The Sunnyfield Association v Paul Andrew Cronk - [2007] APO 5

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 716550 and 759725 both in the name of Paul Andrew Cronk.

Title: Adjustable Reflector Device and Luminaire respectively

Action: Final determination in an opposition to the grant of a patent for application 716550, and opposition under s 59 to application 759725. In both actions in opponent is The Sunnyfield Association.

Decision: Issued 25 January 2007.
Abstract

Under Directions previously issued in The Sunnyfield Association v Paul Andrew Cronk [2004] APO 14 (5 July 2004), the final determination for 716550 and substantive opposition to 759725 (a divisional application to 716550) were to be heard concurrently and one decision issued.
Found that:

a single core invention was common to three related patent applications despite different terms being used between respective specifications;

the assessment of fair basis should not be reduced to meticulous verbal analysis but a determination of consistency between the claimed invention and the invention described from a fair reading of the specification as a whole, in line with the principles of Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004);

the claims of 716550 were deemed to be fairly based on the subject matter filed in parent application 679737 and therefore given its divisional status, under Reg 3.12(2C) entitled to the priority date of the parent application;

the priority chain from 679737 via 716550 to 759725 has not been broken, therefore the prior art cited in the substantive opposition has become irrelevant in the light of the earlier, thus making the want of novelty and lack of inventive step findings redundant . Therefore the opposition has been unsuccessful;

Section 114, determination of a priority date of amended claims does not apply in this instance;

despite the opponent being unsuccessful in both oppositions, costs are awarded against the applicant. The applicant’s actions in creating uncertainty around the priority dates and significant delay in claiming divisional status has clearly been detrimental to the opponent and other interested third parties.

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 716550 and Patent Application No. 759725 by Paul Andrew Cronk, Opposition to the grant of a patent for both applications by The Sunnyfield Association.

BACKGROUND

Patent application 716550 in the name of Paul Andrew Cronk (Cronk) was opposed by The Sunnyfield Association (Sunnyfield). I issued a decision in the opposition on 1 August 2003 (which I will refer to as the earlier decision, now reported at [2003] APO 27). I found that the opposition was upheld on the grounds of lack of novelty as well as non-compliance with s 40. I allowed the applicant, Cronk, 60 days to propose amendments to overcome these grounds.
Patent Application 759725 was filed 17 April 2000. It claims divisional status from patent application 716550, and, claimed additional status from Australian patent 679737 (64800/94). It was advertised accepted 17 April 2003. Sunnyfield subsequently opposed this application on 1 July 2003.
On 3 September 2003 the applicant filed a statement of proposed amendments to 716550, including inter alia, amending the Patent Request to include:
Divisional Application Details: Parent Application Number 679, 737 (64800/94).
The amendment was opposed by Sunnyfield on 8 April 2004. This matter was duly considered by a delegate of the Commissioner in The Sunnyfield Association v Paul Andrew Cronk [2005] APO 51 (16 November 2005) – (I will refer to this decision as the Spann decision). In short the proposed amendment to include divisional status was allowed.
In the period between 3 September 2003 and the hearing of the opposition to the above amendment on 22 September 2005, Cronk opposed an extension of time sought by Sunnyfield to serve evidence in support to the opposition of 759725. A delegate of the Commissioner considered this matter—see The Sunnyfield Association v Paul Andrew Cronk [2004] APO 14 (5 July 2004) – (I will refer to this decision as the Ayers decision) and subsequently issued the following directions relevant to the present hearing:
“i. All evidence in the parent application (716550) is to be deemed as filed in the divisional application (759725).
ii. Otherwise, the substantive opposition is stayed until the final outcome of the amendments filed on 3 September 2003 in relation to the parent application (716550) is known;
iii. If the amendment to the patent request is allowed, the opponent has 2 months from the date the Commissioner advises the parties of the allowance of the amendments to serve further evidence in support of BOTH oppositions 716550 and 759725. Once the further evidence has been served, the applicant will have 2 months from date of service of the further evidence in support to serve and file evidence in response in both oppositions.
iv. If the amendments are withdrawn or refused, the divisional matter will go to hearing based on the evidence filed on the parent opposition.
v. Regardless of the outcome of the amendments, the substantive hearing on the divisional matter will be heard concurrently with the final determination on the parent application and one decision issued.”
As the proposed amendments were allowed, both parties took the opportunity to file further evidence for both 716550 and 759725 in accordance with the conditions of the above directions.
In accordance with the directions issued in the Ayers decision above, the present matter before me is the final determination for 716550 and the substantive opposition to 759725. These were heard concurrently in Canberra on 19 June 2006. The applicant was represented by Mr Fraser Old, patent attorney of Fraser Old & Sohn, Sydney and the opponent was represented by Mr Geoff Davidson, patent attorney of Halford & Co, Sydney.
Subsequent to the hearing, on 5 October 2006, the applicant filed amendments which had the effect of removing the additional status from 759725. No objection to the amendment was made by the opponent and the amendment is due to be advertised as accepted on 8 February 2007.
In addition, the following summary may also be useful in setting out the relationships between the various patent applications:

Patent Application Number
Filing date Relationship to other applications Earliest Priority Date

