, who is a director and secretary of a business which is concerned with the repair and maintenance of motor vehicle wheel alignment systems and who has repaired and maintained Microline 4000 and BMW-KDS devices before the priority date of the present claims; in this declaration Mr Klimevski provides evidence of the features of the Microline 4000/BMW-KDS devices which were in use in Australia before the priority date of the claims

·a statutory declaration by Georg Hopfenmüller, who is a "mechanical technician" for BMW in Germany, in which Mr Hopfenmüller states that he received the wheel aligner BMW-KDS in 1991, and a "New Program Update Version BMW G/06/11.93" and update of the operation manual in December 1993; Mr Hopfenmüller further states that the 1991 device had a "calibration check feature" and the 1993 device additionally included a "spoiler program".

The evidence in response is a statutory declaration by Ertan Akbal, who is an employee of the opponent, in which he states that his recollection is that the version of the Microline 4000/BMW-KDS with a "spoiler program" (commonly referred to as the "Microline 4000 version 2", while the earlier version is referred to as the "version 1") was not imported into Australia "until about 1995".

I will go into the evidence in greater detail, where appropriate, later in my decision.

SUBMISSIONS

Mr Caine commenced his submissions by stating that the only grounds which the opponent would be "particularly pressing" at the hearing were the grounds of lack of novelty and inventive step and non-compliance with section 40.

Mr Caine submitted that the term "comprises" when used in the description of the field of the invention in reference to the number of sensors being eight should be construed inclusively, and that as the claims are not limited to this number they are not fairly based. He also submitted that the phrase "a reference value related to the geometry of the vehicle" in Claim 5 and some subsequent claims is unclear because it "is so open-ended as to fail to comply with the requirements of section 40". As well he alleged that this feature has not been disclosed in the US Patent specification which is the priority document for this application.

In relation to Claim 13, Mr Caine raised several issues.  He noted that there is no integer providing that the device defaults to six sensors, and thus there is no redundancy.  He also noted that there was no calibration feature.  Both these features he construed as being essential features of the invention.  As already mentioned, he considered the feature "a reference value related to the geometry of the vehicle" to be unclear and also to lack fair basis because "it is not limited to any width variable" (that is, width of the vehicle).

On anticipation, Mr Caine submitted that US Patent 5220399 discloses the use of eight sensors with an extra two sensors for redundancy purposes, and therefore anticipates the present invention.  The Microline 4000 version 1 updated with the spoiler program (hereinfter referred to as the Microline 4000 version 1 update) and the Microline 4000 version 2 were also said to anticipate the present invention as a consequence of the prior use of these devices in Australia and the publication of the updated operating manuals in Germany before the priority date of the present claims.  He cited Otto v Lindford (1882) 46 L T 35 (CA) as authority for the principle that an actual machine is of greater anticipatory value than a mere paper specification.

In regard to inventive step Mr Caine contended that US Patents 4383370 and 5220399, which were both referred to as being prior art in the present specification, should be taken to be common general knowledge, in line with the decision in Bristol-Myers Squibb Company v FH Faulding & Co Ltd 46 IPR 553. Another court decision he cited as relevant to the present matter is AB Hassle v Alphapharm Pty Limited [2000] FCA 1303, particularly the passage that states:

"73. That is not to say that the whole of the content of "common general knowledge" need be within the conscious awareness of the hypothetical non-inventive skilled worker.  For example, there may be publications of technical and detailed information that are habitually consulted by the hypothetical skilled worker.  Notwithstanding that the hypothetical skilled worker would not have the whole of the contents of such reference material in his or her mind, such information should be regarded as part of the common general knowledge.

74. Another area is where it may be permissible to rely upon information that is not part of the common general knowledge is where the hypothetical addressee, faced with a problem, would resort to information that is fundamental to understanding the nature of the problem, if this were found to be a routine step that would have led from the prior art to the invention: cf [Welcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd (1981) 148 CLR 262] at 286 per Aickin J. Such information would include information about the basic characteristics of a drug for which a formulation is to be found."

Mr Caine observed that a significant number of Microline 3000 and 4000 machines had been sold in Australia, and, as was stated by Mr Klimevski, Beiersbarth, the manufacturers, are a market leader in the technology and therefore people would have regard to that company's products to see what the state of the art was.  Therefore on this basis he contended that the Microline 4000 version 1 was common general knowledge before the priority date of the claims.  In this device the only feature lacking compared with the claims in suit was the use of redundancy in the context of remedying the situation where an inoperative sensor existed - redundancy in the sense of calibration was known, as it was clear from the evidence of Mr Alt that the version 1 device had this feature.  Mr Caine put the situation in these terms:

"an addressee would have confronted a number of earlier machines in everyday operation in Australia.  To the extent that they did not deal with them on a day to day basis, certainly they would have had resort to the information provided by those new machines that were considered at the time to be part of the state of the art and available and sold by Beissbarth who on any view according to the evidence was one of the market leaders.  Thus if one who was working in this field was to face the problem said to be confronted by the inventor at the priority date, one would do so with that knowledge - it was not the least bit difficult to find and there was no question of complicated documents or specifications.  There were working devices which had the functionality which is now sought to be somewhat avariciously claimed."

