Trenton Pty Ltd v Michael John Cotterill
[1994] APO 11
•31 January 1994
official notice
decision of a delegate of the commissioner of patents
Application : No. 631691 in the name of Trenton Pty Ltd
Title: Work Surface Support
Action: Opposition to the grant of a patent by Michael John Cotterill; and request under regulation 5.10(1) for directions for the conduct of an opposition under section 59(1) of the Patents Act 1952.
Decision: Issued . Directions for further and better particulars given in relation to certain particulars. Ground of manner of manufacture not supported by particulars. Direction given for time for filing evidence in support.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 631691 by Trenton Pty Ltd, opposition by Michael John Cotterill, and request under regulation 5.10(1) for directions for the conduct of an opposition under section 59(1) of the Patents Act 1952
background
Application No 631691 by Trenton Pty Ltd (Trenton) was advertised accepted on 3 December 1992. On 2 March 1993 Michael John Cotterill (Cotterill) filed a notice of opposition to the grant of the patent. A copy of the statement of grounds and particulars was served on the applicant on 1 April 1993 and the statement filed with the Patent Office on 14 April 1993.
On 28 September 1993 Trenton filed a request under regulation 5.10(1) that the Commissioner give a direction to the opponent to provide further and better particulars. Trenton filed a request to amend the complete specification on 3 December 1993. A hearing was conducted on 8 December 1993 to consider the issue of directions for further and better particulars. Mr E J Harwood (patent attorney of Wray & Associates, Perth) appeared by telephone on behalf of Trenton; Shelston Waters, Sydney (patent attorneys for the opponent) filed written submissions on behalf of Cotterill.
statement of grounds and particulars
I have summarised here the statement of grounds and particulars. The statement of grounds read as follows:
"A patent should not be granted in respect of the claimed invention on the grounds specified in Section 59(1), paragraphs (c), (d), (e), (f), (g) and (h) of the patents Act 1952"
I have summarised the statement of particulars as follows:
A patent should not be granted in respect of the invention as claimed in claims 1 to 13 because:-
(i)Work surface supports including pantographic linkages form part of the common general knowledge in the relevant field in Australia at the priority date of the abovementioned application by reason of the extensive use of such supports by myself and many other manufacturers of desks and office furnishings in Australia. Such pantographic linkage arms and their use are described in many documents for example, ...(2 patent documents); and
(ii)The addition of locking means to pantographic linkages is also well known and used in the art and formed part of the common general knowledge in the desk making industry in Australia before the priority date, examples of such locking means being described in ...(12 patent documents).
A patent should not be granted in respect of the invention as claimed in claim 1 because:
(iii) Claim 1 is not novel in light of each of the following documents: (7 documents).
(iv)The invention as claimed in claim 1 was published in Australia by reasons of the common general knowledge referred to in paragraphs (i) and (ii) above;
(v)The invention as claimed in claim 1 was published in Australia by reason of the publication of each of the documents referred to in paragraph (iii);
(vi)The invention as claimed in claim 1 is not a manner of manufacture having regard to:
(a) the matters of common general knowledge referred to in paragraphs (i) and (ii) above; and
(b) each of the disclosures referred to in paragraph (iii) above;(vii) The invention as claimed in claim 1 was not novel in light of the disclosure in each of the documents in paragraph (iii); and
(ix)The invention as claimed in claim 1 is not novel in light of the disclosures in each of the documents in paragraph (iii) when separately read in light of the common general knowledge referred to in paragraphs (i) and (ii) above.
A patent should not be granted in respect of the invention as claimed in claims 2 to 13 due to:
(x)Lack of novelty, obviousness and prior claiming in light of the following publications: ...(47 documents).
(xi)The specification does not comply with the requirements of Section 40 of the 1952 Act because the claims do not define the invention and are not fairly based. In particular, the following terms are unclear: (specific details are given).
I note that there was no item (viii) in the particulars. I also note that there is no ground of opposition given corresponding to particular (xi).
submissions
The applicant requested that the Commissioner give a direction to the opponent to provide further and better particulars to particulars (i) to (x). The request was accompanied by the following reasons:
"At paragraph (i), the Opponent refers to relevant prior art as comprising "many documents for example Australian Patent Application No. 48536/76 and Australian Patent No. 501471;" the scope of this is unclear as to the documents which are to be included within that statement.
Similarly at (ii) the Opponent refers to relevant prior art by example only which makes it unclear as to which items of prior art are being referred to.
Paragraphs (iii) and Paragraph (x) the Opponents list a large number of prior art documents but there is no indication of the relevance of any of the documents referred to in the statement.