PM 2504 18/11/1993 Associated Provisional to 679737 18/11/1993

679737 (64800/94) 20/06/94 Sealed 30 July 1997. Parent to 716550, grandparent to 759725 18/11/93 from Prov PM 2504

716550 (24416/95 – PCT application) 24/05/95 Converted to divisional of 679737, parent to 759725 In dispute, (potentially 18/11/93)

759725 (27814/00) 17/4/00 Divisional of 716550, grandchild to 679737 In dispute, (potentially 18/11/93)
I will address the final determination for 719550 prior to addressing the substantial opposition to 759725.
FINAL DETERMINATION FOR 716550

A final determination is an opportunity to examine whether the amendments to the specification overcome the deficiencies identified in the earlier decision, and whether the amendments introduce any new deficiencies. Matters that were decided in the earlier decision have been decided once and for all, and are not open to challenge in this hearing. (See Perkin-Elmer v Varian Techtron Pty Ltd (1985) 5 IPR 321 at 322-323).
EVIDENCE
The only specific evidence referred to in relation to the final determination relates to the following further evidence filed in accordance with the earlier directions issued:
· Geoffrey Robert DAVIDSON, dated 7 February 2006. Mr Davidson is the patent attorney for the opponent, and his declaration includes annexure GRD1, a brochure (“the Accent Brochure”) by Accent Hydroponic relating to the Adjust-A-Wing parabolic reflector made by Accent under licence from Mr Cronk.