Mr McGowan began his submissions with the observation that the advance made by the present invention resides in the realisation that all toe angles can be calculated using just six sensors plus the "width difference" variable which has been measured when all eight sensors were operative and stored in the computational means. He disagreed with the submission by Mr Caine that measurement of the Track Width Difference and Wheel Base Difference are essential features of the invention.  As Mr McGowan saw it, the closest of the alleged prior art was the "version 2" device.  However he asserted that the evidence was inadequate to prove that prior use had occurred.  Of the paper publications, Mr McGowan contended that publication of the English version of the operating manual before the priority date had also not been established, while US patent 5220399 - the closest art established to be prior art - utilizes eight sensors, four of which are dual sensors giving twelve in all, and was therefore not an anticipation of the present invention.

I will give more details of the submissions made by the parties, where appropriate, later in my decision.

DECISION

Evidentiary issues
In his submissions at the hearing (including the written submissions which he tendered at the hearing), Mr McGowan made a number of what he termed "objections" to the opponent's evidence, extending to eight pages in the case of the written submissions.  As Mr McGowan conceded, many of the objections just go to the weight and relevancy of parts of the evidence.  Most are, in my view, well-founded.  Some of the points noted by Mr McGowan included inconsistencies in the evidence, apparent equivocation by use of the conditional tense, the non-independence of some of the declarants and the fact that some declarants for the opponent were located in Germany and thus would not be expected to have an in-depth knowledge of circumstances in Australia, particularly as regards common general knowledge.

However, there were other situations where Mr McGowan questioned the capability of declarants to provide evidence in which I felt he was less justified.  For example, in relation to a part of Mr Alt's evidence, Mr McGowan states in his written submissions:

"This witness has not demonstrated why he would know what may or may not have been delivered to Australia and when.  He is purely an engineer with no claimed knowledge or experience in his company's habits of shipping product to Australia."

Again, in relation to Mr Hopfenmüller, he states:

"The witness has not said how he knows what was included in the program and he has not provided any verification of the assertion for example by exhibiting it or exhibiting the source or object code and therefore the assertion is unreliable, not probative and should be struck out."

In both these cases insufficient regard seems to be had to the form in which the evidence is given.  The fact that these declarants have been willing to attest to certain facts in a statutory declaration must, I think, be regarded as being a strong indication of their capacity to do so and of the correctness of those facts.

Mr McGowan was particularly dismissive of the evidence of Dr Myers, and Mr Caine's apparent disinclination to draw too much upon this evidence to argue the opponent's case lent some support to this, as Mr McGowan observed.  The problems with Mr Myer's evidence seem to stem from a lack of familiarity with the legal requirements of a patent specification, a lack of background knowledge in the art and also perhaps some lack of objectivity.  For example, in regard to the requirements of a patent specification, Dr Myers devotes a lot of his evidence to analysing the claims without having recourse to the remainder of the specification, contrary to the rules of construction for patent specifications.  In Rosedale Associated Manufactures Ld v Carlton Tyre Saving Coy Ld (1960) RPC 59, Lord Evershed MR states:

"On the other hand, it is clearly no less legitimate and appropriate in approaching the construction of the claims to read the specification as a whole. Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification."

which was taken by Sheppard J in Decor Corporation v Dart Industries 13 IPR 385 to mean that resort is to be had to the body of the specification to define or clarify the meaning of words used in the claim when an expression is not clear (see also Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461,479).

Even when he gets around to considering the document more as a whole, Dr Myers seems to be unduly pedantic in his approach to the specification and set upon finding fault with it.

Nevertheless, I do not think the evidence of Dr Myers should be put aside completely.  The applicant quite correctly states that "the invention is in the art of automotive engineering and specifically automotive maintenance engineering, and more specifically still, automotive wheel aligning."  However, the invention resides very much in the application of trigonometric principles, not unexpectedly having regard to the field of the invention.  In my view, Dr Myers has provided some quite useful expert evidence regarding the trigonometric basis of the invention.

The final evidentiary issue raised by Mr McGowan concerns the form of declaration by a couple of the opponent's German declarants, Mr Alt and Mr Hopfenmüller.  These declarations are in statutory declaration form, and are sworn before a notary public in Germany.  Of the declaration by Mr Hopfenmüller for example, Mr McGowan states in his written submissions:

"it does not comply with the mandatory requirements for valid statutory declarations that there be a verification on oath of the contents having been accurately translated from the German, or from the English to the deponent prior to swearing."

Mr Caine's response to this was:

"There is absolutely no basis whatsoever for the erroneous assumption that this evidence is any sense a translation.  He has given evidence in English and he has sworn to it.  Because he lives in Germany doesn't mean he has failed to comply with the form requirements of the rules, which merely say that in certain circumstances a translation is required."

and he went on to say that the present circumstances did not require a translation.

There is no doubt in my mind that Mr Caine has properly represented the situation - the words to which Mr Alt and Mr Hopfenmüller have sworn are undoubtedly the English language words.  That is what the documents convey.  In view of the fact that Mr Caine had stated that if I found that there was a problem with the declarations he would seek leave to re-swear them in conformity with the rules, I gave my finding on this point at the hearing.

