Whitco Pty Ltd v Austral Lock Pty Ltd

[1984] APO 10

In the Matter of the Patents Act 1952

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In the Matter of Application No. 524036 for a Patent by WHITCO PTY. LTD.

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In the Matter of Opposition thereto under Section 59 by AUSTRAL LOCK PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Application No. 524036 entitled REVERSIBLE LOCK MEMBER was lodged on 26 March, 1981, but because it is a divisional of Application No. 51837/79 it is entitled to the priority date of 16 October, 1979.  The application was advertised accepted on 26 August, 1982 and notice of opposition under section 59 was lodged on 22 February, 1983 by Austral Lock Pty. Ltd.
         At the hearing held in Canberra on 15 November, 1983, the applicant was represented by Mr. P. Fisher, patent attorney of G.R. Cullen & Co., Brisbane.  The opponent chose not to be represented at the hearing and instead relied on a written submission lodged prior to the hearing on its behalf by Mr. A. Tatlock, patent attorney of A. Tatlock & Associates, Melbourne.
         The grounds of opposition stated on the notice were:

"Lock mechanisms as described by some of the claims were available prior to the priority date and other claims represent no more than an obvious extension of existing knowledge at the time."

I take this statement to embrace the grounds specified in paragraphs (e), (g) and (h) of sub‑section 59(1).

According to the specification the invention described concerns improvements in locks, particularly to mortice locks, for hinged doors or windows.  The specification mentions that mortice locks generally employed are suitable for only one situation, either right‑hand or left‑hand opening, and that their construction precludes alteration to the alternative use situation. The lock of the present invention is constructed with a reversible tongue so that the same lock can be used either as a right‑hand or left‑hand latch merely by reversing the locking tongue.  (The locking tongue is the part which projects from the lock body to cooperate with a striker plate on the door or window frame to effect latching).  While the specification acknowledges that certain types of reversible tongue locks have been previously proposed (several of these are identified in the description), it points out that the reversal of the tongue of those locks is cumbersome and requires major disassembling of the lock in order to achieve the lock reversal.
         The specification includes a description of one embodiment of the invention with reference to drawings.  It is apparent from the lock described that in accordance with the present invention, the locking tongue is constructed and arranged in the lock body so as to enable the tongue to be easily withdrawn from the lock body, rotated through 180o, and reinserted to change the 'hand' of the lock.  This is possible since the lock tongue is freely slidable within a recess in the lock body without a direct mechanical connection to the lock actuating mechanism.
         Claim 1 is the only independent claim and reads as follows:

"A locking means comprising:‑

a body;

a lock tongue freely slidable within a slotted recess in said body between a first extended position and a second retracted position, said lock tongue being slidingly supported only by opposed surfaces of said recess;

lock actuating means for slidably moving said lock tongue between said first and second positions;

engagement means associated with said lock tongue to engage said lock actuating means; and,

spring biassing means to urge said lock tongue into a normally extended position,

said lock tongue adapted to be reversed in said body by withdrawing said lock tongue from said body, rotating said lock tongue through 180o about its sliding axis and reinserting said lock tongue into the slotted recess in said body."

Evidence lodged in support of the opposition by Austral Lock include the following:

(1)A declaration by J.R. Watts dated 17 May, 1983.

(2)A further declaration by J.R. Watts dated 30 June, 1983 having associated exhibits JRW1 (drawings for components for a mortice lock) and JRW2 (an assembled lock body).

(3)A declaration by K. Tomski dated 30 June, 1983.

(4)A declaration by H.J. Pearson dated 30 June, 1983.

No evidence in answer was lodged by Whitco.
         The opposition by Austral Lock Pty. Ltd, a lock manufacturer, is primarily based on the argument that the present claims are anticipated by locks designed, manufactured and sold by the opponent company before the priority date of the application.  In order to assess this contention, it is necessary to refer in some detail to the opponent's evidence and submission lodged.
         Mr. Watts, who is the Managing Director of the opponent, in his further declaration deposes as follows:

"2.On or about April 1978 it was decided that my company would produce a deadlocking mortice lock and the preliminary steps relating to the production of this lock led to the preparation, on or about 10.7.78, of drawings for components for the lock, which drawings are shown to me and marked Exhibit JRW1.