· Paul Andrew CRONK dated 2 March 2006. The declaration addresses the matter presented in the above Davidson declaration.
SUBMISSIONS
The primary submission made by the opponent was that patent application 716550 is not fairly based on grandparent application 679737 and therefore is not entitled to claim the earliest priority date from application 679737. That is, the claims of 716550 should have a priority date of 24 May 1995 and these claims therefore have been prior published for the reasons set out in my earlier decision.
The applicant submitted that no new evidence or prior art relevant to the priority date of 679737 has been submitted. They submit the concept of ‘obtuse bends” is consistent all the way from the provisional application onwards throughout the chain of applications, and is clearly illustrated throughout, thereby providing fair basis. Cronk therefore believes application 716550 should be allowed to proceed to sealing without further delay.
Additional submissions were made in respect of the Accent Brochure. I will refer in more detail to these and other specific submissions where appropriate throughout the decision.
DECISION
Divisional status and Fair Basis
Relevant Law:
The relevant legal provisions in respect of further ("divisional") applications and priority dates are as follows;
Section 79B sets out the requirements for further applications:
…
(1)(a): If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention disclosed in the specification filed in respect of the first-mentioned application;
Regulation 3.12 set outs out the general requirements for the priority date of a claim:
…
(1): … the priority date of a claim of a specification is the earliest of the following dates:
(a) the date of filing of the specification;
…
(c) if the specification is a complete specification filed in respect of a divisional application under section 79B of the Act and the claim is fairly based on matter disclosed in the specification referred to in paragraph 79B(1)(a) of the Act—the date mentioned in subregulation (2C);
…
(2C): The date for a specification to which paragraph 3.12(1)(c) applies is the date that would have been the priority date of the claim if it had been included in the specification referred to in paragraph 79B(1)(a) of the Act.
To apply the above provisions to the opposed application, the question that needs to be answered is: “is the invention claimed in 716550 disclosed in 679737?” If the answer is in the affirmative, then 716550 would be entitled to the divisional status under Section 79B of the Act. Its claims—where they are fairly based on the specification of 679737—would have as their priority date the date that would have been the priority date if they had been included in 679737, that being 18 November 1993.
Turning to the invention described in the originally filed description for application 679737. In establishing what exactly is the invention described, I find the following statements about the invention relevant; at page 3, paragraph 1:
“These problems are overcome by the present invention, which provides an adjustable light reflector device comprising a resilient reflective skin flexed to form a double parabolic shape which is held in place against its resiliency by adjustable retainers…
In one form of the invention the said skin comprises a pair of substantially rectangularly shaped sheet members both having substantially orthogonal protruding skirts parallel with the longest edges. The said sheet members join together so that one edge and associated skirt of one sheet member fits neatly inside the corresponding skirt and edge of the other, forming a substantially orthogonal alignment between the sheets. The said sheets are then fixed together and flexed back against the newly created reinforced spine central spine to achieve a double parabolic shape that is secured at each end by attaching lengthwise adjustable retainers…”
And, at page 4, paragraph 1:
“In another form of the invention the resilient reflective skin may comprise one or any number of sheet members and any necessary reinforcing members fashioned so as to approximate the predefined shape and conditions required for formation of a flexible double parabolic shape herein defined.”
and at page 6, paragraph 3:
“It will be realized that the reflector device according to this invention is not restricted to the specific shape and construction of the untentioned (sic) resilient skin shown in the example, but may use a skin fashioned from one, two, or more pieces of suitable material of any suitable shape or size so long as the essential feature of being flexed back against a spine or axial crease to create an adjustable double parabolic shape is achieved.”
From the description above, one form of the invention appears to include an embodiment whereby the sheets are “substantially orthogonal”. However this does not appear to be the only form of the invention. It is clear from Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (18 November 2004) that the correct approach in assessing fair basis calls for a comparison of the claim or claims with the matter described in the specification as a whole, not just with a preferred embodiment.
To my mind, in reading the specification as a whole, it is a fair appraisal to say the invention lies in the creation of an adjustable reflector device comprising single or multiple sheets of resilient reflective skin (or skins) that may be flexed back against a central or common spine or axis to create a double parabolic shape wherein curvature of the double parabolic shape may be adjusted through the use of adjustable retainers.
Turning to submissions made by Sunnyfield, who focussed specifically on the feature of the angle of the reflector sheets with respect to each other in the unbiased (or unflexed) position. The opponent submitted that application 679737 as originally filed, repeatedly referred to the term “substantially orthogonal” to describe this feature, and provided appropriate references from the description. They then allege that application 716550 has no such restriction and hence lacks fair basis.
In particular, Sunnyfield submit that if one applies the Mond Nickel Rules (in Mond Nickel Company Ltd.'s Application, (1956) RPC 189 at page 194) as a guide to fair basing, the claims of 716550 fail part (ii) of that test, i.e. “is there anything in the specification which is inconsistent with the alleged invention as claimed?”.
Sunnyfield argued that because the claims in 716550 don’t limit the angle between the unflexed sheets to being “substantially orthogonal”, the claims therefore cover any angle, and hence are inconsistent and lacking in fair basis. (I note that the claims use the phrase “said reflective sheets are transverse to each other” to define their position in the unflexed state rather than “substantially orthogonal”).
In contrast, Cronk submitted that 716550 is entitled to the priority date of the provisional specification dated 18/1/1993. This is because the concept of the sheets having “obtuse bends” described in the provisional is consistent throughout each of the applications. That is the angle shown between the sheets or skins is not perpendicular, nor acute. Cronk then submitted that Figure 2 of application 716550 clearly shows the sheets not being perpendicular, but obtuse to some degree. Cronk submitted the issue was then one of how to describe such an angle. The term “obtuse” being too broad as it covers angles from 91 to 179 degrees, whilst “substantially orthogonal” allowed a small broadening of the angle meant by orthogonal to encompass a “small obtuse angle”. Cronk recognised that the term was not a particularly good one to describe such an angle, and subsequently dropped the term. However, Cronk submitted that as evident from the Figures in 716550, the concept of the two sheets being connected to form an obtuse angle (be it small) has been there all along, and therefore cannot be considered to be an inconsistency as alleged.
In determining whether or not the claims are fairly based, or indeed inconsistent with the described invention, I do not believe that applying strict verbal analysis and subsequent interpretation to the terms “substantially orthogonal” versus “transverse” is appropriate. Rather I am guided by Lockwood (supra) and in particular, the following at [71];
“Wilcox J. In a section of his reasons headed "Discussion about fair basis, insufficiency and obviousness", Wilcox J expressed agreement with the trial judge's conclusions on fair basing[80]. He then discussed obviousness in a fashion critical of the trial judge, but later said that it was not necessary to express any final conclusion about obviousness, nor to express a view on sufficiency of description. At the start of that section of his reasons, he said that there was a common fundamental question affecting the three issues referred to in the heading: "what, exactly, was the invention the subject of the patent?"[81] That is true, in the sense that once that question is answered, it becomes possible to consider whether the invention is fully described, whether the claims are fairly based on it, and whether it is obvious. But the question must precede, rather than accompany or follow, any resolution of those three issues. The correct way of answering the question is to examine the body of the specification in order to see what it describes as the invention.
and at [87]:
“Finally, it is necessary to consider the trial judge's citation of Atlantis Corporation Pty Ltd v Schindler[100] for the proposition that to couch a claim "in the same terms as the description of the invention in the specification" did not of itself, by that mere "coincidence of language", establish fair basing. That proposition is correct, but it is not fatal to the Patentee's position in this case. A "coincidence of language" between a claim and part of the body of a specification does not establish fair basing if that part of the language of the specification does not reflect the description of the invention in the light of the specification as a whole.”
Having set out what I believe the invention to be, I am now in a position to make the appropriate comparison between the claims of 716550 and the invention described above. The two broadest claims under consideration in application 716550 read;
Claim 1:
“A lamp reflector with adjustable curvature including a pair of resilient sheet members each having a reflective surface;
said sheet members being connected together along a common spine so that the sheet members have unflexed positions wherein said reflective surfaces are transverse to each other, each sheet member being adapted to be flexed from said unflexed position to a fully flexed position which forms the corresponding reflective surface into an inside curve with maximum curvature, and
adjustable retaining means connected to said sheet members for retaining said sheet members at a plurality of a selected flexed positions between said unflexed and fully flexed positions.”
And Claim 14:
“A lamp reflector with adjustable curvature including a pair of resilient sheet members, said sheet members each having a reflective surface and being connected so that, when in an unstressed condition, said sheet members are disposed at an angle relative to each other, and when flexed away from said angle, the reflective surface of each sheet member assumes a parabolic shape, and
means connected to said sheet member for adjustably flexing said members away from said angle”.
In comparing these claims with the invention, I believe that the scope envisaged by claim 1 having “transverse” sheets when unflexed, whilst broader than the “substantially orthogonal” embodiment described, is in fact encompassed by, and consistent with what I consider to be the description of invention as a whole. I note also that the claim must be read as a whole, and as such there remains an additional constraint on the term “transverse”. That is, the angles encompassed by the term “transverse” are limited to only those angles which still allow the sheets to be flexed back against a spine or axial crease in order to create an adjustable double parabolic shape.

