Whitco Pty Ltd v Austral Lock Industries Pty Ltd

[1993] APO 77

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 604092 in the name of WHITCO PTY LTD

Title:  Lock

Action:  Opposition by AUSTRAL LOCK INDUSTRIES PTY LTD under Sec 59

Decision:  Issued            .  Specification does not comply with Sec 40; Applicant afforded an opportunity to amend

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 604092 by WHITCO PTY LTD and

opposition by AUSTRAL LOCK INDUSTRIES PTY LTD under Section

59 of the Patents Act 1952

background

Patent application 604092 by Whitco Pty Ltd (Whitco) was advertised accepted on 6 December 1990. On 21 May 1992 Whitco lodged a request to amend under sec 104 of the Patents Act 1990 and, following examination, details of the request were advertised on 10 September 1992. The proposed amendments were subsequently allowed.

On 4 March 1991 Austral Lock Industries Pty Ltd (Austral) lodged a notice of opposition to the application under sec 59(1) of the Patents Act 1952. Evidence in support of the opposition was served on 3 September 1992 (after several unopposed extensions of time) and evidence in answer was served on 1 December 1992. No evidence in reply was served.

A hearing to determine the opposition was held in Canberra on 7 October 1993.  Whitco was represented by Mr H Eichberger, patent attorney with Cullen & Co, and Austral was represented by Mr A.J.F. Ward, patent attorney with Griffith Hack & Co.

the specification

The specification as amended under sec 104 describes the invention as relating to locks, and in particular to a deadlocking lock.

Locks for security doors or the like were initially provided with a tongue having an inclined or contoured surface which in use allowed the tongue to slide past a striker plate in the door jamb to effect latching and locking of the door.  However these locks could only be used with either a left or a right hand closing door and thus it was necessary for door manufacturers to carry two separate lines of stock.

To overcome this drawback, locks were fitted with tongues which could be reversed so as to render the lock suitable for use with both left and right hand closing doors.  Although an improvement over the initial locks, these reversible locks nevertheless required an additional operation to be performed by the lock manufacturer.

AU application 54925/86 discloses a lock which is suitable for both left and right hand closing doors but which does not require a reversible tongue.  This lock is instead provided with a tongue which is similarly curved on both sides so that, in use, either side is able to slide past the striker plate.  Furthermore the tongue is fully retractable into the lock body and normally extends from the body into a latched position, but can be driven into a deadlocked position in which it extends further from the body.

However it was found with the lock of AU 54925/86 that where the door was ill fitting and a gap existed between the door jamb and the door, and hence the striker plate and the lock, the door could easily be forced open since the tongue extends only a short distance out from the lock body when in its latched position.

The specification ends with eleven claims, of which claim 1 reads as follows:

"1. A lock having a lock body, a main latch tongue normally biased to a first position where it extends a short distance from the body and movable between the first position and a second position in which it extends a distance from the body substantially longer than the short distance and in which it is either latched or in which it may be deadlocked, an auxiliary latch tongue normally biased to extend a short distance from the body and engageable to the main tongue to prevent the main tongue from moving to its second position and movable out of engagement with the main tongue, a deadlocking member movable between a first position where the lock is undeadlocked and a second deadlocked position in which it engages the main tongue to prevent the main tongue being moved from the main tongue second position, said tongues having nose portions which are correspondingly tapered, bevelled or curved on both sides thereof."

The specification explains that since the main tongue is fully extended in both the latched and deadlocked positions, unintentional opening of the door due to poor tolerances between the door and the door jamb which carries the striker plate is eliminated.

evidence

The evidence in support of the opposition consists of a statutory declaration by John Russell Watts accompanied by exhibits JRW-1 to JRW-6.  Mr Watts was also present at the hearing.  The evidence in answer consists of a statutory declaration by Mervyn George Harcourt accompanied by exhibits 1 to 4.  As indicated above, no evidence in reply was lodged.

