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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1984] APO 10
Decision Date: 5 July 1984

CaseChat Overview and Summary

Whitco Pty Ltd lodged an application for a patent for a reversible lock member on 26 March 1981. Austral Lock Pty Ltd opposed the application on the basis that the invention was anticipated by prior art, lacked novelty, and was obvious. The opposition hearing took place on 15 November 1983 before a Supervising Examiner of Patents. The primary issue before the court was whether the invention was anticipated by prior art, and if not, whether it lacked novelty or was obvious. The opponent, Austral Lock, relied on its own manufacturing history and drawings to argue that the invention was anticipated. However, the court found that the opponent had not established the necessary details to prove anticipation, such as the exact date of manufacture and public availability of the allegedly anticipating lock. The court also found that the drawings provided by the opponent did not constitute a publication of the invention as they were subject to confidentiality conditions.

Furthermore, the court found that the invention was novel as it differed significantly from the prior art patents cited. The court also found that the invention was not obvious as there was no evidence to establish what was common general knowledge in the art at the priority date. The court concluded that the opponent had failed to establish any of the grounds of opposition on which it relied, and that there were no other lawful objections to the patent application. The court directed that the application and complete specification may proceed to sealing, subject to any appeal, and awarded costs against the opponent.

This case highlights the importance of establishing clear and detailed evidence to support a claim of anticipation in a patent opposition. The court emphasised the need for the opponent to establish the necessary details to prove anticipation, such as the exact date of manufacture and public availability of the allegedly anticipating invention. The court also emphasised the need for the opponent to establish the common general knowledge in the art at the priority date to prove obviousness. This case serves as a reminder to patent applicants to ensure that their applications are novel and non-obvious, and to patent opponents to ensure that they have sufficient evidence to support their opposition.

Orders