FEDERAL COURT OF AUSTRALIA

 

Mather v Lockwood Australia Pty Ltd [2001] FCA 1814

PATENTS – claimed invention relating to lock barrel assembly and key – opposition upheld by Commissioner of Patents – appeal by applicant – whether requirements of novelty and inventiveness clearly not satisfied – whether specification meets requirements of s 40 of Patents Act 1990 – nature of appeal from opposition proceedings – whether patent would clearly be invalid

Patents Act 1990 (Cth) ss 7, 18, 40, 59, 60, 104

F. Hoffman La-Roche AG v New England Biolabs Inc [2000] FCA 283 cited

Décor Corporation v Dart Industries (1988) 13 IPR 385 cited

Leonardis v Sartas (No. 1) Pty Ltd (1996) 67 FCR 126 cited

Winner v Ammar Holdings (1993) 25 IPR 273 cited

R.D. Werner & Co Inc. v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 cited

Universal Oil Products Co. v Montsanto Co. (1972) 46 ALJR 658 cited

Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 cited

Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 cited

Tidy Tea v Unilever (1995) 32 IPR 405 cited

SEIJA AULIKKI MATHER v LOCKWOOD AUSTRALIA PTY LTD

 

 

 

 

NG 1000 OF 1997

 

 

 

 

 

 

EMMETT J

20 DECEMBER 2001

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1000 OF 1997

 

BETWEEN:	SEIJA AULIKKI MATHER APPLICANT
AND:	LOCKWOOD AUSTRALIA PTY LTD RESPONDENT
JUDGE:	EMMETT J
DATE OF ORDER:	20 DECEMBER 2001
WHERE MADE:	SYDNEY

 

THE COURT ORDERS THAT:

 

1.      The appeal be upheld.

2.      The decision of the delegate of the Commissioner of Patents dated 13 May 1997 be set aside.

3.      In lieu of the decision referred to in Order 2, the decision be that the grounds of opposition raised by the respondent are not made out.

 

4.      The respondent pay the applicant’s costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 1000 OF 1997

 

BETWEEN:	SEIJA AULIKKI MATHER APPLICANT
AND:	LOCKWOOD AUSTRALIA PTY LTD RESPONDENT

 

JUDGE:	EMMETT J
DATE:	20 DECEMBER 2001
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1                     Australian patent application number 652160 (“the Application”) was accepted by the Australian Patent Office (“the Office”) on 29 June 1994. The grant of a patent in respect of the Application was opposed by the respondent, Lockwood Australia Pty Ltd (“Lockwood”), pursuant to notice of opposition dated 18 November 1994.  A hearing concerning the opposition was conducted by a delegate of the Commissioner of Patents (“the Commissioner”). On 13 May 1997 the delegate made a decision “that the opposition succeeds”.  The applicant, Seija Aulikki Mather (“the Applicant”), is the assignee of all of the rights in the Application.  However, the Applicant took no part in the hearing.

2                     The delegate recorded the belief that the complete specification that is the subject of the Application (“the Specification”) could be amended to overcome the grounds of opposition and, accordingly, allowed 60 days within which to propose amendments.  No amendments were proposed by the Applicant.  Rather, notice of appeal pursuant to s 60(4) of the Patents Act 1990 (“the Act”) was filed in this Court on 27 November 1997.  That notice of appeal was filed out of time.  However, without opposition from Lockwood, I made an order that the time for filing the notice of appeal be extended up to and including 28 November 1997. 

3                     It has been accepted by both parties that a decision was made under s 60(4) by the Commissioner’s delegate so as to enliven a right of appeal to the Federal Court, notwithstanding that the delegate allowed a period of 60 days within which to propose amendments.  I have been informed by counsel for the Applicant that, following the filing of the notice of appeal, an application has been made for amendment of the Specification.  The Applicant is content that, irrespective of the outcome of this appeal, she will be able to pursue that amendment application before the Commissioner. 

4                     On one view of the matter, a decision that the Specification is bad, for whatever reason and on whatever basis, would lead to the conclusion that the Application should be refused.  Once the opposition to the grant of a patent has succeeded, that would be an end of the matter and no patent would be granted.  An alternative view is that, notwithstanding that a decision has been made that an opposition should succeed, it is still open to the Commissioner to consider an application for leave to amend pursuant to s 104 of the Act.  That is to say, even though such a decision has been made, until such time as the Commissioner actually refuses a grant, there would still be a patent application pending upon which an application under s 104 could operate.  I express no view on the question.

5                     It may be that it would be open to the Court to declare that the present wording of the Specification is bad, for whatever reason, but make that declaration without prejudice to any right on the part of the Applicant to amend the Specification in a manner that would avoid those defects – see Broken Hill Proprietary Company Limited v American Can Co. 29 ALR 424 at 427 and R v Smith (Commissioner of Patents) Ex Parte Mole Engineering Pty Ltd (1981) 35 ALR 119 at 125. However, the Applicant has not requested the Court to adopt such a course, should the Court hold that the Specification is bad as it stands but form the view that its defects could be cured by amendment.

6                     There has been considerable evidence and detailed argument in the present proceeding.  I have reservations as to the desirability of such a process.  An opposition proceeding should be directed to determining whether any patent granted pursuant to an application under challenge would clearly be invalid.  Doubtless there will be cases where an opponent will succeed in opposition.  Because the Applicant had not appeared in the opposition proceeding before the Commissioner’s delegate, I considered that it was appropriate for additional evidence to be adduced.  In the ordinary course, however, where there has been a fully contested proceeding before the Commissioner, I would have reservations about permitting voluminous additional evidence to be adduced before the Court on the hearing of an appeal from a decision of the Commissioner or her delegate. 