Mr Watts deposes that he has been the Manager Director of Austral since 1980, and designs the locks manufactured by the opponent.  He is also a graduate in mechanical engineering (Masters degree level).
Mr Harcourt deposes that he is a tool maker by trade.  He also holds qualifications in mechanical engineering from Sweden and has studied industrial design in that country.  During the years 1970 to 1990 Mr Harcourt was employed as a tool maker and designer with various companies, including a Swedish company for which he designed hardware (such as door and furniture locks) for the manufacture of modular walls.  He has been employed by Whitco since September 1990 to design window and door locks and other hardware products manufactured by the applicant.

I will discuss the relevant parts of the evidence where appropriate in my decision.

decision

The notice of opposition lists the grounds available under sec 59(1)(c) to (i). At the hearing Mr Ward indicated that only the grounds of lack of novelty, obviousness and non-compliance with sec 40 would be pursued.

Novelty

As submitted by Mr Eichberger, the test for determining whether a claimed invention lacks novelty is essentially the same as that for infringement, in that a prior disclosure will invalidate a claim "if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim." (General Tire & Rubber Co Ltd v The Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at pages 485-486.

This test is commonly referred to as the reverse infringement test, and authority for this practice in Australia can be found in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228.

In Rodi Wienenberger AG v Henry Showell Ltd (1969) RPC 367 at page 391, infringement of a claim is said to occur when "each and every one of the essential integers" of that claim have been taken. Thus in order to determine whether or not the present claims lack novelty, I must firstly determine whether or not each and every essential integer of the claims are disclosed in any of the various patent specifications included with Mr Watts' evidence.

Before considering these specifications in detail, it is important to note that a limitation expressed in a claim prima facie must be given full effect, as indicating a deliberate exclusion of every thing not within the words of the claim (see Yamazaki Mazak Corp v Interact Machine Tools 22 IPR 79, Canada O'Hara Manufacturing Ltd v Eli Lilly and Co 14 IPR 303, and Shave v HV McKay Massey Harris Pty Ltd (1935) 52 CLR 701). In the present situation, I see no reason to assume anything other than that all the integers of claim 1 are essential to the invention.

AU 54925/86 (Exhibit JRW-2)

As previously noted in this decision, AU 54925/86 is referred to in the description of the prior art as given in the present application.

This specification discloses a deadlock for security doors or the like having a locking tongue which is fully retractable into a lock casing.  A spring is located within the lock casing and engages the locking tongue to urge the tongue to a latched (i.e. "first") position in which the tongue projects a short distance out of the lock casing.  The nose of the tongue is similarly curved on both sides so that, in use, either side can slide past a striker plate to the latched position thereby enabling the lock to be used with both left and right hand closing doors. 

The lock also includes a lock slide which is operable by key-activated means to drive the locking tongue past the latched position to a locked (i.e. "second") position in which the tongue extends a substantial distance out of the lock casing.  A rocker arm prevents return of the slide to maintain the tongue in the second position so as to provide a deadlock effect.

Mr Ward referred to a number of matters in support of his allegation that the claimed invention lacks novelty when compared to this specification.

Firstly, Mr Ward submitted that the spring of AU 54925/86 may be equated with the auxiliary latch tongue defined by claim 1.  I do not agree with this submission.  Although the disclosure at page 6 lines 31 to 33 of AU 54925/86 suggests that the spring  effectively prevents the locking tongue from moving to its deadlocked or "second" position, there is no further suggestion that the spring meets the other requirements of the auxiliary tongue as set down by claim 1.  On the contrary it is clear from AU 54925/86 that the spring is neither movable out of engagement with the locking tongue, nor normally biased to extend a short distance from the lock casing.

As a second line of argument, Mr Ward submitted that auxiliary tongues were commonly known in the art as evidenced by AU 540386,  and also GB 1458749 and 419076, and US 1286344, which were annexed as exhibits JRW-4 to JRW-6 to Mr Watts' declaration.  He then submitted that AU 54925/86 deprived claim 1 of novelty when read in the light of this common general knowledge.