Priority date

At the hearing , Mr Caine submitted that the present application was not entitled to Convention priority in respect of the feature of the stored reference value WD ("width difference") which is defined in Claims 5, 11 and 13. This was because the present specification included a paragraph of explanation of the nature and purpose of the stored reference value WD which does not appear in the basic specification. However, the basic specification does define "WD" in terms of "width difference (a value used in other calculations)" and the various algorithms given in the specification provide an understanding of the nature and purpose of WD. The question is, in accordance with reg 3.12(1)(b), whether what is defined by the present claims in regard to WD is fairly based on what is disclosed in the basic specification. The requirements for a claim to obtain priority by being fairly based on the disclosure of another specification are substantially the same as for the claims to be fairly based on matter described in the same specification in accordance with sec 40(3) of the Patents Act, and that is that the disclosure must contain a "real and reasonably clear disclosure of the subject matter of the claim" - see CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481 and (1994) AIPC 91-079, and Sartas No. 1 Pty Ltd v Koukourou & Partners Pty Ltd and Nicola Leonardis 30 IPR 479 and (1995) AIPC 91-121.

Considering then Claim 5, that claim states that the apparatus

"comprises means for calculating a reference value related to the geometry of the vehicle from the data generated by the first set of companion sensor means and means for storing the reference value."

and Claim 6 defines the reference value as being the width difference of the vehicle.  Claims 11 and 13 are, in this respect, along similar lines to Claim 5 and Claim 12 is along similar lines to Claim 6.

Now, the basic specification discloses a value referred to as the width difference.  An equation is given for calculating this value from the eight Processed Signal Values.  From the reference to this being "a value used in other calculations", and from its use in various algorithms, it is clear that this "width difference" is a stored reference value.  There is thus a real and reasonably clear disclosure in the basic specification of the subject matter of claims 5 and 6 and 11 to 13, and all claims of the present specification obtain their priority date from the date of filing of the basic specification.

Section 40

The main criticism that Mr Caine had of the claims in the context of section 40 was that by including within their scope arrangements of more than eight sensor means they extended beyond what was disclosed, and therefore lacked fair basis. Mr Caine also contended that the open-endedness of the definitions of the first set of companion sensor means being "at least six" and the second set of companion sensor means being "at least two" also caused the claim to lack fair basis.

As I have already mentioned, the basic test for fair basis of the claims is that of whether there has been a real and reasonably clear disclosure of the subject matter of the claims in the specification.  On my reading of the specification, I am inclined to agree with Mr Caine that the invention which is described in the specification is confined to wheel alignment apparatus comprising eight, and only eight, sensors.  The invention is founded upon a set of algorithms, and those algorithms pertain to an arrangement consisting of eight sensors.  There is no hint that the invention might have application to an apparatus having a greater number of sensors, beyond one reference in the description to the invention preferably comprising at least eight sensors, and a similar reference in one of the three independent claims.  Certainly there is no hint of how this could be accomplished, that is, how the algorithms could be adapted to a situation of more than eight sensors.

However, I do not construe Claim 1 as including within its scope more than eight sensors.  Claim 1 is directed to an apparatus for determining toe angle information of the supporting wheels of a four-wheeled vehicle.  The claim goes on to define the apparatus as comprising "companion sensor means mountable relative to the planes of each laterally and longitudinally adjacent pair of wheels for generating data indicative of the relative orientation of each wheel".  What this says to me with reasonable clarity is that each of the four wheels has two sensors associated with it, giving eight sensors.  This is reinforced to an extent by references in claims appended to Claim 1 to the first set of companion sensor means comprising "all eight sensor means".  It follows that Claim 1 does not lack fair basis in regard to the number of sensors (overall) that it defines.

The situation regarding the definitions of the first set of companion sensor means being "at least six" and the second set of companion sensor means being "at least two", is, I think, different.  I consider there is a fundamental problem with the fair basis of these features.  There appears to be no basis in the specification for what is defined in Claim 1 in respect of these features.  The invention that Claim 1 is ostensibly directed to is the "beam-blocking" or "spoiler program" feature, but the numbers it has used in respect of the sensors seem to be those that instead have been described by the specification as applying to the calibration feature.  Thus, as both Mr Alt and Dr Myers have commented upon in their evidence, there is nothing in what is described in the specification which suggests that toe angle information from all four wheels might be generated by just two sensors, as Claim 1 defines.

It is also not the case that the disclosure constituted by the claim itself can be considered sufficient to provide a fair basis for what it defines.  Although the claims are part of the disclosure of the specification (see Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2000] HCA 8 (15 February 2001)), the reading of the specification as a whole does not provide support for the matter defined in Claim 1 being the invention which is described by the specification.

The applicant appears to have attempted to remedy possible deficiencies in the specification with respect to fair basis with the amendments which it filed but subsequently withdrew.  However, in that these amendments were only superficial amendments to the description such as the insertion of consistory statements corresponding to the independent claims, I think they failed in that objective.

Interestingly, the basic specification contains only two claims, the first of which is directed to the "beam-blocking" or "spoiler program" form of the invention involving sets of eight and six sensors such as are now in Claim 3.  The second claim is appended to Claim 1 and is directed to the calibration feature using the different sets of six and two sensors which are in the present Claim 1 in a "beam-blocking" or "spoiler program" context.  These claims, in my view, far more closely correlate with the disclosure in the document as a whole than do the claims which were granted in the United States and, by modified examination, in Australia.

