Whitco Pty Ltd v Austral Lock Industries Pty Ltd

[1988] APO 40

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 555346 for Letters Patent by WHITCO PTY. LTD. - and - In the Matter of opposition thereto under Section 59 by AUSTRAL LOCK INDUSTRIES PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Patent application 555346 originated from an International application No. PCT/AU83/00088 lodged on 1 July, 1983 which designated Australia, the present application arising following entry to the national phase in Australia. The application derives priority from an earlier application lodged in Australia on 1 July, 19a2. Acceptance of the application and complete specification was notified in the official Journal of 18 September, 1986.

AUSTRAL LOCK lodged a notice of opposition under section 59 on 17 December, 1986 and served its evidence in support on 9 December, 1987. On 11 March, 1988, the patent attorneys for WHITCO advised that the applicant did not propose to lodge evidence in answer and asked for the matter to be set down for hearing.

A hearing was scheduled for 5 July, 1988 in Canberra. Prior to the hearing date, both parties advised that they would not attend the hearing but wished to rely on written submissions - these submissions were duly received from the patent attorneys representing the parties.

The Specification

The invention is concerned with improvements in relation to tumbler locks. The specification describes such locks as follows:

"Key actuated tumbler locks (also known as cylinder locks) are well known and generally comprise a plurality of spring biassed tumbler pins slidably located in a series of aligned parallel bores in a lock body. The pin bores are sealed at their outer ends to retain the biassing springs and at their inner ends, the bores open into a cylindrical cavity. A rotatable key receiving cylindrical barrel is located within the cylindrical cavity.

In the manufacture of such key actuated cylinder locks, the various component parts, and in particular the lock body, are traditionally constructed from brass both for corrosion resistance and, importantly, ease of machining. The pin bores or cylinders are usually formed by drilling through the lock body adjacent the outer or normally sealed ends of the bore through to the interior of the barrel cavity. After the lock is assembled with the barrel tumbler pins, springs etc., the outer ends of the cylinders are closed by press fitted pegs under considerable pressure to close the bores. Alternatively, the cylinders may be formed by drilling through the outer wall of the barrel cavity to form 'blind" bores or cylinders in the lock body.

Whilst the specification acknowledges that the manufacturing methods mentioned are satisfactory, there are disadvantages which are described in the following terms:

"In view of the amount of machining involved, brass is traditionally chosen as an easily worked medium. Of recent years brass however has become a very expensive engineering material. The method of manufacture described above are very labour intensive in the many machining and assembly steps required. A further disadvantage is that in the event of a lost key or damage to the lock, the services of a locksmith are required to individually drill out the cylinder closing pegs for access to the tumbler pins. After repair of the lock or manufacture of a suitable key, the closing pegs must be reinserted individually to close the cylinders."

The aim of the present invention is to overcome or alleviate the disadvantages mentioned.

The specification then incorporates a consistory statement in similar terms to claim 1, and description of a preferred embodiment of cylinder lock with reference to two figures of drawings. The penultimate paragraph of the description is as follows:

"It will also be clear to a skilled addressee that locks according to the invention may be manufactured and assembled more easily than prior art locks of this type and in the event that maintenance is required, the lock may be readily disassembled and reassembled without the problems of prior art locks. Cylinder lock assemblies according to the invention may be manufactured by moulding, die casting, machining or any combination of these or analogous processes. In addition the lock assembly may be manufactured from suitable metals e.g. zinc, aluminium, brass, bronze, steel or the like as well as suitable plastics materials or any combination thereof."

There are 9 claims to the specification. Claims 1 to 5 are as follows:

"1. A cylinder lock including a lock body having a first and a second portion, the second portion having an exterior surface, a key barrel aperture in the second portion, a plurality of tumbler pin passages in said first portion, said passages each having one end communicating with the barrel aperture and another end communicating with the exterior of the body, a cover member adapted to close off each said another end of the passages and having a cavity defined by two pairs of opposed walls for receiving the first portion of the body, said cover member having a periphery which abuts against and conforms with the exterior surface of the second portion.

2. A cylinder lock as claimed in claim 1 wherein said cover member includes projections which extend at least partially into said tumbler pin passages from an exterior end thereof.

3. A cylinder lock as claimed in claim 1 or claim 2 wherein said cover member is adapted for releasable attachment to said lock body.

4. A cylinder lock as claimed in any preceding claim wherein said cover member is releasably secured to said lock body by a screw means extending through said cover member for screw threaded engagement in at least one tumbler passage.

5. A method of manufacturing the cylinder lock of any one of claims 1 to 4 including the steps of:

forming a lock body with a plurality of tumbler pin passages open at both ends and communicating at one end with the exterior of said lock body and at the other end with the interior of a key barrel aperture;

releasably securing a key barrel in said key barrel aperture for rotational movement therein; and

releasably retaining under the influence of biassing means a tumbler pin in one or more tumbler pin passages by releasably securing said cover member to said lock body to close said one end of said tumbler pin passages."