In opposition matters it is necessary for an opponent to prove relevant publication in Australia of any patent specifications or other documentary material upon which it relies to establish anticipation of the claimed invention.  In the present case Austral has failed to show that the specifications of exhibits JRW-4 to JRW-6 were at any time published in Australia, let alone before the priority date.  Mr Eichberger accordingly objected to Mr Ward's submissions saying that he could not rely on the specifications in question as evidence of common general knowledge, and drew attention to the fact that any additional evidence in these proceedings could only be by way of the special leave provisions.  I agreed with Mr Eichberger, and indicated to Mr Ward that if he chose to adduce further evidence by way of special leave, he would need to address that matter promptly after the hearing.  On 25 October 1993 Mr Ward advised the Office in writing that Austral did not wish to seek special leave to serve additional evidence.  I therefore give no further consideration to exhibits JRW-4 to JRW-6.  This also applies to AU 33938/84 and the technical encyclopaedia identified during Mr Ward's submissions since these documents do not form part of the evidence lodged by Austral to support its opposition.

Having regard to my findings above, the only specification left for Mr Ward to base his allegation of common general knowledge is AU 540386.  I note at the outset that the auxiliary tongue disclosed by this specification is not symmetrically tapered, bevelled or curved as in claim 1.  In any event, I do not consider that Mr Ward's allegation can be substantiated solely on the basis of the contents of a single patent specification when account is taken of the guidance provided by the courts as to what constitutes common general knowledge (see, for example, Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253). As no other evidence has been produced to establish that the use of auxiliary tongues had become part of the common general knowledge in the art at the publication date of AU 54925/86, I am not persuaded by Mr Ward's second line of argument. Further to this, I note that AU 54925/86 does not contain "clear and unmistakable directions" to import any of the material contained within AU 540386 to arrive at the claimed invention (General Tire & Rubber, supra) and, as correctly pointed out by Mr Eichberger, it is not permissible to make a "mosaic" of various pieces of prior art for the purposes of assessing novelty (Nicaro Holdings Pty Ltd v Martin Engineering (1990) 16 IPR 545).

There is, in my view, a further and more significant flaw in Mr Ward's attack on the novelty of the claimed invention on the basis of AU 54925/86.  Mr Ward's submissions in this regard seem to imply that the only difference between claim 1 and AU 54925/86 lies in the use of an auxiliary tongue as compared to a spring.  However this approach completely overlooks the fact that AU 54925/86 does not disclose a lock having a tongue movable to an extended position relative to the lock body in which it is either latched or may be deadlocked.  These features clearly have a material affect on the way the claimed invention works for it is by these features that the primary object of the invention is attained.

AU 540386 (Exhibit JRW-3)

The lock disclosed by this specification includes a main bolt 19 slidably mounted in a casing and having a tongue 21 with an angled face.  A pair of flanges 25 extend from each side of the body of the main bolt.  A pair of lateral abutments 26 also extend from the main bolt body with each abutment having a forward abutment face 27. 

An auxiliary bolt 29 which is slidably mounted within the lock casing includes an abutment step which is adapted to cooperate with a latch arm 35.  The latch arm has a latching face 36 adapted to engage abutment face 27 on the main bolt.

An operating knob 38 has a shaft 39 with a circular operating plate 40 mounted to it.  The plate has a slot 61 formed in its circumference.  A pin 42 extends from the plate and is adapted to engage the flanges 25 on one side of the main bolt body as the operating knob is rotated to pull the main bolt rearwardly to a retracted position.  An internal lock cyclinder 43 is mounted to a plate 44 which is movable to engage pin 42 to prevent the operating knob from being rotated.

A second operating plate 45 has a pin 46 adapted to engage the flanges 25 on the other side of the main bolt body to pin 45.  Plate 45 can be rotated by an operating shaft which is in turn rotatable by an external key-operated lock cylinder 49.

A deadlocking lever 50 is pivotally mounted in the lock casing and has a forward locking face adapted to engage abutment 26 on the main bolt body.  A pair of fingers on lever 50 respectively engage in slot 61 in plate 40 and in a similar slot in plate 45.  As either plate is rotated the respective finger on lever 50 is urged out of its respective slot to move the lever to its "free" position.