Claim 7 suffers from the same fair basis deficiencies as Claim 1, although it uses slightly different language to convey the same meaning.  However, Claim 7 is additionally not fairly based in that it would appear to include within its scope arrangements of more than eight sensors, because it refers to there being “at least eight measuring instruments”, although I observe that this claim also, like Claim 1, has appended claims (Claims 9-11) which refer to “all eight angle measuring instruments”.  As I indicated when considering the fair basis of Claim 1, I do not consider that there is a real and reasonably clear disclosure in the specification of any arrangements other than those having eight sensors.

Mr Caine submitted that Claim 13 is not fairly based because there is no feature providing that the device defaults to six sensors.  It is true that there is no feature providing that the device defaults to six sensors, at least not explicitly, but I do not see this as being an essential feature according to what is described in the specification.  On my reading of the specification, all the broad inventive concept requires is that the known eight sensor arrangement be capable of operating in a mode which utilizes data from just six sensors, which is what Claim 13 defines.  There is nothing explicit or implicit in the specification, apart from what is defined by the two other independent claims, to suggest to me that it might be an essential feature of the invention that the device defaults to six sensors.  In fact, in the Summary of the Invention this feature even appears to be described as "preferred", although there is a degree of ambiguity in the wording used.

The applicant conceded at the hearing that the reference in Claim 13 to “two angle values” should be to “toe angle values”.  As it stands the claim would be lacking in fair basis on account of this.

It was also submitted by Mr Caine in relation to Claim 13 that the expression "a reference value related to the geometry of the vehicle" is unclear.  However after some hesitation I have concluded that it achieves a satisfactory level of clarity.  Mr Caine has characterised it as “open-ended”, but there is some definition in the claim of its function (that of calculating the set of toe angle values), and in any case I think when recourse is had to the body of the specification to ascertain the background to the use of the expression (as per in Rosedale Associated Manufactures Ld v Carlton Tyre Saving Coy Ld, supra) it does, as I have said, achieve a satisfactory level of clarity.

To summarise my findings in relation to section 40 then, I find that Claims 1 and 7 and the claims appended thereto of the opposed specification do not satisfy the requirements of section 40 of the Patents Act in that they are not fairly based on the matter described in the specification.  Claim 13 is similarly not fairly based to the extent that the expression “two angle values” should read “toe angle values”.

Novelty

The standard test for novelty is the reverse infringement test which is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at 235 wherein Aickin J stated:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can 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 the essential features of the invention as claimed (Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at 391).

Included in evidence in support are the three US Patent specifications contained in the particulars of this ground.  However only one of these, Patent No. 5220399, is in serious contention to be an anticipation, as this is the only specification which recognises the possibility of redundancy in a wheel alignment device having plural sensors and suggests the exploitation of that redundancy to enhance the functionality of the wheel alignment device.

There were some differing views in the evidence and at the hearing as to the number of sensors that the device disclosed in US 5220399 employs.  The present specification, which makes reference to US 5220399, puts it at eight, as does Mr Alt, but Professor Good puts it at 10 plus optionally an extra two which are redundant.  The conflicting views on what US 5220399 discloses probably result from the fact that in some embodiments the sensors on the front wheels of the vehicle are a companion sensor to the sensors on both rear wheels.  There are thus four "dual" sensors which create eight companion sensor means.  I think Professor Good has it right in his analysis of what US 5220399 discloses, being as follows:

“There are two major variants of the particular apparatus.  The first variant employs six sensors for alignment, front and rear wheel set back and front wheel offset arranged to provide data as in [US Patent 4341021] but with the addition of data relating to diagonally opposed wheels.  Therefore there are in effect five sensor pairs giving ten angle readings arranged as one laterally opposed pair, being front left to front right, two longitudinally opposed pairs, being front left to rear left and front right to rear right, and two diagonally opposed pairs, being front left to rear right and front right to rear left………

The second variant adds the remaining rear left to rear right laterally opposed sensor pair to give a total of six sensor pairs, yielding twelve angle readings………

The last sensor pair in the second variant, namely the rear left to rear right pair, is described as a redundant pair which may be used to provide a cross check of measurement accuracy or to recover from failure of sensors on one wheel pair.  The use of redundancy is stated as 'measurement of any five inter-wheel angles will provide toe information for all four wheels.  Measurement of the sixth inter-wheel angle provides redundant information which may be used to obtain a check calculation for the toe information obtained from the five inter-wheel angles.'"

If when construing US 5220399 one thinks in terms of the expression "companion sensor means" which appears in the present claims, the conclusion seems unavoidable that US 5220399 discloses an apparatus having ten companion sensor means at minimum.  Claims 1 and 13, because they define the calculation of toe angle values for the wheels of the vehicle from eight companion sensor means, are therefore novel in light of US 5220399.

On the other hand, Claim 7 places no upper limit on the number of companion sensor means (overall, as well as the numbers in the first and second sets) and thus it can be read onto US 5220399.  The applicant has argued, however, that US 5220399 does not have the features defined in claim 7 of

“means for determining whether at least one angle measuring instrument in the first set of companion measuring instruments is inoperative.”

and

“means for selecting for display on the displaying means the set of toe angle values determined from the second set of companion angle measuring instruments when the at least one angle measuring instrument in the first set of companion angle measuring instruments is inoperative.”