3.On completion of these drawings, they were given to Centre Tooling P/L who made dies for the cast components of the lock and, after these dies were made, in approximately November 78, the dies were passed to A.F. Diecasters P/L to have the components moulded therefrom, the components being delivered to my company on or about November 78.

4.The locks were assembled and placed on the market in Australia shortly thereafter."

Mr. Tomski, a director of Centre Tooling, declares to the involvement of his company in the following terms:

"2.My company is a toolmaker and in July 1978 was employed by Austral Lock Pty. Limited to make dies for the production of castings for a lock.

3.The dies constitute two separate tools, one being for two components of the body of a lock and the other being four components, including the lock tongue, an actuating member, a locking block and a stop lever.

4.These tools were completed on or about Nov. 1978 and were delivered by my company to Austral Lock P/L.  I have examined the drawings of lock components, which I have been informed are to be exhibited as Exhibit JRW1 to a Statutory Declaration by John Russell Watts in this matter, and these drawings, to the best of my knowledge, appear to be the drawings from which my company worked when making the dies."

For confirmation of A.F. Die Casters involvement in these events, Mr. Pearson, a director/manager of the company deposes:

"2.On or about November 1978 my company was provided with certain dies to produce mouldings for a lock for Austral Lock Pty. Limited and, from my company's records, it produced components from these dies on or about 21/11/1978.  These components were, on completion delivered to Austral Lock Pty. Limited.

3.I have examined the drawings, which I am informed will be exhibited as Exhibit JRW1 to the Statutory Declaration of John Russell Watts, and I believe that these drawings properly illustrate the components which were cast at the time of the initial order."