In operation, the main and auxiliary bolts may be retracted into the lock casing and, by depressing shaft 39 into the casing against a spring loading, the bolts can be maintained in this "first" or retracted position until operating knob 38 is rotated to withdraw shaft 39.  The auxiliary bolt then moves to its extended position and the main bolt moves to a "second" or extended position in which it may engage a striker plate.  Latch arm 35 engages the main bolt to prevent it from extending further from the lock casing, and deadlocking lever 50 is held out of engagement with the slots in plates 40 and 45 by the edge of lateral abutment 26.

Retraction of the auxiliary bolt when it hits the striker plate frees latch arm 35 and enables the main bolt to move further outwardly from the lock casing by a distance corresponding to the distance between abutment face 27 and latching face 36.  In this "third" or extended position deadlocking lever 50 is released and engages abutment 26.  The main bolt is deadlocked in this position since the fingers on lever 50 locate in the slots in plates 40 and 45.  Knob 38 may be operated or a key used in external lock cylinder 49 to move the main bolt from the deadlocked position.  Alternatively, internal lock cylinder 43 may be used to lock knob 38 against rotation so that the lock may only be opened from the inside by first using a key to free knob 38 and then rotating the knob.

Mr Harcourt has made a comparison between claim 1 and AU 540386 in the following terms:

"12. In the lock of patent specification 540386 the deadlocking lever always moves into its deadlocking position when the main bolt is in the position of Figure 1.  There is no equivalent of the operation defined by the language "either latched or in which it may be deadlocked" as appearing in the amended Claim 1 of the opposed specification.

13. The second position referred to in amended Claim 1 of the opposed specification is a substantial change in distance over the first position.  This is not the case with the third position of Patent 540386 and the first position described in that patent.

14. In amended Claim 1 of the opposed specification the auxiliary tongue is said to be engageable to the main tongue and movable out of engagement with the main tongue during operation of the lock.  In the lock of Patent 540386 the auxiliary bolt is slotted and abutment 26 and flange 28 are received in and extend through the slot.  The auxiliary bolt does not move in and out of engagement with the main bolt.  Rather they may simply slide relative to each other.  It is the arm 35 in Patent 540386 which engages the main bolt and not the auxiliary tongue."

Mr Ward responded by submitting that the three differences alleged by Mr Harcourt to exist between claim 1 and AU 540386 do not lead to any "technical effects", which I interpret as an assertion that these differences do not materially affect the way the claimed invention works (as per Catnic Components v Hill & Smith Ltd (1982) RPC 183). I cannot agree with Mr Ward since it is clear from the present specification that it is by the features discussed by Mr Harcourt that the claimed invention attains its primary object in providing a solution to a recognised problem in the prior art.

In drawing his own comparisons between claim 1 and AU 540386, Mr Watts states that a possible distinction concerns the requirement in claim 1 that in the second position the main latch tongue is either latched or may be deadlocked (assuming that when "latched" the door can be opened by simply turning the door handle).  Mr Watts goes on to observe that while the paragraph at page 6 lines 12 to 18 of AU 540386 makes it clear that in the fully extended position the deadlock lever 50 is released to deadlock the main bolt, it is further stated that:

"to unlock the door, either operating plate 40 is rotated by knob 38 or second operating plate 45 is rotated by external lock cyclinder 49."