In the paragraph bridging columns 4 and 5 of US 5220399 the operation of variable gain amplifier 16 to produce a detectable signal at the analog to digital converter 20 is discussed, and envisages a scenario where no signal is received because of circumstances such as an obstacle inserted between the emitter and receiving detector.  In column 8 of US 5220399 it is stated:

“Additionally, if circumstances prevent one of the six interwheel angle measurements, the remaining interwheel angle data, as mentioned before, is sufficient to provide four wheel toe information.”

It has been earlier stated by the specification that programmed wheel alignment values or manually called up specific wheel alignment values are displayed on display 18.

What these three components of US 5220399 convey to me is a programmed capacity of the wheel alignment device disclosed therein to calculate four wheel toe information from subsets of five of the possible six interwheel angle measurements and display them.  Although not stated in these terms by the specification, this would appear necessarily to involve the selection of a particular set of toe angle values dependent on which subset of interwheel angle measurements was detected as being available, and be implicit in what is disclosed.  US 5220399 would therefore appear to anticipate present Claim 7.

Accordingly Claim 7 and Claims 8 to 10 appended thereto lack novelty in light of US 5220399.  Appended claims Claims 11 and 12 define the stored reference value feature, which I do not consider is disclosed by US 5220399.

The other paper publication which the opponent cites as anticipating the present claims is the operating manual for the BMW-KDS device.  The manual is provided in two forms in the evidence, one being a complete manual in German, the other being amended pages for an English language version, the amended pages being dated 6 November 1993.  At places in the evidence the English language version is characterised as being a translation of the German version, and it is highly possible that the English language version was developed by making a translation of the German version.  However the English language version appears to me to be a publication in its own right.

Although the amended pages for the English language version of the manual carry a date of 6 November 1993, there is no evidence of when, or even if, those pages achieved publication.  However, there is evidence of publication of the German version - it comes from Georg Hopfenmüller, who says he received a copy of the amendments to the manual in December 1993.  This rings true, as it is consistent with the dates shown on the amendments.  Mr Hopfenmüller does not say whether there were any conditions of confidentiality imposed upon him regarding the information contained in the amended pages, but given the nature of the document to which they belong I find it unlikely that any such constraints existed.  I am satisfied that publication of the German version of the BMW-KDS manual before the priority date of the present claims has been established.

The only translation of the published BMW-KDS manual is of a passage at page 24, by Mr Alt in his first declaration.  This passage reads, according to Mr Alt's translation:

"If the measuring beam is interrupted in the front or in the back by spoilers, the spoiler program is activated automatically.  Herein, the wheel setback in the front and in the back can not be measured.

On the monitor screen, this is shown by the words "Spoiler Program" lighting up for a short time.  Bring the white guiding arrow into the green measurement sector of the half-circle (= measurement point) by turning the steering wheel.  The background of the changing graphic display changes from blue to green for confirmation of this.

At the same time, the back axle measurements of camber, toe and thrust line angle, as well as the total toe of the front axle (not pressed) are evaluated."

From drawings present in the manual it is apparent that the wheel alignment device with which this passage is concerned is the eight sensor arrangement to which the present claims are directed.  However that and Mr Alt's translated passage is the extent of what is disclosed which is relevant to the novelty of the present claims.  For the sake of completeness I have also considered the English language amended pages, and these do not appear to add anything to what can be obtained from the German language version with the aid of Mr Alt's translation.

Having translated the passage I have set out above, Mr Alt then goes on to interpret it in this way:

“The statement that “camber toe and thrust line angle as well as total toe of the front axle are evaluated” refers to the fact that the system invokes the Spoiler Program in the instance [when at least one of the beams used for measuring a toe angle value is spoiled or blocked], and still proceeds with the calculation of the camber, toe, thrust line angle and the total toe of the front axle of the vehicle, using the remaining six sensors, the light beams of which are not spoiled or blocked, based on the formula [given earlier in the declaration]."

In arriving at this interpretation, Mr Alt has obviously drawn heavily upon his own background knowledge to read the passage in question as disclosing something approaching what is defined by the present claims.  In particular, rather than all calculations being made from the six remaining sensors, it would seem, based on what is stated in the passage, to be quite conceivable for the calculations to made by utilizing data obtained from all eight sensors by physically by-passing the spoiler or other obstruction, such as by means of mirrors or prisms. The well known passage from Lord Westbury’s judgement in Hill v Evans (1862) 6 LT 90 at 93 Col 2, which states, in part:

“The invention must be shown to have been before made known.  Whatever, therefore is essential to the invention must be read out of the prior publication.  If specific details are necessary for the practical working and real utility of the alleged invention they must be found substantially in the prior publication.  Apparent generality, or proposition not true to its full extent, will not prejudice a subsequent statement which is limited, accurate and a specific rule of practical application.”

is clear authority for the invention defined by the present claims being novel over the BMW-KDS operating manual, and I find accordingly.

The final piece of prior art which the opponent has relied on to sustain its ground of lack of novelty is prior use of the Microline 4000/BMW-KDS version 2 device or the Microline 4000 version 1 update device.  It was only these devices among those the opponent claims were in Australia before the priority date of the claims that have the beam blocking feature or “spoiler program”.

