Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd - [2014] APO 77

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Sprintquip Pty Ltd v Lockit Systems (Aust) Pty Ltd [2014] APO 77

Patent Application: 2007222896

Title:Assemblies and method for securing surface mounted articles to accommodate applied loads

Patent Applicant:                   Lockit Systems (Aust) Pty Ltd
Opponent:  Sprintquip Pty Ltd
Delegate:  R Subbarayan
Decision Date:  26 November 2014
Hearing Date:  4 September 2014, in Canberra
Catchwords:  PATENTS - section 59 – opposition to the grant of a patent – energy absorbing fixture for automatic teller machines - novelty – inventive step – clarity – fair basis - opposition successful – claim 29 not novel – claim 16 not fairly based – costs awarded against applicant

Representation: Patent applicant: John Walsh of Walsh and Associates
Opponent:Charles Berman of FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007222896

Title:Assemblies and method for securing surface mounted articles to accommodate applied loads

Patent Applicant: Lockit Systems (Aust) Pty Ltd
Date of Decision: 26 November 2014
DECISION
All of the claims are clear and fairly based except for claim 16 which is not fairly based. Claim 29 is not novel and lacks an inventive step. All of the other claims are novel and inventive.
I allow the applicant two months from the date of this decision in which to propose suitable amendments to overcome the adverse findings. I award costs according to Schedule 8 against Lockit Systems (Aust) Pty Ltd.
REASONS FOR DECISION
BACKGROUND