Exhibit JRW1 comprises photocopies of 5 sheets of engineering drawings.  Identification on the drawings indicate that they were drawn for "Small Parts & Fasteners Co." by J.R. Watts and are dated 12 May, 1978.  Handwritten dates of "10‑7‑78" and "24/9/78" also appear on the drawings.  The drawings are further identified as follows:
                   78L00A, 78L00B            Case Front & Back
                   78L01/1                   Slide
                   78L02/1                   Rocker
                   78L03/1,2                 Bolt
                   78L04/1                   Cam
The "Bolt" shown on the drawings equates with the feature of a locking tongue in the opposed specification.  I note that three of the drawings including 78L03/1,2 bear a stamp imprint to the effect that a condition of the drawing being supplied is that it should not be lent, copied or disclosed to any person or used for any purpose without the written consent of Small Parts and Fasteners Pty. Ltd.  I further note that apart from similar alpha‑numeric numbering, there is no other indication on the 5 sheets of drawings that the parts drawn all constitute elements of the one lock.
         Included with Mr. Watts' further declaration as Exhibit JRW2 is a lock body.  The evidence indicates that this particular lock body differs slightly from the version allegedly produced in 1978 although in operation, it is said to be "effectively identical to the original form of lock" made by Austral Lock.  On inspection I observe that Exhibit JRW2 is constructed so that the locking tongue can be easily withdrawn, rotated and replaced to change the 'hand' of the lock, however I also note that the manner in which the lock tongue is supported by the lock body differs somewhat from the arrangement of the present invention.
         As regards Mr. Watts' declaration dated 17 May, 1983, it comprises a cover page of statutory declaration form having attached thereto additional typed pages "being 10 pages of comment".  The "comment" includes a comparison between each claim and the lock allegedly produced by Austral Lock before October 1979, and opinions on "inventiveness" of each claim.  From this document it is uncertain whether the comments are those of Mr. Watts or of someone else.  Also attached to this declaration is a copy of a letter from Gainsborough Hardware Industries Pty. Ltd. to Mr. Watts advancing opinions on certain aspects of the present opposition, and copies of what appears to be a promotional brochure of "Austral Lock Industries Pty. Ltd." which illustrates and briefly refers to a mortice lock with reversible tongue labelled "Austral Hinge Door Deadlock HD3". The brochure does not show its publication date nor is there any evidence before me establishing when that brochure was published or may have became available to the public.
         The only other material before me advanced by the opponent is the 5‑page submission lodged prior to the hearing by A. Tatlock & Associates.  The extent of this submission is to summarize the evidence lodged and comment on the novelty of the opposed claims mainly with respect to the drawings of Exhibit JRW1.
         At the hearing, Mr. Fisher for the applicant drew to my attention a number of shortcomings in the opponent's evidence and argued that at least certain portions of it were inadmissible as evidence in deciding the present opposition.  His main argument concerned whether the evidence lodged established that publication of the present invention had occurred, particularly whether Austral Lock had produced a similar lock and made it publically available before the priority date, and he submitted that because of its shortcomings, the evidence was inadequate to establish those facts.
         In cases of the present kind, where anticipation is based on alleged prior devices or manufacturing drawings of a device, the onus is clearly on the opponent to establish with certainty such factors as date of availability of the prior devices, or the publication date of such drawings if available to the public.  On considering the evidence lodged by the opponent in this matter, I consider the opponent has not established such publication dates for reasons I will now outline.
         While Watts' declaration of 17 May, 1983 and attached "comment" refer to the "Austral lock in manufacture prior to October 1979" there is no corroborative evidence of that lock's construction or when, if at all, it was manufactured or became freely available to the public.  The letter from Gainsborough Hardware Industries  included with this declaration merely comments without any evidentiary support that "certainly we are aware that your products (Austral Lock's) have been available prior to the Whitco 'invention' being proposed".  Consequently this declaration in my view fails to establish that a lock with features as presently claimed was available before the priority date of the claims.
         Turning now to the declarations dated 30 June, 1983, Mr. Watts deposes that his company decided to produce a mortice lock and so manufacturing drawings were produced and the companies Centre Tooling and A.F. Die Casters were engaged to produce dies and lock components, respectively.  The declarations by Tomski and Pearson confirm that their respective companies were engaged by Austral Lock in 1978 to produce such items.  However these two latter declarations, in my view, raise doubts concerning whether the dies and lock components produced by their companies did in fact arise from the drawings Exhibit JRW1, since they refer to examining drawings "which I have been informed are to be" (Tomski) or "which I am informed will be" (Pearson) "exhibited as Exhibit JRW1".  These statements make it unclear whether the drawings as examined by Tomski and Pearson were those now actually identified as Exhibit JRW1.  Accordingly I consider the opponent has failed to establish with certainty that the companies Centre Tooling and A.F. Die Casters generated lock components in accordance with the drawings of Exhibit JRW1.
         But even were the opponent to establish the manufacture of components in accordance with Exhibit JRW1 by A.F. Die Casters, there is no corroborative evidence to substantiate statements by Pearson that such components were produced "on or about (21 Nov. 1978)" and that these "components were, on completion delivered to Austral Lock Pty. Limited".  Nor is there corroborative evidence to substantiate the statements of Watts that components from A.F. Die Casters were "delivered to my company on or about November 78" or that "(t)he locks were assembled and placed on the market in Australia shortly thereafter". There is no evidence before me to establish when, if at all, those locks were available to the public.  Accordingly I consider the evidence lodged 30 June, 1983 is deficient in that it fails to establish:

(i)the type of lock components which were supplied to Austral Lock and the date of such supply;

(ii)who assembled locks from those components and when;

(iii)when such assembled locks were placed on the market or made freely available to the public, and

(iv)whether the locks placed on the market had a construction as claimed in the present application incorporating a reversible tongue slidably arranged in the lock body as specified.

As previously mentioned, the opposition in this case is primarily based on anticipation by the disclosure of an alleged prior user.  In such circumstances the remarks of Mr. Justice Graham in Seiller's Application (1970) RPC 103 at 106 are apt:

"In my judgment it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross‑examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is consider‑

able.Such corroboration is often best found in documents contemporary with the fact to be proved."