Claims 6 and 7 are further appended claims, and claims 8 and 9 are omnibus claims directed respectively to a cylinder lock and a method of manufacturing a cylinder lock.

Grounds of Opposition and Evidence Lodged

The notice of opposition specified those grounds listed in paragraphs (c) to (i) of sub-section 59. However the written submissions lodged on behalf of the opponent only concern the opposition grounds of prior publication, lack of novelty, obviousness and non-compliance with section 40.

The opponent's evidence consists of two declarations by John Russell Watts. Mr. Watts, who holds degrees in Mechanical Engineering, has been the Managing Director of the opponent company for some 9 years and he designs the locks which the opponent manufactures. In his evidence he draws attention to the features of the lock as claimed in claim 1 of the opposed specification and notes that the features of the cover member conforming with the exterior surface of the second portion of the lock body and having a cavity to receive the first portion were not specifically disclosed or claimed in the application when it was first published. He also refers to US Patent 3928991 referred to in the International Search Report (ISR) of PCT/AU 83/00088 and relies on the disclosure of this US Patent to support the opposition grounds relating to anticipation.

The opponent's written submissions also draw attention to US Patent 3303678 (referred to in the ISR) to support its allegation of anticipation against the opposed specification.

Section 40

Under this heading, the opponent has alleged that the "accepted claims fail to define the invention and are not fairly based on the disclosure of the specification as lodged" on the basis that the invention defined by the accepted claims is not the invention disclosed or claimed in the specification as lodged. Attention was drawn to the feature of the cover member in the accepted specification and claims.

I reject the argument advanced since the point raised is not a matter relevant to the opposition ground of non-compliance with section 40. The opponent's argument really concerns the issue whether the accepted specification claims matter not in substance disclosed in the specification as lodged - as such the provisions of sub-section 159A(l) may be relevant in that the accepted claims may not be entitled to early priority. I see no need to decide the question of priority dates simply because consideration of the opposition grounds concerning anticipation can not be affected given that the prior specifications relied on were all published before 1 July, 1982, the earliest possible priority date. Furthermore, given the provisions of section 159, I note that it is not open to an opponent to object that an accepted specification claims or describes an invention which was not the subject of the specification as lodged.

However the specification, in my view, is not free from deficiencies under section 40. In this regard I refer first to claim 1. The lock defined includes "a lock body having a first and a second portion, the second portion having an exterior surface". Firstly, I note that the claim does not define with any particularity the configuration of, or the constructional relationship between, the first and second portions of the lock body. Secondly, the reference to "an exterior surface" is indefinite in my opinion since it can be interpreted to mean the entire external surface of the second portion or simply a particular area of that external surface. This definition and the overall interpretation of the claim is not assisted by the concluding clause of the claim namely:

"said cover member having a periphery which abuts against and conforms with the exterior surface of the second portion."

The use of the term "periphery" (its normal meaning suggesting the external boundary or surface of the cover) seems inappropriate to accurately define the invention since it is not limited to meaning the peripheral edge of the cover which, from the description (e.g. page 4a line 7), constitutes the part of the cover which contacts the second portion. Furthermore, from the description of the invention and the particular embodiment shown, the cover only contacts and conforms with the surface of the second portion in a particular area, namely that portion adjacent the first portion. The claim is thus not clear in its definition of the invention and as a result lacks fair basis.

Referring to claim 5, this concerns "a method of manufacturing the cylinder lock of any one of claims 1 to 4". Insofar as the claim in its "forming" step refers to the components of "a lock body", "a plurality of tumbler pin passages" and "a key barrel aperture", it is unclear given its appendency to claim 1 and the lock defined therein.

Prior Publication and Novelty

There are the two US Patent specifications relied upon by the opponent to consider under this heading, namely US 3928991 and US 3303678.

US 3303678 (granted 14 February, 1967) discloses a cylinder lock having a case or body consisting of a cylindrical part (formed with a barrel aperture) and a column portion upstanding therefrom, the column portion containing a plurality of bores (pin passages) which are open at the upper end of the column portion and which, at their lower ends, communicate with the barrel aperture. A cap member is fitted over the upper part of the column portion, the cap member having four side walls which completely surround in a tight manner the sides of the upper part and having a base portion overlying the bores and closing them off. The free edges of the side walls of the cap member seat against shoulder portions, or in grooves, on the column portion intermediate its upstanding height.

The opponent submits that claim 1 does not make it clear where the-first and second portions start and finish. The opponent thus argues that the lock of claim 1 could comprise a body of the form shown in the US Patent - the "second portion" being thus constituted by the cylindrical part and that part of the column portion below the shoulders or grooves. I agree that claim I can be so construed. Whilst such a construction necessitates the pin passages being also formed in the second portion, this would seem to be the usual practical configuration in these types of locks to thus enable communication with the barrel aperture. Given that interpretation of the lock body according to claim 1, I am satisfied that the invention defined thereby has been prior published by the cylinder lock disclosed in US 3303678. In so concluding, I do not accept the applicant's submission that the cap member of US 3303678 "does not have a periphery which conforms to the exterior shape of the cylindrical part or body portion", because of my interpretation of the claim in respect of the portions of the lock body. It follows from my conclusion regarding claim I that the method defined by claim 5 lacks novelty.