Patent application 2007222896 in the name of Lockit Systems (Aust) Pty Ltd was filed as a PCT application on 9 March 2007 and claims priority from Australian provisional patent applications 2006901216 and 2006903491 filed 9 March 2006 and 29 June 2006 respectively. Following examination it was advertised as accepted on 31 May 2012. The application has been opposed under section 59 of the Patents Act by Sprintquip Pty Ltd who filed the notice of opposition on 31 August 2012.
GROUNDS OF OPPOSITION
The application has been opposed under the grounds of Novelty, Inventive Step, Clarity and Fair Basis.
EVIDENCE
Evidence filed for the opposition comprises the following:
·Evidence-in-support comprising a declaration by Gerald Jonathan Andreasson dated 12 July 2013 with exhibits GJA-1 to GJA-3.
·Evidence-in-answer comprising a declaration by Richard Gould dated 29 October 2013 with exhibit A.
·Evidence-in-reply comprising a declaration by Gerald Jonathan Andreasson dated 24 January 2014 with exhibits GJA-4 to GJA-5.
Mr Andreasson is a consultant to the security industry with over 20 years experience as consultant to the financial institution sector. His experience includes a number of years with National Australia Bank where he had responsibility for ATM roll out and security. He has also served as an exectuve director of the Asian and Asia Pacific chapters of the ATM Industry Association (ATMIA) and sat on the ATM Fraud and Security Advisory Committee of the Australian Bankers Association. It is clear that he is well qualified to give evidence as to what would have been common general knowledge in the art at the priority date.
Mr Gould is the managing director of Lockit Systems, the Applicant Company. He is a licenced security consultant with 25 years experience in security management and security products design. He holds a number of patents on various security products and is also the inventor of the invention of the present application, which is being marketed and sold under the trade name RAMINATOR. The RAMINATOR won the “Most Innovative Product” award from ATMIA in 2007. Mr Gould is also a member of ATMIA and has given presentations at international fora on ATM security. Mr Gould is also therefore equally well qualified to comment on the common general knowledge in the art, although his views may not be quite independent.
ONUS OF PROOF
The examination request for this patent application was filed on 25 November 2010. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists.
Consequently the former standard for opposition proceedings applies and the opponent must establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
SPECIFICATION
The specification states that the invention relates to an assembly for improving the physical security of articles such as an Automatic Teller Machine (ATM) or a safe that are mounted on a surface. ATMs are generally mounted on a ground surface of concrete or other hard surface with secure expanding anchor bolts to prevent removal. Criminals have however resorted to ‘ram raids’ on ATMs, where a vehicle is driven into the ATM causing it to get detached from its anchorage whereby the criminals can then load the ATM into a vehicle and flee the scene. It states “At present there is no satisfactory means available to fully secure such articles as f1oor mounted ATM’s, safes and vending machines particularly from unwanted impact load applied in such activities as ram raids”.
The present invention is stated to be designed to withstand and absorb much of the horizontal load energy applied to the ATM during a ‘ram raid’ and thereby prevent the ATM from being separated from its anchorages. It achieves this by providing an additional anchorage in the form of a connecting member that can expand or extend on impact to thereby dissipate the energy of the impact. Dissipation of much of the energy minimizes the likelihood of the ATM getting totally detached from all of its anchorages.
The specification then describes a number of preferred embodiments of the connecting member/assembly. In one embodiment, the connecting member comprises a plate that is folded into a concertina arrangement to create a number of compressed aligned folded panels. One end of the plate is secured to the ground through anchor bolts 26 and an opposite end of the plate is secured to the ATM using fixing bolts 25. When the ATM is subjected to a side impact during a ram raid, the plate expands at its folds thereby absorbing/dissipating the energy of the impact. Figures 13 and 14 reproduced below best illustrate this embodiment.
While anchor bolts 27 have become uprooted, unfolding of the panels 11, 12, 13, 14, 39 dissipates some of the energy of impact preventing bolts 25, 26 from getting sheared off or detached.
In another embodiment the connecting member comprises a plate with cut-outs that form a number of tabs. While the plate is secured to the ground the tabs are secured to the underside of the ATM. On impact the tabs that are secured to the ATM displace out of the plane of the plate to absorb and dissipate some of the energy. Figure 24 reproduced below shows a form of this embodiment.
The specification ends with 37 claims of which the four independent claims read as follows:
1. An assembly for securing an automatic teller machine (ATM) to a surface to dissipate energy in the event of an impact applied to the ATM, the assembly comprising:
at least one connecting connecting bracket each including means at a first location to secure said connecting bracket to said surface and means at a second location to secure said connecting bracket to said ATM; the at least one connecting connecting bracket each capable of dissipating energy generated by an impact on the ATM such that in the event of a displacement of the ATM under said impact, the at least one connecting bracket includes a part which is capable of at least partial deformation or displacement relative to a first plane of the bracket, thereby absorbing and
dissipating energy from said impact; wherein the at least partial deformation or displacement of each said at least one connecting bracket thereby restraining the ATM from separation from said connecting bracket and from the surface; wherein the at least one bracket is formed from metallic plate.
28. An assembly for dissipating energy generated by a force applied to an ATM fixed to a ground surface via the assembly,
the assembly comprising at least one connecting plate having a first part which is fastened to the ground surface,
at least a second part fixed to said ATM,
the connecting member including means to enable the plate to expand along at least one dimension of the plate in the event of an impact load applied to the article to which it is attached; said expansion allowing dissipation of energy generated by a loading to the ATM ; thereby restraining the ATM from separation from said at least one connecting member; wherein the second part of the plate fixed to the ATM are formed by cut outs in the plate so that when the ATM rotates the cut outs move out of the plate of the plate .
29. An energy absorbing bracket for dissipating energy generated by a force applied to an automatic teller machine fixed to a ground surface by the bracket,
the bracket comprising a first part at one end which is fastened to the ground surface,
a second part at a second end fixed to said article;
the bracket including means to enable the bracket to displace along at least one if its dimensions in the event of an impact load applied to the machine secured by the bracket; said displacement allowing dissipation of energy generated by a loading to the machine; thereby restraining the machine from separation from the bracket and from said ground surface.
30. An assembly for dissipating energy generated by a force applied to an article fixed to a ground surface via the assembly,
the assembly comprising at least one plate having a first part which is fastened to the ground surface,
at least a second part fixed directly or indirectly to said article,
the at least one plate including means to enable the plate to extend along at least one dimension in the event of an impact load applied to the article to which the energy dissipating assembly is attached; said extension of the plate allowing dissipation of energy generated by a loading to the article; thereby restraining the article from separation from said at least one plate.
CLAIM CONSTRUCTION AND CLARITY