The onus is therefore clearly on the opponent to establish to the necessary degree of certainty that prior user had taken place.  Furthermore, in this case where the alleged prior user article and the relevant facts concerning it appear to be within the knowledge of, or available to, the opponent, the evidential burden on the issue of prior user rests with the opponent.  In the present proceedings, after carefully considering the evidence before me I am not satisfied that the opponent has established that prior user has taken place and accordingly I must find for the applicant in regard to anticipation based on such alleged prior user.
         Apart from the question of prior use there is a further point arising from the evidence lodged and that concerns whether the manufacturing drawings of lock components (Exhibit JRW1) constitute a publication of the present invention.  A determination of that point first requires a consideration as to whether the drawings were made "available to the public", as is required by definition for publication to occur.  The drawings do show dates prior to and including 24 September 1978, that is earlier than the priority date of the present claims.  But no evidence has been provided establishing that those drawings were published in Australia prior to 16 October 1979.  In the absence of any such evidence I can only conclude that the implied confidential conditions specified on three of the drawings have not been breached, and that Austral Lock and any other party had use of the drawings within those conditions.  Consequently, publication of the drawings before the priority date has not been established and on that basis alone, irrespective of what they may disclose, the drawings cannot constitute a publication of the present invention.
         There remains for my consideration the other grounds of opposition advanced namely, that the invention lacks novelty and the invention is obvious. The evidence and submissions presented by the opponent in respect of these matters are of little assistance to me since they are founded upon the "Austral Lock which was in manufacture prior to October 1979" and locks (nature unspecified) of other manufacturers.  For example, comments attached to Watts' first declaration under the headings "Inventiveness" and "Claim 1" state:

"There is nothing substantially novel about a lock described in claim 1 since there are many locks incorporating the features so claimed".

As previously mentioned, it is not apparent to whom those comments are attributable, and more importantly whether they derive from a skilled addressee in the art and hence a person duly qualified to comment on the inventiveness of the present invention.  Furthermore, no details of the "many locks" referred to have been advanced.  I have already determined that the publication of locks by Austral Lock has not been established.  Accordingly I place no weight on the opponent's submissions with regard to novelty and obviousness.
         The only evidence before me to assess the novelty of the present invention consists of the disclosures of three prior Australian patent specifications identified in the description of the subject application, namely 11835/33, 19150/67 and 208,368.  Reference is in fact made to Patent 208368 in the submissions lodged by attorneys for the opponent.
         Each of these specifications disclose mortice locks having constructions enabling the locks to be used either for "right‑hand" or "left‑hand" situations.  There are however significant differences between the lock as claimed and the disclosure of each prior patent specification, such differences relating to the way the lock tongue is received within the lock body.  It is noted that claim 1 requires the lock tongue to be "freely slidable within a slotted recess" in the lock body, to be "slidingly supported only by opposed surfaces of said recess" and furthermore to be "adapted to be reversed in said body by withdrawing said lock tongue from said body, rotating said lock tongue through 180o about its sliding axis and reinserting said lock tongue into the slotted recess in said body".  In my view the invention defined by claim 1 is not deprived of novelty based on the mentioned patent specifications.  Furthermore, there is no other evidence before me to conclude that the invention lacks novelty.
         With regard to the question of obviousness, there has been no authoratative evidence lodged by the opponent to establish what was the common general knowledge in the art in Australia at the priority date.  It is apparent from the judgement in Minnesota Mining and Manufacturing Co. v. Beiersdorf (Aust.) Ltd. 144 CLR 253 that obviousness has to be considered against the background of the proven common general knowledge in the art. Furthermore I do not have the benefit of any other expert evidence in considering whether the invention claimed "was obvious and did not involve an inventive step". Accordingly, in those circumstances, I am unable to find against the present application on the opposition ground of obviousness.

         In conclusion, the onus in an opposition proceeding lies on the opponent to clearly establish its case ‑ it must make it clear that the patent if granted would be clearly bad on the grounds alleged (see Stamp v. Powell Pty. Ltd. 24 CLR 339). In the present case, the opponent has had sufficient opportunity to fulfil the onus placed on it, firstly by advancing evidence in support of its opposition, and secondly by being given the right to be heard in the matter. I have decided that the opponent has failed to establish any of the grounds of opposition on which it relied. I am also satisfied that there are no other lawful objections to the specification. I direct that the application and complete specification may proceed to sealing, subject to any appeal. I award costs against the opponent.

(T.R. BRUHN)