Thus what Mr Watts seems to be suggesting is that AU 540386 discloses a lock having a main bolt which may be deadlocked or "latched" when in a fully extended position, and so renders claim 1 not novel.  However with the lock of AU 540386 there is no possibility of having the main bolt simply latched in this fully extended position since deadlocking occurs automatically when the main bolt is moved to fully extend.  Moreover the above comparison fails to take into account the features identified in paras 13 and 14 of Mr Harcourts declaration which are not disclosed by AU 540386 and, as I have already indicated, are essential features of the claimed invention.
Mr Watts makes a further comparison between claim 1 and AU 540386 as follows:

"15. When comparison is made .... the major feature of Claim 1 of the opposed application that is not disclosed in the inventor's earlier patent is the fact that the main lock tongue has a nose that is correspondingly tapered, bevelled or curved on both sides.  I thus conclude that to overcome the necessity or re-arranging the main bolt to reverse the operation of the lock as disclosed in the above paragraph, the inventor has simply made the main tongue symmetrically curved or tapered in exactly the same way as I did in my earlier Patent Application 54925/86, as in fact, acknowledged by the applicant on page 2 of the opposed specification."

This comparison again disregards a number of essential features of the claimed invention which are not found in AU 540386.  In addition, and similar to before, I consider that AU 540386 and 54925/86 cannot be regarded as connected documents.

In his final submissions on the question of novelty Mr Ward argued that the prior art relied on for the purposes of the opposition disclosed a tongue movable to either an "undeadlocked" or an extended "deadlocked" position, which is in essence all that is defined in claim 1.

I do not agree with this rather simplistic line of attack since it overlooks the specific requirements of claim 1 which serve to distinguish the claimed invention from AU 54925/86 and 540386.

On the basis of the foregoing I conclude that the specifications of exhibits JRW-2 and JRW-3 do not disclose all the essential features of claim 1 and, having regard to the reverse infringement test, I am unable to find that these documents deprive the claimed invention of novelty.

Obviousness

The question of obviousness involves an investigation of whether the claimed invention would have been obvious to a non-inventive skilled worker in the field equipped with the common general knowledge as at the relevant priority date (Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd (1982) RPC 343). Thus a consideration of the question of obviousness must be made against the background of the common general knowledge of the art in Australia. As previously indicated, guidance as to what constitutes such knowledge may be found in Minnesota Mining and Manufacturing, supra.

Mr Ward submitted that the claimed invention is an obvious development of AU 540386.  In taking this submission further, Mr Watts comments as follows:

"19. In my experience in the lock industry, lock tongues need to present an angle of about 45 degrees to the striker plate so that there is a reasonable chance of the striker ramping the bolt in during latching.  Consequently, if the door designer wishes to use an equally bevelled tongue, it follows that the tongue should extend further into the door jamb during deadlocking so it can properly engage in a striker plate.  It is thus my assertion that a locking tongue that is equally curved, tapered or bevelled on each side must, to work satisfactorily, have the capacity to move to a third or fully extended position.  The problem with designing a lock where the tongue projects a substantial distance from the casing is that it becomes very difficult to cause the tongue to ride up against the striker plate.  Thus, the auxiliary bolt is used to hold the tongue in an intermediary position which allows the tongue to ride past a striker plate for subsequent release when the auxiliary tongue becomes depressed.  This particular solution to the problem is clearly disclosed in the inventor's earlier application ...."

In my opinion Mr Watts' evidence needs to be viewed with caution since as an inventor in the art he appears over-qualified for the role of "non-inventive skilled worker in the field".  In any event, and as pointed out in Minnesota Mining and Manufacturing, supra, where reliance is placed upon a particular publication it must be shown that the information contained in it was common general knowledge in Australia at the relevant date.  None of the evidence to which I have referred establishes that AU 540386 had at any time entered the body of common general knowledge of those working in the field in Australia, and I would add here that while this document has been admitted as prior art by the present application, it does not follow that such admitted prior art is admitted to have been part of common general knowledge at the relevant date (see Dart Industries v Decor Corporation 11 IPR 385).

Furthermore, and as also pointed out in Minnesota Mining and Manufacturing, supra, where a combination patent is involved, it needs to be shown that it would have been obvious to not only select the separate features which make up that combination, but also to select the particular combination of those features.  Mr Watts' evidence fails to show that it would have been obvious to arrive at the combination of features claimed by claim 1 , and tends rather to isolate a particular feature of the combination claimed and then allege that the addition of that feature can be shown to be obvious.  The use of such ex post facto reasoning to support an allegation of obviousness has been criticised on many occasions by the courts.