Therefore I find claim 1 fairly based. For similar reasons, I also find claim 14 fairly based.
Similarly I find the remaining dependent claims fairly based on the invention disclosed in 679737. Consequently I believe 716550 to be entitled to divisional status under Section 79B of the Act, and that the claims of 716550 have the priority date of application 679737, that is a priority date of 18 November 1993.
The Accent Brochure
Sunnyfield have submitted a brochure by Accent Hydroponics Pty Ltd who make the "Adjust-A-Wings^®" parabolic reflector under licence from Mr Cronk. Sunnyfield do not provide any evidence in relation to the publication date of this brochure and it is not alleged that the brochure itself anticipates the claimed invention. However the brochure includes a history of the invention including collaborative university experiments. Mr Cronk in his statutory declaration admits to being the sole author of the relevant text in the brochure and asserts that the text in the brochure was mere "puffery". Mr Cronk's explanation for the "puffery" is that it was meant to imply that the device described in the brochure had successfully passed university supervised scrutiny and that the organisation behind the product was more than a mere "one man band".
On one hand the brochure contains statements that if true would be damaging to the applicant; on the other hand the applicant has filed a statutory declaration asserting that the statements in the brochure are mere "puffery". In absence of any other evidence in relation to the facts, I have to rely on the statutory declaration where Mr Cronk declares that "I understand that a person who intentionally makes a false statement in a statutory declaration is guilty of an offence under Section 11 of the Statutory Declarations Act 1959 and I believe that the statements in this declaration are true in every particular." Consequently I accept Mr Cronk's statements in his statutory declaration that no university experiment was actually carried out, that the "few preliminary tests" were carried out by Mr Cronk in private without any input from or knowledge of any university, that Mr Cronk is the sole inventor in respect of the applications, and that he has never collaborated with any other party in making the inventions. Nevertheless in my opinion Mr Cronk's "puffery" intended to mislead or deceive the reader of the brochure deserves a strong reproof.
CONCLUSION
I find the claims of 716550 to be fairly based on the subject matter filed in parent application 679737 and therefore—by virtue of Patents Regulation 3.12(2C)—entitled to the priority date had they been included in 679737. Hence I conclude the claims of 716550 have the priority date of 18 November 1993, which is the date of filing of the provisional patent application PM2504 associated with 679737.
As a result, I believe the amendments filed during the opposition process have overcome the novelty and prior use issues raised in my earlier decision.
I do not find the further evidence in the form of the Accent Brochure to deprive the claims of their novelty or inventiveness.
Consequently I find there is no bar to sealing application 716550. Provided there is no appeal against this decision, I direct this application to proceed to sealing in accordance with my directions issued at [85] below.
OPPOSITION UNDER S 59 TO PATENT APPLICATION 759725
STATEMENT OF GROUNDS AND PARTICULARS
The grounds for opposition submitted by the opponent were that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b), specifically that the invention as claimed lacks novelty and an inventive step, (as it is alleged the earliest priority date is 17 February 2003 rather than 18 November 1993). It was also alleged that the specification filed in respect of the complete application does not comply with subsection 40(2) or 40(3), and in particular the claims do not define the invention and the invention is not fully described.
SUBMISSIONS
The opponent’s fundamental allegation is that the priority chain between the present application and its grandparent application 679737 has been broken so that the present application cannot claim the priority date of its grandparent and this subsequently leads to the prior publication of the present application for the reasons set out in the decision on the S59 opposition to 716550.
The applicant’s primary submissions are that all three of the specifications in question contain drawings of specification 679737 in them. Similarly, large tracts of the text as well as the drawings are identical in all three specifications. Further, Cronk submits it is routine and allowed under the Australian Patents Act to amend the claims during prosecution to change the emphasis from one aspect of the disclosure to a different aspect of the disclosure. Finally, the applicant argued that the matter of fair basis and what is in substance disclosed may be reduced to what is in the drawings, and they speak for themselves. Consequently once a priority date of 18 November 1993 has been established, the grounds of want of novelty and lack of inventive step are swept away.
I will refer to specific submissions made by the parties in more detail where appropriate.
EVIDENCE
As directed in the earlier Ayers decision of 5 July 2004, all evidence in the parent application 716550 is to be deemed as filed in the divisional application 759725. However the only specific evidence referred to at the present hearing related to the following further evidence filed in accordance with the abovementioned earlier directions:
· Geoffrey Robert DAVIDSON, dated 7 February 2006. Mr Davidson is the patent attorney for the opponent, and his declaration includes annexure GRD1, a brochure (“the Accent Brochure”) by Accent Hydroponic relating to the Adjust-A-Wing parabolic reflector made by Accent under licence from Mr Cronk.