The correct approach 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]:
"Words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification ... 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".
In Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56, Lindgren J added the following to the propositions enunciated by Sheppard J in Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385:
1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).
2. The Court should avoid too technical or narrow a construction of claims.
3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.
The opponent submitted that the claims suffer from severe lack of clarity to the extent that a third party cannot ascertain whether an act would fall within the scope of the claims. They referred me to items 1-48 of their Statement of Grounds and Particulars (SGP) which detail various clarity problems with the claims and provided submissions in relation to some of them. I will now consider what, in my view, are some of the more important clarity issues raised.
The opponent objected to the use of the term “an assembly” in claims 1, 28 and 30. It was their view that while this term meant “a group of machine parts (or components), especially one forming a self-contained, independently mounted unit or the process of putting together a number of parts to make a machine or other product”, in each of these claims only a single item is claimed, namely “a connecting bracket” and therefore it is unclear how this single item can constitute an assembly.
The applicant on the other hand submitted that each of these claims not only defines a connecting bracket but also includes a means to secure the bracket to a surface and a means to secure the bracket to the ATM and therefore the bracket and the two securing means together constitute an assembly.
I agree. While there isn’t a clear definition of what each of these two securing means comprises, I think the definition “assembly” is broad enough to include within its meaning, a bracket and two undefined means at different locations on the bracket that are used in securing the bracket. This is the kind of too technical or narrow a construction that the authorities that I have stated earlier have warned against.
The opponent also submitted that definitions such as “at least one connecting connecting bracket each including ….” are unclear since the phrase “at least one” implies that there need be only one plate but the “each” implies that there is more than one plate. I can see no clarity issues with this definition. It basically states that there can be one or more brackets and if there is more than one, then each of the plurality of brackets includes securing means and is formed from metallic plate. This kind of language is quite common in drafting claims.
It was also submitted that in claim 1 the phrases “the at least one connecting bracket includes a part which is capable of deformation” and “the at least partial deformation or displacement of each of said at least one connecting bracket” make it unclear whether it is the bracket or a part of the bracket which is capable of at least partial deformation. I can see so clarity issue on account of these phrases. In my view it is a part of the bracket that is capable of partial deformation or displacement.
It was also submitted that the use of word “between” in claim 2 implies that the bracket can also move from the second state to the first undeformed state and it is not clear how this can happen under an impact load. In my view it is clear when the claim is read in context that this is to be construed as the bracket moves “from” the first state to the second state under impact load.
A lack of clarity was also raised as to whether “a first part” and “a second part” in claim 4 are the same as the “means” of claim 1 or not. In my view it is clear that they refer to the first and second “locations” defined in claim 1.
It was submitted that the definition “the bracket is capable of concurrent displacement vertically, rotationally and laterally” in claim 9 is unclear as it does not define relative to what the bracket is so displaceable. As it is only a part of the bracket that is displaceable, in my view it clear that the displacement is relative to the rest of the bracket.
A lack of clarity was also raised in relation to claim 10 as it is not clear in what manner or with what the folds are aligned and whether they are the same as the corrugations of claim 6 or something different. Again when the claim is read in context, it is clear that the folds are aligned with each other and the folds do refer to the corrugations.
Lack of clarity was also raised in relation to claim 28, on the basis that a “cut out” is a void and so it is not clear how a void can move out of the plane of the plate. When this claim is read in context it is clear that the reference to cut outs is a reference to tabs defined by these cut outs. This claim is clear.
In claims 16 and 27, the term “helical spiral” was submitted to be unclear as to how something could be both a spiral which is two dimensional as well as helical which is three dimensional. This feature was introduced by amendment during examination. None of the figures show tabs in the form of a spiral or helix and nor is there any explanation in the description of this term. But that does not necessarily make the term unclear. In the context of the invention, in my view the skilled addressee would understand the term “helical spiral” to refer to a spiral or helical shape, noting that it is not uncommon for these two terms to be used interchangeably. This term is clear.
Most of the other clarity issues relate to things like repeated words (“at least one connecting connecting bracket”), lack of antecedents (e.g. “article” instead of “ATM”; “connecting member” instead of “connecting bracket”) and obvious typographical errors (e.g. “plate” instead of “plane”). All of these can be easily resolved by the skilled addressee.
The opponent also submitted that the presence of numerous independent claims effectively saying what appears to be the same thing renders the scope of the claim set as a whole lacking succinctness.
I am not convinced. There are only four independent claims and each of these has a different scope to the others. As the delegate noted in American National Can v Trigon [1996] APO 23
“It is the right of an applicant to draft his claims so as to protect every aspect of the invention that he has disclosed. This can lead to a large number of claims, and potentially even a large number of independent claims. Whether such a drafting style results in claims that are not clear and succinct is a question of degree, that can only be decided by having regard to the specific claims and the specific description, rather than simply counting the number of claims.”
In my view the claiming of the invention in slightly different ways in each of the independent claims does not in any way make the claims lack succinctness.
The ground of opposition under clarity and succinctness has not been made out.
Although not raised by the opponent, in my view another term that needs to be construed is the term “bracket” that is defined in independent claims 1 and 29. The reason for this will become apparent while construing one or more of the citations that are relied on by the opponent under the ground of Novelty. A bracket is defined in the Merriam-Webster dictionary as follows:
1: an overhanging member that projects from a structure (as a wall) and is usually designed to support a vertical load or to strengthen an angle.
2: a fixture (as for holding a lamp) projecting from a wall or column.
The connecting device disclosed in the specification in suit, whether it is the corrugated plate or the plate with the cut-out tabs, although connected to a floor or other support structure, clearly does not project from the structure and therefore in that respect does not strictly fall under any of the above meanings of a bracket. However that does not make the term necessarily unclear. When read in the context of the invention described, in my view the term “bracket” in the claims is to be construed as being no more than a fixture that is attached to a structure and is used to support or mount an article. Again this is consistent with the principle of claim construction that a too technical or narrow a construction should be avoided.
FAIR BASIS