In order to establish that prior use has taken place, it is generally considered that the evidence for that must be clear and corroborated.  For example, in Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd (1984) AIPC 90-135, it is stated:

"It is essential that an allegation of prior public use should be strictly proved.  Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care.  The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."

Notwithstanding this, there have been several Patent Office decisions in which uncorroborated evidence of an independent witness has been sufficient to establish the facts alleged in relation to prior use: Glenwood Systems v Gooden (1993) AIPC 90-985, Dunlop Holdings Ltd's Application (1979) RPC 523, Endurequip v Robyn Ann Roelofs 28 IPR 131, (1993) AIPC 91- 037, and Ferocem v Hightech Auto Tools an unreported Patent Office decision of 10 January 1994.

The opponent in this matter has endeavoured to provide corroborated evidence of prior use, but the evidence falls somewhat short of full corroboration.

Looking firstly at the situation of the Microline 4000 version 2 devices, Mr Alt's evidence is that all Microline 4000 devices shipped to Australia from June 1993 included the beam blocking feature, that is, they were version 2 devices.  He subsequently attaches two invoices dated 5 July 1993 and 26 January 1994, respectively, for, inter alia, Microline 4000 devices, although notably there is nothing in the invoice to identify them as version 2 devices.  The latter invoice is not really in contention as evidence of prior use, since the evidence of Mr Webb suggests that these devices did not reach Australia until March 1994, that is after the priority date of 1 February 1994.  The device invoiced on 5 July 1993 would appear from Mr Webb's evidence to have reached Australia in August 1993.  However, there is nothing in Mr Webb's evidence to confirm Mt Alt's evidence that this device "would have been" a version 2 device.

Thus the only evidence that a version 2 device was in Australia before the priority date of the present claims is an assertion made by Mr Alt based on the date on which a particular device that was in Australia before the priority date was invoiced.  There is no hard evidence to support this.  In fact such hard evidence as there is on this appears to indicate the contrary.  That evidence is the operating manual.  The manual and the manual update for the Microline 4000 version 1 update device are dated November 1993, and in the case of the updates more specifically 6 November 1993.  It does not seem credible that the version 2 devices could have been shipped off to customers with an out of date manual.  It is also highly unlikely that the date shown on the manual was a misstatement of some sort, given the importance that attaches to such dates where manuals are concerned.  This is somewhat confirmed by the evidence of Mr Hopfenmüller, who states that he only received his version 1 updates - both the software and the operating manual - in December 1993.  This is particularly significant as there appears to be a special relationship between BMW (Mr Hopfenmüller's employer) and Beissbarth, the manufacturer of the Microline wheel alignment devices, so it is likely that Mr Hopfenmüller would have been an early recipient of the manual.  Regarding the evidence of Mr Akbal, I share misgivings expressed by Mr Caine about this evidence.  Basically Mr Akbal's evidence is that he recalls an event (the import of the Microline 4000 version 2 device) as not having happened before a certain point in time (1995).  There could be a number of reasons for Mr Akbal to have this recollection apart from the one Mr Akbal is obviously pushing, which is that the event did not occur.  I am also mindful that Mr Akbal is an employee of the opponent and therefore not independent in this matter.
The standard of proof in these matters is the balance of probabilities: Dunlop Holding's Ltd.'s Application [1979] RPC 523. In my view the balance of the evidence on the availability of Microline 4000/BMW-KDS version 2 devices is clearly towards those devices not having been available in Australia before the priority date of the present claims.

I think a similar conclusion also applies to the allegation by the opponent of prior use by the Microline 4000 version 1 update device.  Here there is not even the partial corroboration that is provided by the invoices in the case of Mr Alt's evidence.  The only evidence that there were Microline 4000 version 1 update devices in Australia before the priority date is that of Mr Klimevski.  He claims to have serviced such a device in October 1993.  This is clearly at odds with the evidence of the dating of the manuals and the evidence of Mr Hopfenmüller's receipt of his updates.

I therefore find that the evidence does not establish that any prior use of the Microline 4000/BMW-KDS version 2 device or the Microline 4000/BMW-KDS version 1 update device has taken place.

Accordingly I find in relation to the ground of novelty that the claims of the present application are novel in light of the prior art cited in the evidence in this matter, with the exception that Claims 7 to 10 are not novel in light of United States Patent 5220399.

Inventive Step

According to subsections 7(2) and 7(3) of the Patents Act, a claimed invention will lack an inventive step if it is obvious in the light of:

(a)   common general knowledge; or

(b)   common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

A finding of lack of inventive step thus requires, as a precursor, that the state of the common general knowledge in the art in Australia be established.

A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate that something is common general knowledge.  The latter means of deducing the common general knowledge seems to have been given increased potency by the recent decision in Bristol-Myers Squibb Co v F H Faulding Limited 46 IPR 553 in which it was stated:

"If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of 'the common general knowledge as it existed in the patent area.'"

The opponent submitted at the hearing that the two patent documents referred to as related art in the present specification should consequently be taken to be common general knowledge.  Mr McGowan disagreed with this for two reasons.  The first was that approach specified in the passage in question is qualified by the term "ordinarily", which he said indicates it depends on the circumstances of the case.  In the present case, the argument went, as the two documents are owned by the applicant, the applicant would have been aware of them even if they were not common general knowledge.  The second reason cited by Mr McGowan was that it was only certain information contained in the specification that was said to be known from the two patent documents.  This was the use of eight sensors in a toe angle measurement system for a vehicle wheel aligner.  Consistent with Bristol-Myers Squibb Co v F H Faulding Limited, it is only this information derived from the two patent documents and said by the present specification to be known which should be considered to be part of the common general knowledge.