As to the appended claims, I consider that these are either prior published by, or lack novelty in the light of, US Patent 3303678. In relation to those claims which define a lock having a construction which exhibits differences from the lock disclosed in US 3303678 (e.g. claim 2, claim 4), on applying the novelty test of Dixon J. in Griffin (1942) AOJP 739, I am of the view that "no substantial contribution" to the working of the cylinder lock arises from such differences. For instance, with reference to claim 2, this claim includes the feature of the cover member including "projections", the only constructional limitation of such projections being that they can "extend at least partially into" the tumbler pin passages. In my view, such projections contribute no more to closing the passages or to retaining any springs and tumbler pins therein than a cover without such projections - the only other benefit of the projections according to the description of the preferred embodiment on page 4a is to enable some preloading of such springs, which is a result not directly related to the aim of the present invention and moreover is unlikely to apply to all possible forms of "projections". For similar reasons, I consider that the difference exhibited by the lock defined in claim 4 does not substantially contribute to its working. Hence those claims lack novelty.

I turn now to US 3928991 granted 30 December, 1975. This discloses a cylinder lock having a pin block projecting from a cylindrical housing, the latter having a barrel aperture therein. Pin passages extend through the pin block, opening at one end into the barrel aperture and also being open at their other end. The specification discloses various forms of pin caps for affixing to the pin block to cover the open pin passages. Fig 8 shows a Unshaped cap to cover the sides of the pin block and its top containing the open ends of the pin passages. Fig 6 shows a similar U-shaped cap which also has an end leg or wall which covers one end of the pin block. In both examples, the walls abut and conform with the surface of the cylindrical housing adjacent the pin block. The caps can be secured to the lock body by screws passing through small flanges at the extremities of the walls.

There is one difference between the invention defined by claim I and the disclosure of US 3928991 - the cover member of the claimed invention has two pairs of opposed walls to accommodate the first portion or pin block whereas the cover in the US Patent (Fig 6) only has three walls depending from its rectangular base. Hence claim 1 is not prior published by the disclosure of the US 3928991. However I am of the view that claim I lacks novelty because of this disclosure. Applying the novelty test of Griffin v. Isaacs I find "no substantial contribution" to the working of the cylinder lock arising from the difference mentioned. Both the lock of the opposed specification and that of the cited Patent have lock bodies of similar construction, and the covers for the pin block portion of those locks are such as to be equally effective in firstly, closing off the pin passages, and secondly, enclosing the pin blocks and being fastenable to inhibit any unauthorised access to the pin passages. Accordingly I consider that claim 1 lacks novelty in the light of US 3928991. Similar considerations to those mentioned earlier in relation to US 3303678 lead me to conclude that the appended claims also lack novelty in view of US 3928991.

Obviousness

The opponent's attack on the claimed invention under this ground of opposition is based upon reference to the following:

prior art cited in the International Search Report (which included reference to 10 US Patent specifications including the two identified earlier herein); 

·      cigarette lighters which possess a hinged or removable cover to enclose the exposed lighter elements;

·      Mr. Watts' evidence in paragraphs 21 and 22 of his first declaration.

The US Patents mentioned disclose various forms of cover elements for pin blocks or the open pin passages of cylinder locks. Mr. Watts in his evidence suggests that to provide a cover for the pin passage portion as described in the opposed specification would have been a design modification "well known to any person skilled in the art".

The question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field equipped with the common general knowledge as at the priority date (see Wellcome Foundation Limited v. VR Laboratories Ltd. (1982) RPC 343). Thus a consideration of the question of obviousness must be made against the background of the common general knowledge in the art in Australia. Guidance as to what constitutes such knowledge is found in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Aust.) Ltd. (1980) 144 CLR 253.

Considering the material before me, I agree with the submissions lodged on behalf of the applicant to the effect that evidence as to the common general knowledge in the art has not been provided in this matter. There is no evidence that the disclosures of the various US Patent specifications constituted matters of common general knowledge in the art. Furthermore, I note that while Mr. Watts has been involved in lock manufacture and the design of locks for some 9 years, he has not identified any matters of common general knowledge in his evidence.

In the light of the above comments, I am not satisfied that this opposition ground has been proven and I therefore reject the allegation that the claimed invention is obvious.

Conclusion

In summary I have found the opposition successful in respect of the grounds of non-compliance with section 40, prior publication and lack of novelty. As the specification may contain novel subject matter, I afford the applicant 60 days from the date of this decision in which to propose amendments with a view to overcoming the grounds of opposition upheld and in order to claim such novel subject matter.

I award costs against the applicant.

(T.R. BRUHN)
Supervising Examiner of Patents
I NOV 1988
Patent Attorneys for the applicant: G.R. Cullen & Co., Brisbane
Patent Attorneys for the opponent : Griffith Hack & Co., Melbourne