The opponent submitted that independent claims 1, 28 and 30 which are directed to an assembly lack fair basis as these claims only include one item, be it a bracket or a plate, whereas all of the examples illustrated include at least two brackets or plates. For example each of the embodiments of figures 1-20 have two corrugated brackets, one for each side of the ATM. However if the assembly had only one bracket, this would only be effective in one direction and if the ATM were struck by a vehicle on the unsecured side, the ATM would be displaced and no energy absorption would occur and the claimed invention would therefore not work.
I am not convinced. While the embodiments may show two brackets, there is nothing in the description that would suggest that provision of two brackets is critical to the invention. Even if the ATM were to be struck on an unsecured side, it is inevitable, given the flexibility of the corrugated bracket, that the bracket on the secured side would still be deformed or displaced, even if it is not to the same extent. In my view there is a real and reasonably clear disclosure of the invention of independent claims 1, 28, 29 and 30. These claims are therefore fairly based.
The opponent further argued that claim 16 is not fairly based because although it defines that the tabs form a helical spiral, none of the examples illustrated or described, show tabs that are in the form of a helix or spiral. They also submitted that this claim is therefore not entitled to an earlier priority date.
The only reference in the description to a helix or spiral is in page 4, where it says that “the connecting member may also be a helical spiral”. However this is in relation to the entire connecting member or bracket rather than to just the tab formed by the cut-outs. None of the drawings also show the tab in the form of a spiral. While this term is clear in that it defines the shape of the tab, the specification clearly lacks a real and reasonably clear disclosure of this integer in the body of the specification. Claim 16 is therefore not fairly based.
In relation to whether this claim is entitled to an earlier priority, nothing under Novelty or Inventive Step hinges on this. Therefore I see no need to make any determination on this issue.
The opponent also raised a similar fair basis issue with regard to claim 27, which defines that the connecting member is a helical spiral. However given the disclosure in page 4 that I mentioned earlier, there is clearly basis for this claim in the body of the specification. This claim is fairly based.
NOVELTY
It is well established that the general test for lack of novelty 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], [1977] HCA 19; 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 the essential features of the invention as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and unmistakeable 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).
In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
“Sufficiency of disclosure is a cardinal anterior requirement in the analysis of whether a prior art document anticipates a claimed invention. It is only after the stage of assessing the sufficiency of disclosure – which involves a determination about whether a prior document has “planted the flag” as opposed to having provided merely “a signpost, however clear, upon the road” or, perhaps, something less – that the notion of reverse infringement comes into play as the final and resolving step of the required analysis. It is not the first step of the required analysis; nor is it the only step.”
The opponent’s submissions in relation to lack of novelty of the independent claims relied on a “Claims Analysis Table” prepared by the attorney for the opponent. This table was then provided to their expert declarant Mr Andreasson who was then asked to analyse it and advise whether he agreed with the analysis as set out in the table, noting that he form an independent view in respect of each entry in the table. Mr Andreasson in his declaration has provided no detailed analysis of the citations other than stating that he generally agrees with the analysis and providing some more comparison of one of the prior art documents in relation to independent claim 28. I will now consider each of the cited documents.
D1: US 6266930
This document is directed to a safeguard structure for an ATM that prevents burglary of the entire ATM. It includes an installation board 10 mounted on a support surface and the ATM is mounted to this installation board using a system of anchor bolts 32, 34 and stopper fixture 28. The board has an area wider than that of the ATM to prevent overturning of the ATM. The anchor bolts are fitted from the inside of the ATM and therefore cannot be accessed by burglars without opening the ATM. The stopper fixture is J-shaped with an upper plate 28a that is narrower than the lower plate 28b. The anchor bolts 32 secure the ATM to the upper plate 28a. There is no teaching in D1 that the stopper fixture will deform or extend under impact to absorb and dissipate energy generated by an impact on the ATM. Although the opponent accepted that this teaching was lacking they submitted that it was inevitable that the fixture would deform on impact and that it would therefore absorb and dissipate the energy of the impact.
I am not convinced. There is no recognition in D1 of the problem of a side impact during a ram raid and the need to absorb this energy. Nor is there any suggestion that the fixtures are designed to deform and absorb the energy. Without such a disclosure D1 lacks clear and unmistakeable directions to the claimed invention. D1 also lacks cut-outs as required in claim 28 or the means to enable it to be displaced along at least one of its dimensions as required by claim 29 or a plate that can extend along at least one dimension as required in claim 30.
All of the claims are novel over D1.
D2: US 2002/0026754
D2 is directed to an anti-theft device for securing an ATM to a floor comprising a first beam 6 to which the ATM is secured through bolts 40, a second beam 8 which is secured to the floor through bolts 34. The second beam overlaps the first beam in a manner that allows limited free movement of the first beam within a channel 28 in the second beam. When the ATM is subjected to a side impact, the force of the impact is transmitted through the floor of the ATM and bolts 40 to the first beam which will move slightly within the channel 28 and can also twist depending on the force. This movement and twisting will absorb the force of the impact and thereby reduce the amount of force transmitted through beam 8 to the bolts 34 and consequently restrain the ATM from separation from the floor.
It is clear that D2 uses a similar concept as the claimed invention in that it relies on the deformation of one of the components of the mounting arrangement to absorb and dissipate the forces transmitted to the bolts that secure the ATM to the surface and thereby reduce the likelihood of the bolts getting uprooted from the surface.
The beams 6 and 8 are disclosed to be formed of mild steel and are flat and in my view this meets the requirement for the bracket to be either formed of metallic plate or in the form of a plate as required in claims 1 and 30.
While I am satisfied that the disclosure of the beam 6 being able to move within the channel 28 meets the requirement of the integer “enable the bracket to displace along at least one of its dimensions” as required by claim 29, I am not satisfied that the disclosure of twisting of the beam 6 without further details of where and how the beam gets twisted, meets the requirement of the integer “a part which is capable of at least partial deformation or displacement relative to a first plane of the bracket” as required in claim 1.
Each of the independent claims requires each bracket or plate to be secured at a first location to the surface and at a second location to the ATM.
The opponent’s claim analysis table suggests that they consider that the beams 6 and 8 together constitute the connecting bracket with beam 8 being secured to the surface and beam 6 being secured to the ATM. However I am not convinced. In my view the reference to a connecting bracket or a plate refers to single component and not an assembly of two or components. While it is legitimate to construe each of the beams 6 and 8 as a connecting bracket, each of these is only secured to one or the other of the ATM and the surface. This integer of each of the independent claims is lacking in D2.
One or more of the integers of each of the independent claims is not disclosed in D2. All of the claims are therefore novel over D2.
D3: GB 2297803
D3 discloses an anti-theft support frame for an ATM that has the ability to withstand substantial force when an attempt is made to steal the entire ATM. The support frame comprises two parts, the first part being a pair of angled brackets 20 that are secured to the supporting floor by expanding bolts 22 and the second part being a pair of channel beams 26 that are secured to the ATM. The beams 26 are welded at either end to plates 28 which have vertically extending slots 29. The beams and brackets are clamped together by bolts 30, 32 passing through the slots 29. By setting the clamping force the force required to move the beams relative to the brackets can be set. When an impact force is applied to the ATM, the beams 26 move relative to the bracket helping to dissipate some of the forces that are transmitted to the bolts 22.