On the basis of the above, I find that the claimed invention is not obvious.

Section 40

Mr Ward submitted that claim 1 is not clear since it fails to establish how the main latch tongue is moved to the second position.  Mr Ward suggested that as a consequence of this deficiency the term "movable" as it appears in claim 1 includes the use of a key for which there is no fair basis in the description.

I agree with Mr Ward on this point.  As stated by a number of passages throughout the description, the main and auxiliary latch tongues are both spring-biased to extend outwardly of the lock body.  However the main tongue is held in its first position and prevented from moving to the second position through engagement with the auxiliary tongue.  The auxiliary tongue is movable, when the door is closed, by action against the striker plate to a retracted position to release the main tongue which is then urged by its respective spring to the second position.  Thus, when the door is in the closed position, the main latch tongue extends a substantial distance within the recess of the striker plate and minimises the possibility of an ill-fitting door being accidently opened by a gust of wind or a strong blow.

On the other hand, although claim 1 states that the main tongue can move from the first to the second position, and that the auxiliary tongue operates to prevent the main tongue from moving to the second position, there is no mention in the claim of the main tongue being released from the auxiliary tongue and urged to the second position when the door is closed.  Claim 1 additionally fails to mention that the auxiliary tongue engages the main tongue to maintain it in the first position.  I am also inclined to agree that the expression "engageable to" at claim 1 line 8 does not necessarily mean that the main and auxiliary tongues are directly engageable with one another as specified by the description.

In para 20 of his declaration, Mr Watts asserts that claim 2 adds nothing to claim 1 and is therefore redundant.  Mr Ward elaborated on this point at the hearing by explaining that the qualification "so that they may be employed with a left or right hand closing door" in claim 2 is a feature inherent in claim 1.  I find myself in agreement with Mr Ward since it seems from the description of the prior art as given by the present application that by having the nose portions of the tongues correspondingly tapered, bevelled or curved on both sides as in claim 1, either side is able to slide past the striker plate so that the tongues are suitable for both left and right hand closing doors.  Alternatively, if such suitability is in fact dependent on the use of bevelled nose portions only, I am left in doubt as to what purpose the tapered and curved nose portions of claim 1 are intended to fulfil.

Mr Ward made the final point that the expression "substantially longer" at claim 1 line 5 did not necessarily mean that the main tongue extended a substantial distance from the lock body when in its second position.  In reply Mr Eichberger drew attention to the fact that according to claim 1 the main tongue extends a short distance from the lock body when in the first position, and a distance from the body substantially longer than this short distance when in the second position.  He then submitted that the net effect of these requirements of claim 1 was that the distance of the main tongue when in the second position is defined relative to its distance from the lock body.

In my view, and applying the principles of purposive construction (Catnic Components, supra), claim 1 suffers no lack of clarity in this matter - any lack of clarity derives solely from applying a strained construction on the relevant portion of the claim.  Thus, in the context of claim 1, there is nothing in the claim or description to suggest anything other than the main tongue extends a substantial distance from the lock body when moved to its second position, and I take "substantial" to mean a distance sufficient to at least minimise the risk of unintentional opening of an ill-fitting door when the main tongue is in the latched position.

There is one further point worth mentioning here.  On page 15 line 2, claim 4 refers to movement of the auxiliary tongue to its second position.  However claim 1, to which the claim in suit is indirectly appended, associates the "second position" with the main tongue. 

conclusion

I have found that the opposition grounds of lack of novelty and obviousness have not been established.  However I have found certain defects in the claims regarding their compliance with sec 40, and thus the opposition succeeds on this ground.  As these defects can, in my view be easily overcome, I allow Whitco 60 days from the date of this decision to propose amendments accordingly.

I have found that Austral has succeeded in establishing a ground of opposition and thus, in accordance with the general principle that costs follow the event, I award costs against Whitco.

O.L.Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Cullen & Co,

Brisbane

Patent attorneys for the opponent   :  Griffith Hack & Co

Melbourne