· Paul Andrew CRONK dated 2 March 2006. The declaration addresses the matter presented in the above Davidson declaration.
THE SPECIFICATION FOR APPLICATION 759725
The invention of patent application 759725 as accepted is said to relate to improvements in luminaire devices for reflecting light emitted by artificial sources.
In describing the prior art, the specification states that many types of luminaire devices associated with artificial illumination of industrial spaces are currently known. However, it is said that these all require that a fixed reflector shape and/or a fixed lamp mounting position within that shape be precisely specified to create an optimal lighting distribution for a particular purpose. For example, a “chinaman hat” reflector may be used in a situation where a wide uniform spread of light is required, but the spreading of the light is dependent on the fixed internal angle of the cone shaped reflector. The uniformity of light is therefore largely dependent on the non-adjustable lamp position within that reflector. That is, the specification identifies that known luminaire devices have the disadvantage that their rigid, non-adjustable, designs limit their efficient use to a relatively small range of applications.
The specification states the present invention seeks to provide a luminaire having an adjustable reflecting device which overcomes the disadvantages of the prior art. It then continues with two consistory statements which are reflected in two independent claims.
The specification finishes with the following claims, filed by amendment on 4 March 2003:
1. A luminaire having a reflector device comprising a pair of resilient sheets positioned one to either side of a spine in the manner of the pages of a book, and a lamp holder positioned to align a lamp having a longitudinal axis with said lamp axis being substantially parallel to said spine and spaced to one side therefrom, said sheets when in an unbiased condition lying substantially in two planes intersecting at an obtuse angle, and in operation being flexed and retained against the bias of their normal resilience to create a doubly arched configuration which forms a reflective surface, said surface receiving light emitted from said lamp towards said spine and reflecting same past and beyond said lamp.
2. The luminaire as claimed in claim 1 wherein said sheets are formed from a plurality of separate pieces which are joined together.
3. The luminaire as claimed in claim 2 having two sheet members each of which is substantially rectangular and is provided with a skirt extending along one edge, each said skirt being bent out of the plane of said rectangle, and said sheets being joined together by overlapping said skirts.
4. The luminaire as claimed in claim 2 or 3 wherein said sheets are joined by fasteners.
5. The luminaire as claimed in claims 14 wherein said spine is substantially centrally located and said reflective surface is substantially symmetrical with respect to said spine.
6. The luminaire as claimed in any one of claims 1-5 wherein said sheets are retained in said doubly arched configuration by a retaining means.
7. The luminaire as claimed in claim 6 wherein said retaining means extends between opposite sides of said doubly arched configuration.
8. The luminaire as claimed in claim 6 or 7 wherein said retaining means is selected from the group consisting of chains, wires or filaments.
9. The luminaire as claimed in claim 7 or 8 wherein said retaining means is adjustable in length.
10. The luminaire as claimed in claim 1 wherein said pair of sheets are fabricated from one piece of material.
11. The luminaire as claimed in any one of claims 1-10 wherein said lamp holder is adjustably mounted to permit adjustment of the distance between said lamp holder and said reflector device.
12. The luminaire as claimed in claim 11 and including a heat shield positioned to a side of said lamp holder opposite to that on which said reflector device is positioned.
13. The luminaire as claimed in claim 12 wherein said heat shield has a substantially V-shaped configuration.
14. The luminaire as claimed in claim 13 having a configuration resembling a single ridge hipped roof.
15. The luminaire as claimed in any one of claims 12-14 wherein said heat shield has a plurality of perforations.
16. The luminaire as claimed in claim 15 wherein the perforations of heat shield are arranged in a substantially regular array.
17. The luminaire as claimed in claim 15 or 16 wherein said perforations are substantially equally sized.
18. The luminaire as claimed in any one of claims 15- 17 wherein said perforations are substantially circular.
19. The luminaire as claimed in any one of claims 12- 1 8 wherein said heat shield includes an attachment means to attach said heat shield to said lamp holder.
20. The luminaire as claimed in claim 19 wherein said attachment means is adjustable to permit the position of said heat shield relative to said lamp holder to be adjusted.
21. A luminaire substantially as herein described with reference to FIGS. 1 and 3-5 and 7 or as modified by FIG. 2 or FIG. 6.
22. A method of adjusting the radiant intensity of a luminaire having a resilient doubly-arched reflective surface formed from a pair of sheets positioned one to either side of a spine in the manner of the pages of a book, the sheets when in an unbiased condition lying substantially in two planes intersecting at an obtuse angle and in operation being flexed and retained against the bias of their normal resilience creating said doubly-arched configuration, said method comprising the step of adjusting the degree of flexure of said sheets to change the curvature of said doubly-arched reflective surface.
23. The method as claimed in claim 22 including the further step of positioning a lamp holder to align a lamp having a longitudinal axis with said axis being substantially parallel to said spine and adjusting the distance between said lamp holder and spine.
24. The method as claimed in claim 23 including the further step of locating a heat shield to that side of the said lamp holder opposite to that on which said reflective surface is positioned.
25. The method as claimed in claim 24 including the further step of forming said heat shield with a substantially U- or V- shaped configuration.
26. The method as claimed in claim 24 or 25 including the further step of forming a plurality of perforations in said heat shield.”
Additionally, I note the present application as originally filed was for an invention entitled “Shielding Device” with the description stating the invention related to improvements in devices for reflecting light emitted by artificial sources. The specification also contained Figures of an adjustable reflector device, in an assembled flexed view, an unflexed view, and as separate sheets prior to assembly similar to that shown in the earlier patent applications.
The only independent claim of the application at that time read:
“A shielding device adapted to be disclosed about at least part of a lighting means, said device being substantially V-shaped and perforated.”
DECISION
Submissions
Sunnyfield allege the priority date at best should be 17 April 2000 (i.e. the filing date) as the claims of 759725 are not fairly based on the parent application as filed, and therefore not entitled to divisional status.
In particular Sunnyfield submit that independent claims 1 and 22 (and omnibus claim 21) at acceptance, travel beyond the matter disclosed in the specification because they define the angle between the unbiased sheets of the luminaire as “obtuse”, which is said to contrast the specification as originally filed in relation to application 716550 which is alleged to disclose the sheets as “substantially orthogonal”. Hence it is alleged the claims clearly lack fair basis.
Relevant Law
I have previously set out the relevant passages of section 79(B) and reg 3.12 which are applicable in determining the priority dates of further applications, and hence will not repeat them here.
In short, to determine the issue of priority dates, I need to establish whether or not the invention defined in the claims of 759725 is in fact fairly based or consistent with the matter disclosed in application 716550, or does the invention defined in those claims travel beyond the matter disclosed in application 716550.
The matter disclosed in 716550
The original specification of 716550 describes an invention seeking to provide improvements in devices for reflecting light by artificial sources. It states the disadvantages of the prior art devices are that they are rigid, non-adjustable designs which are limited in their efficient use to a small number of applications.
It then describes in one broad form as providing a reflector device, comprising a pair of resilient sheet members which are normally disposed at a substantially orthogonal angle relative to each other, and which are adapted to be flexed and retained against the bias of the normal resilience such that said device is formed to a curved, and preferable double parabolic shape.
The specification goes on to clearly state the drawings and description relate to a preferred but non-limiting embodiment of the invention. The invention is then described in general terms as follows:
“The present invention provides an adjustable light reflector device comprising a resilient reflective skin, flexed to form a double parabolic shape, which is held in place against its resiliency by adjustable retainers located at each of the skin and an independently adjustable lamp mount which attaches to the skin when it is in the retained position. A slide on V-shaped perforated heat shield is preferably attached to the lamp fitting.”
and,
“It will be realized that the reflector device according to this invention is not restricted to the specific shape and construction of the resilient skin shown in the example, but may use a skin fashioned from one, two, or more pieces of suitable material of any suitable shape or size so long as the essential feature of being flexed back against a spine or axial crease to create an adjustable double parabolic shape is achieved.”
Additionally, Figures 2 and 3 are respectively described as showing disassembled and assembled views of the skin of the reflector depicting substantially orthogonally protruding skirts present on sheet members and the substantially orthogonal alignment of sheet members.
At the hearing, Cronk submitted one may clearly see each skirt protruding outward from the adjacent edge of each rectangular sheet on both sides of the sheet at an obtuse angle. This detail would not be possible if the skirts were actually orthogonal, one would not see such a protrusion outwards and away from both sides of each sheet.
I agree with the applicant’s assertion that Figure 2 discloses an obtuse angle, even though it has been described as "substantially orthogonal". Furthermore I do not believe that a skilled addressee would have any problem resolving the issue of the imprecise language when the specification, including the figures, is considered as a whole, given there is some overlap in range between the two terms. Additionally, as noted later, the provisional specification is explicit in its use of the term "obtuse angle".
Again, I believe from the specification of 716550 as a whole, the invention lies in the creation of an adjustable reflector device comprising one or multiple sheets of resilient reflective skin (or skins) that may be flexed back against a central or common spine or axis to create a double parabolic shape wherein curvature of the double parabolic shape may be adjusted.
Claims of 759725
The two broadest of these claims are directed to a luminaire having obtuse sheets when unflexed, (as per claim 1) or are to a method of radiant adjustment wherein the unflexed sheets lie either side of a spine in the manner of the pages of a book (as per claim 22).
Whilst the scope of these words may be broader than the “substantially orthogonal” embodiment described, (minimal overlap notwithstanding), I do not believe that applying strict verbal analysis and interpretation to the words “obtuse” and “in the manner of the pages of a book” versus “substantially orthogonal” is appropriate for the reasons I have already set out in this decision at [23] above. Rather it is more appropriate to determine whether the claims are consistent with the matter described as a whole.
It is also worth noting that a claim must be read as a whole, and as such for the present claims there remains an additional constraint implied by the term “obtuse”. That is, a non-inventive skilled addressee would realise the angles encompassed by the term “obtuse” may only be those angles which still allow the sheets to be flexed back against a spine or axial crease to create an adjustable doubly arched configuration as required by the claim, (that is without going beyond the elastic limits of the material). A similar constraint applies to the use of the term “in the manner of the pages of a book”.
Furthermore, following Lockwood (supra) at [60], having a single embodiment exemplifying the invention (e.g. substantially orthogonal) in the description does not preclude claims, (e.g. obtuse), which do not mimic the exact embodiment from being fairly based.
Therefore I believe the claims of application 759725 are in fact encompassed by what I consider to be disclosed matter in 716550 as a whole. That is in my view the terms “obtuse” and “in the manner of a book” do not travel beyond the matter described given the disclosure of paragraph [51] above, and, additionally given I believe there is a disclosure of an obtuse angle in Figure 2, the two broadest claims may be read onto the Figures provided as part of the specification of 716550.
Consequently, in my opinion the terms in question do not render the claims inconsistent with, or lacking fair basis on, the parent application as submitted by Sunnyfield. That is to say that claims 1-26 are therefore entitled to the priority date afforded to the parent application under S.79 and Reg 3.12, that date being 18 November 1993.
Section 114