I fully agree with Mr McGowan on this, and would only add the observation that perhaps where an admission of prior art is made in a specification which originates outside of Australia, this may also be relevant, noting the particular circumstance of this case concerning its modified examination.

A determination of the state of the common general knowledge normally requires that a view be formed as to the identity of the hypothetical skilled workman in the art.  In the present case I am inclined to think that such a person would have been someone involved in the designing and manufacture of vehicle wheel alignment systems had there been evidence of such activity in Australia.  However, the evidence suggests that that may not be the case.  There is no evidence from anyone involved in that pursuit, with the wheel alignment devices in use in Australia all seemingly being imported.  This passage in the evidence of Mr Klimevski, is illustrative:

"This is partly due to the to the fact that we in Australia are remote from Beissbarth in Germany and FMC in the USA, even though they have distribution networks set up in Australia themselves.  These distribution networks are more marketing based, and technical problems of anything but a straightforward nature are outsourced to service agents such as ourselves.

As far as I am aware, the real technical support for these machines comes from the main office of these manufacturers in their home countries and it is normal to encounter significant delays in receiving a reply to requests for technical information from them."

Thus it appears that the only common general knowledge that can be said to have been demonstrated to actually exist is the background knowledge of such people as Mr Klimevski who are involved in the operation and servicing of wheel alignment devices and who I take for present purposes to constitute the person skilled in the art.  It is worth noting at this point that the applicant has not provided any evidence as to the common general knowledge.

Other prior art which the opponent submitted was common general knowledge was the Microline 3000 and 4000 version 1 devices.  The first of these uses six detectors - two on each of the front wheels and one on each of the rear wheels - to calculate toe angle values, and according to Mr Alt the use of six sensors in this way has been "well known internationally and in Australia from [US Patent 4341021] since the 1980's".  He also states that the algorithms which are employed in these six sensor devices are well known.  The Microline 4000 version 1 device uses eight sensors, and also has a calibration feature that takes advantage of the redundancy which is available when there are eight sensors.

The applicant disputes the assertion by the opponent that the Microline 3000 and 4000 version 1 devices have a sufficiently wide distribution to make them common general knowledge.  While I agree with Mr McGowan that the numbers appear to be on the low side, there seems from the evidence (particularly Mr Klimevski's) to have been a sufficiently wide awareness of them and a sufficiently wide distribution in the trade to regard their existence and operating procedures as common general knowledge.  This would apply particularly to the Microline 3000 machine, which has been around considerably longer than the 4000.  Their status as being "state of the art" would probably also have assisted them in becoming widely known.

Mr Alt goes on to say in regard to the Microline 3000 and 4000 version 1 devices:

"it was general knowledge in the trade and with our distributors in Australia how to calculate the angles in such wheel alignment systems as the scheme of calculations was either disclosed or taken as granted also in the patents mentioned in the introductory part of [the present specification]."

Although Mr Alt is not located in Australia, I accept his competence to some degree to provide evidence as to what Beissbarth's distributors and those in the trade would know regarding Beissbath's products.  However, if the phrase "how to calculate the angles" is intended to convey that there was a detailed knowledge of the algorithms at the heart of the principles of operation of the device, I have reservations about this insofar as the Microline 4000 version 1 device is concerned.  In the first place, the only evidence from those in the trade and the distributors is that of Messrs Webb and Klimevski.  Only Mr Klimevski gives an indication of having any sort of detailed technical knowledge of the Microline 4000 version 1 device, and this seems focussed upon the operation and servicing of this device.  The information of how to "calculate the angles" was, as I understand it, contained in software which I presume to have been transparent to those operating and servicing the devices - certainly there is no evidence to suggest otherwise.  Even the fact that the Microline 4000 version 1 has a calibration feature that takes advantage of the redundancy which is available when there are eight sensors would, I think, not have been evident to people who were operating and servicing these devices, as there would be a multitude of potential ways in which calibration could be performed.  In the second place, I have already indicated that I do not regard the patents mentioned in the introductory part of the specification as being common general knowledge on the basis of their appearance in the specification alone, and there is no other indication in the evidence that these documents were known in the trade.
The elaborations on the law relating to common general knowledge contained in AB Hassle v Alphapharm Pty Limited (supra) do not appear to impact on the present matter due to an absence of any evidence on point.

As to the Microline 3000, the evidence from Alt and Klimevski indicates widespread use of this device, as well as its competitor's equivalent product (the FMC 9000), over many years before the priority date of the present claims.  Even Mr Akbal does not dispute this evidence.  I consider there is a sufficiently high probability that its principles of operation were so well known at the priority date for them to have been common general knowledge.