Similarly at paragraphs (iv),(v),(vi),(vii) and (ix) reliance is placed upon the exact listing of documents referred to in regard to Paragraphs (i) and (ii) and the unspecified listing set out at paragraph (iii). In the light of the ruling in Mobay Corporation v The Dow Chemical Company, the statement of particulars is inadequate.
The inadequate Statement of Particulars provided by the Opponent does not provide the Applicant with an adequate indication of the complete case that it has to answer in relation to the above mentioned opposition."
Mr Harwood elaborated on these points at the hearing by discussing each of particulars (i) to (x) in turn.
The opponent did not attend the hearing but instead chose to rely on written submissions. These submissions were as follows:
"Trenton states that paragraphs (i) and (ii) of the particulars are unclear as to what documents are included within the scope of those particulars. I submit, with respect, that these paragraphs of the particulars are directed to the common general knowledge of those persons skilled in the art in Australia and that the cited documents are indicative of that knowledge. It is not necessary for the opponent, in the statement of grounds and particulars, to provide any more "than rudimentary details of the common general knowledge" (Borden Inc v Elkem A/S 24 IPR 146 at 152 and Diamond Scientific v CSL Ltd 26 IPR 15 at 19).
Paragraph (iii) of the particulars refers to a number of prior art documents on which I intend to rely to establish my case. More particularly, paragraph (iii) states that "Claim 1 is not novel in light of each of the following documents ...". To provide any further particularisation would be going to matters of evidence or law rather than the summary form provided. We submit that in light of the comments in Mobay Corporation v Dow Chemical Company (1992) AIPC 90-895 at 38,464 that the present particulars are adequate.
Similar comments apply to paragraphs (iv) to (x) which refer, in summary form, to the matters of common general knowledge and/or published material upon which the opponent intends to rely when establishing the grounds stated.
Trenton has been provided with the grounds of the case they have to answer and the particulars supporting these grounds. When matters of common general knowledge are to be relied upon I have even gone as far to provide additional particulars stating some documents exemplifying such knowledge.
In any event, Trenton has, by way of a request dated 3rd December, 1993 sought to amend the claims. These amendments, if allowed will change the scope of the claims and as such the statement of grounds and particulars may require amendment under Regulation 5.9(1)(b) and (c)."
DECISION
In Mobay Corporation v Dow Chemical Company (1992) AIPC 90-895 the following criteria were developed for the statement of grounds and particulars:
the particulars must state all material facts necessary for the ground of opposition;
(ii) the particulars must only state material facts;
(iii) the evidence by which the facts are to be proved must not be included;
(iv) matters of law should not be included; and
(v) the particulars are to be in summary form.
In ICI v Irenco & Ors 26 IPR 154 the issue of a large number of documents cited in a particular was considered. The hearing officer stated:
"However I believe that the Hearing Officer in stating general rules for the statement of particulars did not anticipate the present circumstances. It seems to me to be logical that where a statement of particulars by reference to a long list of documents makes the substance of the opponents case difficult to determine, then further and better particulars should be sought even if more detail is obtained than would otherwise be the case. As to what constitutes a "long list" I believe that it very much depends on the circumstances in each case. However, in my view, the listing under a particular ground of opposition of any more than 7 to 10 documents by number only would place an unreasonable burden on the applicant in determining the case against it and further particulars should be provided in relation to each document listed."
These decisions appear relevant to the facts of the current situation. I will now consider each of the particulars listed in the statement.
Particular item (i) is directed to the existence of common general knowledge. Mr Harwood argued at the hearing that the particular gives no indication of the source of the common general knowledge. Also there is no identification of the manufacturers referred to in that particular. Mr Harwood also argued that it was unclear what "for example" means in relation to the list of documents. He referred to the Mobay decision (supra) in which the hearing officer decided that a basis for arguing prior publication was limited to the documents expressly listed. On the other hand the opponent submitted that it is not necessary for the opponent to provide any more than "rudimentary details of the common general knowledge", referring to Borden Inc v Elkem A/S 24 IPR 146 at 152. The opponent had even gone as far as to provide additional particulars stating some documents exemplifying such knowledge.
The relevant part of the Borden decision reads as follows:
"I note that the gathering of evidence to establish common general knowledge may be a time consuming endeavour. Hence to have the expectation that a Statement of Particulars should contain anything more than rudimentary details of the common general knowledge to be produced in the opposition would seem both unrealistic and unreasonable."