The opponent considered beams 26 and brackets 20 together to be the connecting bracket. However in my view this argument fails for the reasons that I have stated in reference to D2. The disclosure of each connecting bracket to have means to secure it both to the surface and the ATM as required in each of the independent claims is lacking in D3.
While I am satisfied that the disclosure of the beams 26 being able to move relative to the bracket meets the requirement of the integer “enable the bracket to displace along at least one of its dimensions” as required by claim 29, this does not meet the requirement of the integer “a part which is capable of at least partial deformation or displacement relative to a first plane of the bracket” as required in claim 1.
D3 also lacks cut-outs as required in claim 28 or a plate that can extend along at least one dimension as required in claim 30.
One or more of the integers of each of the independent claims is not disclosed in D3. All of the claims are therefore novel over D3.
D4: GB 2299619
D4 discloses an anti-theft device for an ATM that comprises a low profile support for the ATM thereby preventing attempts to forcibly lever the ATM from its support on the floor. The ATM is secured to two cross members 4 with bolts 24. The ends of the cross members are secured to low profile angle brackets 12 which are in turn secured to the floor 16 by expanding bolts 18. Cover plates 34, 40 further restrict access to any minimal gap between the ATM and the floor.
Again the opponent considered cross members 4 and brackets 12 together to constitute the connecting bracket as required by the claims. However in my view this argument fails for the reasons that I have stated in reference to D2. The disclosure of each connecting bracket to have means to secure it both to the surface and the ATM as required in each of the independent claims is lacking in D4.
There is also no disclosure of any partial deformation or displacement of any part of the support structure in response to an impact on the ATM or the ability to absorb or dissipate energy.
Although the opponent accepted that this disclosure was lacking, they submitted that it was inherent that the cross members will twist and therefore expand in their thickness dimension and this would absorb and dissipate the energy of the impact.
I am not persuaded by this argument. There is no recognition in D4 of the problem of a side impact during a ram raid and the need to absorb this energy. Nor is there any suggestion that the bracket or cross members are designed to deform and absorb the energy. Although there is a statement while discussing D4 as prior art in another document, i.e. EP 1544810 which is also relied on in this opposition, that there is some distortion of the supporting frame of D4 on impact, in my view that cannot provide clear and unmistakeable directions to this feature in D4. In the absence of any reference to this other document in D4, the disclosure of D4 needs to stand on its own.
D4 also lacks cut-outs as required in claim 28 or a plate that can extend along at least one dimension as required in claim 30.
One or more of the integers of each of the independent claims is not disclosed in D4. All of the claims are therefore novel over D4.
D5: EP 1544810
This is the other document that I referred to in my discussions on D4. D5 is directed to an anti-theft device for an ATM that is stated to be an improvement over the device of D4 in order to make it easier to install and level the ATM on the support. Structurally it is quite similar to D4 in that it has a supporting frame comprising two angle brackets, two cross members the ends of which are secured to the brackets, with the ATM being secured to the cross members. The differences lie in the arrangement of the bolts and nuts that provide ease of both assembling and levelling.
For similar reasons given in relation to D4, D5 lacks a single connecting bracket that is configured to be secured to both the ATM and the floor.
Again there is no direct disclosure of any partial deformation or displacement of any part of the support structure in response to an impact on the ATM or the ability to absorb or dissipate energy. However while discussing their prior art device of D4, it states “This anti-theft device allows limited movement between the parts of the device which are fitted respectively to the floor and to the A.T.M. This movement is advantageous so that in the event of an attempted theft of the A.T.M., by lassoing for example, the applied force is absorbed by distortion of the supporting frame, allowing the A.T.M. to withstand attack for an extended period of time thereby increasing the likelihood that police forces can arrive at the scene before the A.T.M. is removed.”
Given that the invention of D5 works in a similar manner to that of D4, it is reasonable to infer that even in D5, any side impact is likely to be absorbed by some distortion of the supporting frame. However there is no indication of which components of the supporting frame distort or how and where they distort and without such a disclosure I cannot be satisfied that the integer of the bracket having means to enable it to displace, deform, expand or extend as required by each of the independent claims is disclosed. D5 also lacks cut-outs as required in claim 28.
One or more of the integers of each of the independent claims is not disclosed in D5. All of the claims are therefore novel over D5.
D6: EP 1260948
This document is in French and the opponent had provided a machine translation of this document as part of their evidence. Being a machine translation, the document does not read very clearly and it took a few readings to understand how it works.
D6 is directed to an anti-tearing mounting structure for an ATM that includes a deformable damping means to absorb some of the energy during a ram raid. It comprises a pair of rails 6’ secured to the floor and the ATM is supported on these rails and then secured to the floor using anchor bolts. A deformable damping means 7 is provided on either side of the ATM to absorb the energy of a ram raid. The damping means comprises a sheet metal having a wavy or corrugated form which is secured at one end to a vertical wall or panel in which the ATM is mounted and at the other end to a rigid means 7’ fixed to the floor and surrounding the ATM.
When the ATM is subject to a frontal impact, even if the anchor bolts securing the ATM to the floor become sheared, the corrugations of the damping means 7 deform or crumple to absorb and dissipate the energy that would otherwise be transmitted to the rails 6’ and the rigid means 7’. With the result, the ATM will slide in and be guided by the rails and will continue to be secured to the floor through the rails.
The opponent submitted that each of the deformable damping means 7 in the form of a corrugated sheet is a connecting bracket that is secured at one end to the surface and at the other end to the ATM and it deforms on impact to absorb and dissipate the energy.
The applicant on the other hand argued that crumpling is an entirely different concept to that of displacement as contemplated in the applicant’s invention and that it is not a valid reflection of the applicant’s design principles which include an expanding bracket by displacement of one part of the bracket or plate relative to another part of the bracket or plate while maintaining connection to the ground anchorage and to the ATM.
Whilst that may be true for the described invention, claim 1 merely defines that a part of the bracket be capable of deformation or displacement relative to a first plane of the bracket. In my view this is not merely limited to expansion but could also include compression such as crumpling. In D6 when the corrugated plate crumples, parts of the plate will clearly deform or displace relative to a first plane in which it was initially located. This integer of claims 1 and 29 is therefore disclosed by D6.
However each of the independent claims also requires that each bracket is secured to the surface and to the ATM. While one end of the corrugated sheet 7 is secured to the surface to which the ATM is secured, the other end is stated to be secured to rigid means 7’ fixed to the ground. The rigid means 7’ are mounted independently to the floor and there is no connection between it and the ATM. The integer of the bracket having means at a second location to secure it to the ATM is not disclosed.
D6 also lacks cut-outs as required in claim 28 or a plate that can extend along at least one dimension as required in claim 30.
One or more of the integers of each of the independent claims is not disclosed in D6. All of the claims are therefore novel over D6.
D7: US 2005/0224688
D7 relates to an anti-ram raid plinth for mounting an ATM. It comprises a fixing portion 14 that is embedded into a foundation and a base plate 16 that is arranged for support of the ATM through support means 18. The support means is arranged to crumple on impact without the ATM getting detached from the plinth. It also includes flexible linkages 20 connected between the base plate and the ATM.
The opponent submitted that either one of the support means or the flexible linkages can be considered as a connecting bracket that is secured to the surface and to the ATM and includes a part that is capable of deformation or displacement relative to the first plane of the bracket.
In relation to the flexible linkages, D7 states that they can be formed from flexible rods or flexible wires or chains. Clearly flexible wires or chains would not provide any energy absorption. While it may be possible that flexible rods could act to absorb and dissipate energy, there is no such teaching in D7. Furthermore they are not formed from metallic plate.