As an alternative argument, Sunnyfield contest a priority date of 18 November 1993 (or 20 June 1994) for application 759725. They claim the applicant is only entitled to an earliest priority date of 17 February 2003 or 4 March 2004 – these being the dates when the specification was amended to claim a different invention from that disclosed in the specification as filed. In particular it is alleged the amendments filed on 17 February and 4 March 2003 were not in substance disclosed and therefore s114 is applicable, leading to the later priority dates.
Relevant Law:
S 114 relates to the determination of a priority date of certain amended claims as follows:
…
(1): Where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.
The appropriate regulations with respect to certain amended claims are set out in reg 3.14 which reads:
If subsection 114(1) of the Act applies to a claim of a specification, the priority date of the claim is:
(a) in the case of an amendment to which subsection 89(4) or (5) of the Act applies -- the date on which the amendment is taken to have been made under that subsection; and
(b) in any other case -- the date of filing of the statement of proposed amendments that resulted in the disclosure referred to in subsection 114(1) of the Act.
The most common cause for invoking Section 114 occurs in national phase applications where the specification is deemed amended under Section 89(4) and (5). Unlike the provisions of Section 89—where the amendments under the PCT procedures are taken to have amended the specification—the amendments to 759725 have been made under Section 104 of the Act. Such amendments need to comply with Section 102(1) of the Act.
Section 102 of the Act deals with the allowability of amendments and reads:
…
(1): An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
If an amendment under Section 104 is compliant with Section 102(1), then Section 114(1) will not be applicable to any claim amended as a result of such amendment.
I think it is well established that the test for claims being “in substance disclosed” in respect of Section 102(1) is fundamentally similar to the test for whether or not claims are fairly based on the matter described. (See Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996 (25 July 2005) and RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353).
That is to say at a practical level, I need to decide whether or not there is a real and reasonably clear disclosure, or whether or not the amended claims as expressed, travel beyond the matter disclosed in the original specification, in order to decide whether or not the amendment is allowable.
759725 as originally filed
In reviewing the original specification, there are clear statements of disclosure of both a heat shield device and an adjustable reflector device. This specification provides a detailed description for an adjustable reflector and includes disclosures of suitable materials for reflective sheets (and variations thereof), sets a definition for the term “double parabolic”, discusses the use of adjustable retainers and importantly discusses the flexed and unflexed states of the reflective sheets (unflexed sheets being “transverse” to each other).
The specification also dedicates Figures 3, 4, and 5 and accompanying description to describing one example of an adjustable reflector device used in conjunction with the shielding device. (I also note that Figures 3-5 appear analogous to Figures 1-3 of application 716550).
It is worth noting the specification at page 7, similar to its parent and grandparent, again states:

“It will be realized that the reflector device according to this invention is not restricted to the specific shape and construction of the resilient skin shown in the example, but may use a skin fashioned from one, two, or more pieces of suitable material of any suitable shape or size so long as the essential feature of being flexed back against a spine or axial crease to create an adjustable double parabolic shape is achieved.”
The disclosure of both a heat shield and adjustable reflector is not unexpected given that the application was originally both a divisional application of an earlier adjustable reflector device (716550) and an additional application to the earliest reflector device (679737). (The additional subject matter being the heat shield).
Given the disclosures made in the original specification as filed, I do not believe one could say that there has been no real and reasonably clear disclosure of the claimed invention in the present specification, particularly when the broadest device claim may be directly read onto the appropriate Figures and accompanying description. The amended claims merely focus on different aspect of the material contained in the description.
Furthermore, I disagree with the opponent’s argument in respect of the original specification being wholly silent on the range implied by the terms “obtuse” or “in the manner of the pages of a book” used in the claims. The specification describes the Figure of the unflexed sheets as being “joined at a transverse angle” and there is a clear disclosure of the requirement that the unflexed sheets are so joined as to meet the double parabola requirements of the sheets in a flexed state. Again my comments with respect to any differences in language apply equally here as they did in my earlier discussion.
I believe the claims to be “internally” consistent with the disclosures made in the originally filed specification. Therefore in my view the claims do not claim matter not in substance disclosed, hence the claims comply with the provisions of Section 102(1), and, Section 114(1) does not apply to this circumstance. I note that whilst the applicant's actions - shifting the emphasis from a V-shaped, perforated heat shield attachment to a luminaire - have inconvenienced the opponent, they are permissible under the Act and Regulations, and, such actions do occur regularly during the prosecution of patent applications.
As a result, I conclude that the claims of patent application 759725 have a priority date earlier than the dates of 17 February 2003 or 4 March 2004 as suggested by the opponent.
.
Provisional Application PM 2504
Finally, to ascertain whether the claims of 759725 are entitled to take the priority date of 18 November 1993—the filing date of the provisional specification PM2504—I refer to the following passages from the provisional specification:
"This invention relates to improvements in devices for reflecting light and heat emitted by artificial sources (luminairs) [sic].
The present invention provides a reflective device comprising a flexible resilient skin bent and held in shape against it's [sic] resiliency by two horizontally adjustable fasteners located at each end of the skin, a horizontal luminair [sic] mount that is vertically adjustable and attaches directly to the underside of the skin, and a pair of ceiling mounts attached at each end of the skin.
In one form of the invention, the flexible resilient skin comprises two rectangular plates both having similar obtuse bends parallel with the longest edges. These plates come together so that one edge and folded flap of one rectangular plate fits neatly inside the corresponding flap and edge of the other, forming a shape similar to an open book. The two plates are detachably fixed together and flexed back against the newly created central bend to achieve a double-parabolic shape secured and adjustable according to tensions applied by adjustable fasteners, which in a preferred form of the invention comprise lengths of chain with hooks that attach to holes in the skin.
…"
It is evident that the features objected to by the opponent, namely "obtuse", "luminaire", and "in the manner of the pages of the book" have all been disclosed in the appropriate context in the provisional application. Therefore, notwithstanding the slight variations in language, I believe the applicant has been consistent in its disclosure of the invention between the provisional application, the grandparent, parent and grandchild applications.
Consequently I do not believe there is a legitimate reason as to why the claims of patent application 759725 are not entitled to the priority date of provisional application PM 2504, that date being 18 November 1993.
CONCLUSION
I consider the invention of application 716550 to lie in the creation of an adjustable reflector device comprising one or multiple sheets of resilient reflective skin (or skins) that may be flexed back against a central or common spine or axis to create a double parabolic shape wherein curvature of the double parabolic shape may be adjusted through the use of adjustable retainers.
Whilst the claims of divisional application 759725 use language such as “obtuse” or “positioned …in the manner of the pages of a book” I believe these claims to be consistent with the invention disclosed in the specification of application 716550 as a whole.
I also find the invention defined in the amended claims of application 759725 to be internally fairly based and consistent with the invention in the specification of 759725 as a whole. Therefore I do not believe S.114 applies in this instance.
As a result, I do not believe the opponent has successfully shown the priority chain between the grandparent application and the present application 759725 to be broken. Consequently I believe the accepted claims of patent application 759725 to have a priority date of 18 November 1993, thereby rendering the post dated prior art identified in my earlier S.59 decision on application 716550 obsolete and the present claims novel and inventive over that art.