The hearing officer also considered the degree of particularisation required for common general knowledge in ICI v Irenco (supra):
"Furthermore it is apparent that the level of particularisation required for common general knowledge is unlikely to be the same as for, say, a specific disclosure of prior use".
I note that in the Mobay decision a particular which read as follows was considered:
"Other common general knowledge in the polymer field in Australia prior to the priority date of that claim relating to polycarbonates, for example as illustrated in textbooks including ..."
The hearing officer in that instance considered that this point did not even identify rudimentary details of a material fact, but rather identified the evidence that will be used.
I consider that item (i) of the statement of particulars does provide "rudimentary details" of the common general knowledge. That is, that work surface supports including pantographic linkages form part of the common general knowledge by reason of extensive use of such supports. I also consider that the reference to the documents merely identifies examples of the evidence that will be used. It may be arguable to what extent these patent documents are evidence of the common general knowledge, but that is not a matter I need to consider here.
The comments above also apply to item (ii) of the statement of particulars. However Mr Harwood raised an additional point against item (ii). That is, that the particular includes reference to 12 patent documents. In ICI v Irenco (supra) it was considered that the listing under a particular ground of opposition of any more than 7 to 10 documents by number only would place an unreasonable burden on the applicant in determining the case against it. But as I have already stated I consider that the list of documents identifies evidence that will be used. Criteria (iii) from Mobay for the statement of particulars referred to above states that the evidence by which the facts are to be proved must not be included. It would not be appropriate for me to direct further and better particulars of these documents.
I will not give a direction directed to items (i) and (ii). However I do note that items (i) and (ii) do not particularise any specific ground of objection, but merely state the common general knowledge pertaining to claims 1 to 13.
Item (iii) of the particulars gives particulars for the ground that claim 1 is not novel. As the particular lists only 7 documents I do not consider that an unreasonable burden has been placed on the applicant in determining the case against it. Mr Harwood also stated that there is no indication of the publication dates of these documents. However I consider that in the present case the publication dates are not required to sufficiently particularise the ground of opposition. I consider that item (iii) is adequate.
Items (iv) and (v) refer back to items (i) to (iii). Therefore my comments directed to items (i) to (iii) apply equally to items (iv) and (v).
Item (vi) of the particulars indicates that claim 1 is not a manner of manufacture. Mr Harwood submitted that this was an unusual particular in that it alleges the claim is not a manner of manufacture on the basis of prior art disclosure. Mr Harwood argued that the particular fails to identify how the documents illustrate that the present invention is not a manner of manufacture. I agree with Mr Harwood on this point. In an action for dismissal in L'Aire Liquide v CIG Ltd 24 IPR 77 at 84, the Assistant Commissioner made the following comments:
"Although Mr Allen claimed that the opponent may want to argue such questions as analogous use, clearly there is nothing in the statement of particulars purporting to concern that approach. I note paragraph 1(f) is in respect of manner of manufacture, rather than new manner of manufacture; I consider paragraph 1(f) must go to issues other than those which are properly covered under paragraphs 1(f)(sic) [obviousness], 1(e) [prior publication] or 1(h) [lack of novelty]. Hence the statement of particulars cannot be said to provide any "material facts" upon which ground Section 59(1)(f) is based."
I consider that item (vi) does not provide any material facts on which the ground that claim 1 is not a manner of manufacture is based. Consequently there is no support for the ground mentioned in Section 59(1)(f). The hearing officer in Mobay v Dow considered that dismissal of the ground in such circumstances outside the time limit specified in regulation 5.5(1) would not be appropriate. Therefore, although inadequate, particular item (vi) must stand as it is. I give no direction with regard to the particulars in item (vi).
At the hearing Mr Harwood pointed out that particular item (vii) is identical to item (iii). Both particulars state that claim 1 is not novel in the light of the same set of documents. Item (vii) introduces a redundancy into the statement. In Mobay v Dow the hearing officer ruled that it is not possible for the Commissioner to give a direction to strike out particulars. As I cannot give a direction to strike out this particular, item (vii) must stand as it is.
Item (ix) refers back to the documents in item (iii) when read in light of the common general knowledge referred to in items (i) and (ii). At the hearing Mr Harwood suggested that this was a claim that the invention is not novel based on 19 documents. Presumably this was a reference to the 7 documents listed under item (iii) and the 12 documents listed under item (ii). However I do not consider that item (ix) is claiming lack of novelty based on 19 documents. Rather, it is claiming lack of novelty based on the seven documents listed in item (iii) when separately read in light of the identified common general knowledge. I find that particular (ix) is adequate.