In relation to the support means 18, it is a vertically extending rectangular structure that is secured at the lower end to the support surface through the fixing portion 14 and at the upper end to the ATM. D7 therefore discloses the integer that each of the connecting bracket is secured to the surface and to the ATM as required by each of the independent claims.
D7 also discloses that the support means is formed from metal sheets.
The applicant submitted that the support means is a crumpling device and does not employ a bracket. I agree that I would not normally consider the support means as shown in the drawings as a bracket, but as discussed under “Claim Construction and Clarity”, I would not consider the applicant’s device as a bracket either and therefore I have construed the term bracket more broadly as a fixture that is attached to a structure and is capable of supporting or mounting an article. Based on this construction, in my view support means of D7 can be considered to fall within the scope of the term “bracket” as it is clearly a fixture that is used to support and mount the ATM.
While there is no explicit disclosure in D7 that the support means absorbs and dissipates energy of the impact when it crumples, it states in paragraph [0021] “Thereafter, the plinth 10 delays the removal of an ATM 12 or other object supported by a plinth because the plinth will crumple under the influence of a force, greater than a predetermined force, without the ATM or other object becoming detached from the plinth. In other words the ATM 12 will fall onto the floor whilst still attached to the plinth 10.” In my view there is a clear teaching here that energy is absorbed and dissipated, as otherwise the ATM would get detached from the plinth. It is also well known that a crumple structure is designed to absorb and dissipate energy. I am therefore satisfied that D7 discloses the integer of the bracket being able to absorb or dissipate energy as required by the claims.
In respect of independent claim 29, the only remaining feature is that of the bracket including means to enable the bracket to displace along at least one of its dimensions in the event of an impact.
While there is no teaching in D7 as to how the support means, which is meant to be secured to the bottom of the ATM, crumples under impact during a ram raid which is a side impact on the ATM, it is inevitable that when the support means crumples and the ATM falls on to the floor, the bracket would displace along at least one of its dimension, namely its height dimension.
In my view therefore all of the integers of independent claim 29 are disclosed which is therefore not novel.
In respect of independent claim 1, this additionally defines that a part of the bracket is capable of at least partial deformation relative to a first plane of the bracket. In my view this requires that the bracket have an initial plane and that only a part of this bracket then deforms or displaces out of this plane.
In D7 even if I consider the top surface of the support means as a first plane of the bracket, there is nothing in D to suggest that only a part of the upper surface is deformed or displaced. The disclosure on the other hand appears to suggest that the entire upper surface will crumple and collapse under impact. Based on the limited information in D7 I cannot be satisfied that the support means includes a part that is capable of at least partial deformation or displacement relative to a first plane of the bracket.
D7 lacks clear and unmistakeable directions to the invention of claim 1.
D7 also lacks cut-outs as required in claim 28 or a plate that can extend along at least one dimension as required in claim 30. These claims are also therefore novel.
In summary claim 29 is not novel over D7. The remaining claims are all novel over D7.
INVENTIVE STEP
Section 7 of the Patents Act states:
(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3) The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b) a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
Problem to be solved
The opponent submitted that the problem to be solved is to secure floor mounted ATMs in such a manner as to prevent their theft using so-called ram raids and this has not been disputed by the applicant. While this accords with the problem stated in the specification in suit, it is also clear from the declarations of Mr Andreasson and Mr Gould, that this problem was itself common general knowledge in the art. Almost all of the documents that were discussed under Novelty also highlight this problem and therefore it is clear that this problem also forms part of section 7(3) information. This is fully consistent with the Full Federal Court’s decision in AstraZeneca AB v Apotex Pty Ltd (2014] FCAFC 99 where it was held that it is not appropriate to determine the problem based on the description of the invention in the specification, and in particular any problem that the invention is explicitly or implicitly directed at solving, unless this is part of the common general knowledge or prior art.
Common general knowledge (CGK) in the art
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."