Mr Caine put forward some inventive step arguments based on the Microline 4000 version 2 device, the Microline 4000 version 1 update device, the update software for the version 1 device, the operating manual for the version 2 device and the update to the operating manual for the version 1 device.  I have found that neither the Microline version 2 device nor the Microline 4000 version 1 update device were available in Australia before the priority date of the claims, and it follows that the same applies to the software and manuals.  Therefore none of these could be considered to be common general knowledge.  Moreover, given the nature of these disclosures and the fact that they were only available overseas, the fact that, to the best of my knowledge, they were not reflected in any patent literature and the fact that, to the best of my knowledge, they were not available electronically, it is difficult to perceive them as being able to have been ascertained by the person skilled in the art before the priority date of the claims.  In order to find to the contrary some evidence as to the circumstances of how the person skilled in the art would have been able to ascertain that prior art would seem essential.  Such evidence is absent from the evidence in this matter.  That prior art is therefore not material to whether the present invention involves an inventive step.

Turning now to the question of whether the presently claimed invention involves an inventive step in light of the common general knowledge which I have indicated I consider to have existed before the priority date of the claims, I consider the so-called "problem-solution" approach the most appropriate device for addressing this question.  However, a difficulty arises in carrying out the problem-solution analysis, in that in the case of Claims 1 and 7 in particular I have earlier found that they are not fairly based.  For the purposes of this analysis it will be expedient to consider just one possibility falling within the scope of Claims 1 and 7, that of there being eight sensor means in all, with the first set consisting of all eight sensors and the second set consisting of six of the eight sensors.  Such an arrangement satisfies the feature in these claims that "the first set of companion sensor means is different from the second set of companion sensor means", since a set only has to differ in one member for it to be a different set.

The problem as I see it which is addressed by the present invention is how to get an eight sensor wheel alignment device such as the Microline 4000 version 1 device to work when one sensor means or two companion sensor means are inoperative, such as by being blocked.  I have stated above that I consider the Microline 4000 version 1 device to be common general knowledge.  However for present purposes that is not essential, it merely having to be capable of being ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.  Even if I am wrong about it being common general knowledge, I am in no doubt that it meets this less stringent criterion.

The common general knowledge which must be assumed to be possessed by the person skilled in the art confronted by this problem is the Microline 3000 device, which obtains toe angle values from just six sensors.  The question thus becomes one of whether it would be obvious to the person skilled in the art that the software (the computational means) of the Microline 4000 could be modified (more specifically, given increased functionality) so that it provided toe angle values for all four wheels from just six operative sensors when one sensor means or two companion sensor means are detected as being inoperative.  I think the answer to this question is undoubtedly yes.  Mr Caine advanced an argument of lack of an inventive step on an "obvious to try" basis, citing Beecham Group Ltd's (Amoxycillin) Application [1980] RPC 261. I think that approach is valid, but seems predicated on the person skilled in the art not being forearmed with the knowledge that a six sensor arrangement was viable. This seems to me to not be the case here. The person skilled in the art would have known from the Microline 3000 device that six sensor devices were viable. Moreover, it would have been "very plain" and hence obvious (Olin Mathieson v Biorex 1970 RPC 157) that if two companion sensors of the eight sensor Microline 4000 version 1 were somehow disabled, you were in effect back to the Microline 3000 device. It would have helped him in this if the person skilled in the art was acquainted with the algorithms involved in six sensor devices, as I consider to be the case, but in my view this is not critical.

I therefore find that the invention defined by Claims 1 and 7 of the opposed application does not involve an inventive step.  Claims 2 to 4 appended to Claim 1 and Claims 8 to 10 appended to Claim 7 do not appear to define any inventive subject matter.  Claims 5 and 6 and 11 to 13 appear to involve an inventive step in that they define the stored reference value feature which, in light of the evidence, does not appear to have been contemplated by the prior art and which would appear to have involved some exercise of the inventive faculty.

Manner of Manufacture

This ground was not pursued in the evidence or at the hearing.  The particulars specify several footings on which this ground is argued.  These are somewhat hazy, but to the extent I understand them I consider there is nothing in them.

I find that the invention defined by the claims is a manner of manufacture and complies with the requirements of paragraph 18(1)(a).

CONCLUSION

I have found that the ground of opposition of non-compliance with paragraph 18(1)(a) of the Patents Act1990 (manner of manufacture) has not been established, but I have found that the opponent has been successful in its grounds of opposition of non-compliance with section 40, subparagraph 18(1)(b)(i) (novelty) and subparagraph 18(1)(b)(ii) (inventive step).

In particular I have found that Claims 1 and 7 and the claims appended thereto of the opposed specification do not satisfy the requirements of section 40 of the Patents Act in that they are not fairly based on the matter described in the specification.  Claim 13 is also not fairly based but only requires minor amendment to remedy the defect it contains.  I have also found that Claims 7 to 10 are not novel in light of United States Patent 5220399.  Finally, I have found that the invention defined by Claims 1 to 4 and 7 to 10 does not involve an inventive step.

Consequently I find that the opposition has been made out in part, but as the specification is clearly capable of amendment to overcome its shortcomings which have been identified in this decision I allow the applicant sixty days from the date of this decision to propose amendments to that effect.  If suitable amendments are not filed within that time I will refuse the application.

COSTS

In accordance with the general principle that costs follow the event, I award costs against the applicant, Snap-On Technologies Inc.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :    Freehills Carter Smith Beadle, Melbourne

Patent attorneys for the opponents   :  Wray & Associates, Perth