Item (x) is directed to claims 2 to 13. The item claims lack of novelty, obviousness and prior claiming of these claims in light of 47 documents. The particulars do not identify which of the documents relate to novelty, which relate to obviousness, and which relate to prior claiming. In this regard, the particulars are inadequate and do not inform the applicant of the case to answer. I will give a direction for further and better particulars as to which documents relate to each of the three different grounds of novelty, obviousness, and prior claiming.
Also, the listing of 47 documents by number only places an unreasonable burden on the applicant in determining the case against it. Consequently, I will give a direction for further and better particulars in relation to the 47 documents identified in item (x). The degree of particularisation required when a long list of documents is given was considered by the hearing officer in ICI v Irenco (supra):
"The further particulars should briefly and generally identify what information in each of the documents is relied upon in relation to the particular ground of opposition. Any more than that would unduly fetter the opponents case and tend towards the arguing of evidence."
I now have to consider the time in which the opponent should be given in which to provide further and better particulars. The opponent's submissions referred to a request to amend the claims filed on 3 December 1993 and stated that "as such the statement of grounds and particulars may require amendment under Regulation 5.9(1)(b) and (c)". I note from a brief look that the specification as accepted had 13 claims including one independent claim and one omnibus claim. The proposed new claims have 21 claims, including two independent claims and one omnibus claim. Mr Harwood argued that at the time the request for directions was made the amendments had not been applied for. He also stated that the amendments had not yet been incorporated into the specification and in any case must fall within the scope of the claims as they presently stand. Mr Harwood believed that the amendments were therefore irrelevant to the matter of better grounds and particulars.
Another issue I should consider here is that the request for directions for further and better particulars was filed almost six months after the statement of grounds and particulars were served on the applicant. At the hearing Mr Harwood explained that this delay was due to negotiations between the parties. It was only after negotiations broke down that the applicant needed to look at the case it had to answer. However the requirement for a statement of grounds and particulars was introduced to expedite the opposition process. It would seem reasonable then that the applicant should consider the statement and raise the issue of any inadequacies as soon as possible.
In view of all these circumstances I do not think it would be appropriate to direct the opponent to provide further and better particulars before the amendments are finalised. I note Mr Harwood's comments that the amended claims must be within the scope of the claims as accepted. I consider that one month from the date on which the Commissioner notifies the parties of the allowance, refusal, or withdrawal of the request for leave to amend is a reasonable period for the opponent to provide further and better particulars. If the opponent chooses not to amend the statement in response to this direction, then it would be appropriate to give a direction that the relevant grounds are not available for the opponent to argue at the hearing of the opposition.
A further issue which is convenient to consider here is the effect of the filing of proposed amendments on the time for filing evidence in support. A letter was sent to both parties on 13 December 1993 stating that the Commissioner would issue a direction effectively "stopping the clock" on the time for filing evidence until after the allowance, refusal, or withdrawal of the request for leave to amend filed on 3 December 1993. The parties were given ten days to make representations or request a hearing. Neither party replied to this letter, although at the hearing when I suggested this course of action to Mr Harwood he stated that he could see no objection. I will issue such a direction.
conclusions
I direct that further and better particulars be given for the grounds of novelty, obviousness and prior claiming against claims 2 to 13 particularised in item (x). The further and better particulars should identify which documents are being relied on to support the allegation of lack of novelty, which documents support the allegation of obviousness, and which documents support the allegation of prior claiming.
I also direct further and better particulars be given for the 47 documents listed under item (x). The further particulars should briefly and generally identify what information in each of the documents is relied upon in relation to the particular ground of opposition. If the statement of particulars is amended such that there are 10 or less documents cited against any one of the grounds, then further particularisation in relation to those documents would not be required for that ground.
I allow the opponent one month from the date on which the Commissioner notifies the parties of the allowance, refusal, or withdrawal of the request to amend under section 104 to file these further and better particulars. In the case of each direction, if a satisfactory response is not filed within that time, I will give a further direction that those grounds are not available for the opponent to argue at the hearing of the opposition.
I also find that the statement of particulars provides no material facts to support section 59(1)(f) as a ground of opposition. However it is not appropriate for me to dismiss this ground, for the reasons set out in the Mobay decision.
I direct that the time for serving evidence in support will expire one month after the date the Commissioner notifies the parties of the allowance, refusal, or withdrawal of the request for leave to amend filed on 3 December 1993.
costs
The applicant has been partly successful in that I have found some of the particulars to be inadequate. However the applicant has not been as diligent as it could have been in raising the issue of inadequacies. Having considered all the circumstances I believe that both parties should bear their own costs.
Brendan Bourke
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Shelston Waters, Sydney
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