100. The opponent submitted that paragraphs 19-22 of the first Andreasson declaration set out what forms the CGK in the art.
101. Mr Andreasson states in his first declaration that he was aware of a number of devices which were, in essence, kinetic energy absorption ATM anti-ram raid devices. One such device was in a presentation by a Mr Flood at an ATMIA conference in November 2005 and comprised a plinth base collar attached to the base of the ATM which absorbed kinetic energy. He also states that he has a strong recollection of a seeing at the same conference, an anti-ram raid device which had a component that was an unfolding (spring style) sheet of metal that provided an additional anchor for anchoring the ATM to the substrate after a ram raid. However he acknowledges that he does not have any materials relating to these devices to support his recollection.
102. Mr Gould states that, pre-2006, in his annual travels to both European and USA trade events by ATMIA, he did not see any kinetic energy absorbing product to reflect Mr Andreasson’s product descriptions. He has attached to his declaration the slides of Mr Flood’s presentation which clearly does not include any reference to the device stated by Mr Andreasson, although Mr Andreasson has argued in his second declaration that most speakers uses the slides as background only and that they would provide more detail in their oral presentation. Mr Gould also states that he had met Mr Andreasson a number of times at ATMIA events and that in 2007 he discussed with him the detailed construction and working principles of the Raminator product with reference to various photographs. It was Mr Gould’s contention that Mr Andreasson was confusing his recollection of other pre 2006 security products with the disclosure of the Raminator that he made to him in 2007.
103. Irrespective of whose statements are correct, the fact remains that Mr Andreasson does not state that the use of an unfolding (spring style) sheet of metal for anchoring the ATM was CGK in the art. The fact that such a device was exhibited at a trade event and made known to Mr Andreasson and other participants at that event does not make it CGK in the art. In fact his declaration is silent on what was he considers would have been CGK in the art for the skilled addressee at the priority date of the claimed invention. Similarly while Mr Andreasson may have a strong recollection of a kinetic energy absorbing device with a rubberised outer shell surrounding expanding bolts and may have been aware of most of the prior art documents relied upon in the opposition, there is no evidence to suggest that these devices were CGK in the art.
104. The only conclusion I can come to in relation to what was CGK at the priority date after reading their respective declarations is that the ram raids were a known problem and that the CGK in relation to security devices for preventing ram raids included devices such as stainless steel tether ropes that were used in conjunction with dynabolts or other anchoring devices. While devices that use some kind of energy absorption appear to have been known, there is no evidence to establish to my satisfaction that these were part of the CGK.
Lack of inventive step
105. The opponent made the following submissions in relation to why the claimed invention lacks an inventive step:
·The solution to the problem provided by the opposed claims is the use of an assembly to mount to the article which deforms or displaces to absorb energy when the article is struck with a high impact such as when struck by a vehicle in a so-called ram raid.