Subject to the amendments being allowed in 759725, I direct both applications to sealing.

If the Commissioner has been served with a Notice of Appeal within 28 days from the date of this decision, I direct that sealing does not occur until the appeal has been finally determined or discontinued. I note the time for filing and serving a Notice of Appeal is dictated by Order 58 Rule 4 of the Federal Court Rules. This rule dictates that any Notice of Appeal must be filed within 21 days after the date of the decision and served on the Commissioner within 5 days of the date of filing.
COSTS
In matters before the Commissioner costs generally follow the event. In this instance two separate oppositions were directed to be heard concurrently as the key issues in the opposition of the two applications were similar and intertwined. However, as there were two applications to consider, and the opposition process in terms of preparing and filing evidence was done individually for each application, there are costs associated with each of those respective applications. Consequently I will award costs on an individual basis for each application
Turning to the costs themselves, it has become apparent that throughout the prosecution of parent application 716550, the applicant has not acted in a timely manner to resolve uncertainty around the priority date of the claims and delaying the claiming of divisional status. The applicant was clearly aware of the grandparent application at the time of filing the parent application, and there was no obstacle to hinder the applicant claiming divisional status prior to my substantive decision on 716550. Instead, the applicant waited for just over 8 years from the filing date of the parent to claim divisional status to the grandparent and its earliest priority date, for application 716550 in order to make the novelty issues raised in my substantive decision redundant.
It is also apparent that the uncertainty around the priority dates for 716550 clearly has had an adverse effect on the opposition to application 759725 as the alleged citations raised by the opponent in this application post date the earliest possible priority date which could be afforded to this application.
This delayed resolution has clearly been to the detriment of the opponent, and any other interested third parties. In regard to this manner of prosecution I concur with the observations made in both the earlier Spann and Ayers decisions. In particular this has led to unnecessary and avoidable costs to the opponent in undertaking actions in both applications it might not have needed to had there been some certainty around the priority dates, and therefore, certainty as to the relevance of the material under consideration with respect to novelty and inventive step.
As a result of this action, despite finding in favour of the applicant in both patent application 716550 and 759725, I award respective costs associated with each of these applications individually against the applicant Paul Andrew Cronk.
Lars Koch
Delegate of the Commissioner of Patents
25 January 2007
Patent attorneys for the applicant : Fraser Old & Sohn, Sydney
Patent attorneys for the opponent : Halford & Co, Sydney

Patent Application Number	Filing date	Relationship to other applications	Earliest Priority Date
PM 2504	18/11/1993	Associated Provisional to 679737	18/11/1993
679737 (64800/94)	20/06/94	Sealed 30 July 1997. Parent to 716550, grandparent to 759725	18/11/93 from Prov PM 2504
716550 (24416/95 – PCT application)	24/05/95	Converted to divisional of 679737, parent to 759725	In dispute, (potentially 18/11/93)
759725 (27814/00)	17/4/00	Divisional of 716550, grandchild to 679737	In dispute, (potentially 18/11/93)