·Mr Andreasson has demonstrated that a person of ordinary skill in this field, as at the earliest priority date of the claims of the Opposed Application, would routinely have selected a "flexible sheet of metal affixed to the base of the ATM" as an effective measure to absorb impact loads imparted to an article when struck by such impact loads (paragraph 23 of the first Andreassen declaration).

·Further, the Section 7(3) information provided in this opposition clearly shows that it was known to use energy absorbing devices to protect articles against the impact loads.

·In view of the common general knowledge, as set out above, and with or without the Section 7(3) information, the invention as claimed in the claims of the Opposed Application was obvious to a person skilled in the field before the earliest priority date of the claims of the Opposed application.

106. Although Mr Andreasson has stated that he would have chosen a flexible sheet of metal his evidence has not established to my satisfaction that the use of a plate or bracket with a part that can extend in one dimension out of the plane of the plate or bracket to absorb kinetic energy is CGK. In absence of such evidence, I can only treat his submission as merely assertions that lack probative weight. The possibility, as suggested by the applicant, that Mr Andreasson’s solution to the problem is influenced by the fact that he was aware of the Raminator before he was asked to provide his views on the solution to the stated problem, also cannot be ruled out.
107. The evidence does not satisfy me that the claimed invention is obvious in light of the common general knowledge.
108. I have earlier found that claim 29 is not novel. Document D7 is clearly directed to a similar problem as the claimed invention and is therefore a document that the skilled addressee would have ascertained, understood and regarded as relevant. The applicant has not disputed this. It therefore follows that this claim also lacks an inventive step.
109. The opponent did not provide any specific submissions or evidence in relation to how the CGK is to be combined with any one or more of prior art documents D1-D7. In the absence of such evidence I am unable to find independent claims 1, 28 or 30 lacking an inventive step over any of the prior art.
CONCLUSION
110. All of the claims are clear and fairly based except for claim 16 which is not fairly based. Claim 29 is not novel and lacks an inventive step. All of the other claims are novel and inventive.
111. I allow the applicant two months from the date of this decision in which to propose suitable amendments to overcome the adverse findings.
COSTS
112. In proceedings such as these it is usually the case that costs follow the event. I see no reason to vary that approach on this occasion. The opposition has been successful in relation to some of the grounds. I therefore award costs according to Schedule 8 against Lockit Systems (Aust) Pty Ltd.
R Subbarayan
Delegate of the Commissioner