STATUTORY FRAMEWORK

7                     Section 29(1) of the Act provides that any person may apply for a patent for an invention by filing a patent request.  An application may be a provisional application or a complete application.  Under s 29(4) a patent request in relation to a complete application must be accompanied by a complete specification.  Under s 40(2) a complete specification must:

·        describe the invention fully, including the best method known to the applicant of performing the invention; and

·        end with a claim or claims defining the invention.

Section 40(3) provides that the claim or claims must be clear and succinct and must be fairly based on the matter described in the complete specification.

8                     Under s 43, each claim of the specification must have a priority date to be determined in accordance with s 43(2).  It is common ground that the priority date in respect of all claims in the Specification is 21 May 1990 (“the Priority Date”).

9                     Under s 44 of the Act, where a complete application has been made, the applicant may ask for an examination of the patent request and the specification relating to the application.  Section 45(1) then requires the Commissioner to examine the request and specification and report on certain matters relating to the validity of any patent that would be granted pursuant to the request.  Subject to certain exceptions not presently relevant, s 49(1) of the Act provides that, if the Commissioner considers that there is no lawful ground of objection to a patent request and complete specification relating to an application, the Commissioner must accept the request and specification.  Under s 49(5), where the Commissioner accepts a patent request and complete specification, the Commissioner must notify the applicant in writing of the acceptance and publish a notice of the acceptance. 

10                  Section 59 provides that any person may oppose the grant of a patent on one or more of the following grounds, but on no other grounds:

·        that the nominated person is not entitled to the grant of a patent for the invention;

·        that the invention is not a patentable invention because it does not comply with s 18(1)(a) or s 18(1)(b);

·        that the specification does not comply with s 40(2) or s 40(3).

11                  Section 18(1)(b) provides that a patentable invention is an invention that, so far as claimed in any claim, when compared with the prior art base as it existed before the priority date of that claim:

·        is novel; and

·        involves an inventive step.

Section 7(1) deals with the concept of novelty and s 7(2) deals with the concept of inventive step. 

12                  Section 7(1) – s 7(3) provides as follows:

“(1)     For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a)       prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;

(b)       prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;

(c)        prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.

(2)       For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.

(3)       For the purposes of subsection (2), the kinds of information are:

(a)       prior art information made publicly available in a single document or through doing a single act; and

(b)       prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;

being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”

13                  Regulation 5.3(1) provides that any person who intends to oppose the grant of a patent under s 59 must file a notice of opposition within three months of publication of the notice of acceptance under s 49.  Section 60(1) requires that, where the grant of a patent is opposed, the Commissioner must “decide the case in accordance with the regulations” (emphasis added).  Under s 60(2) the applicant and the opponent must be given a reasonable opportunity to be heard before the case is decided.  Section 60(4) provides that the applicant and any opponents may appeal to the Federal Court against a decision of the Commissioner under s 60.  The present proceeding has been commenced pursuant to s 60(4).

14                  While s 60(4) uses the word “appeal”, it is clear that a proceeding in this Court under s 60(4) is in the original jurisdiction of the Court.  The appeal is a hearing de novo, in which an opponent has the onus of satisfying the Court that the grant of a patent should not be made.  However, an appeal is in the nature of a summary proceeding.  Thus, before upholding opposition to the grant of a patent under s 60, it should appear clear to the Court that no patent granted in respect of the relevant application would be valid.  Before the Court should uphold the opposition by Lockwood to the grant of a patent to the Applicant, the Court should be clearly satisfied that such a patent, if granted, would not be valid – see F. Hoffman La-Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [30] and [67].  Thus, the proceeding is, in a sense, summary in nature.  That is to say, the proceeding does not require a full enquiry into and examination of the issues that would arise on a the hearing of a revocation suit. 

THE FIELD OF THE INVENTION

15                  The Specification describes the invention as “a lock barrel assembly and key therefor”.  The body of the Specification describes the field of the  so-called invention in the following terms:

“This invention relates to key operable locks.

Conventional locks consist of a lock barrel rotatably received within a lock body.  The lock barrel is provided with spring loaded pins. The lock is operable by a key having a key blade, the profile of which co-operates with the spring loaded pins; some lock barrels include locking or side bars which are permitted to move radially inwardly when the pins are properly positioned, allowing the barrel to be rotated to the unlocked position.

These conventional locks are prone to tampering and may be ‘picked’ with relative ease.  In addition, the number of possible combinations is limited.  The lock barrel is of complex construction and is therefore expensive to manufacture, repair or alter, requiring a vast number of parts to be held in stock by locksmiths.

It is an object of the present invention to overcome or at least substantially alleviate some or all of the above disadvantages.”

The field is more specifically described as that of “disc tumbler locks”, as distinct from “pin tumbler locks” and “wafer locks”.  Pin tumbler locks and disc tumbler locks were in common use in Australia for many years before the Priority Date.

16                  The features of a pin tumbler lock are as follows:

a.         Operation by a key.

b.         A cylinder body.

c.         A lock barrel.

d.         The presence inside the lock barrel of:

(i)         chambers (a pin tumbler lock usually has at least 5 chambers);

(ii)        a bottom pin which sits within each of the chambers in the lock barrel;

(iii)       a top pin which sits on top of the bottom pin with part remaining in the cylinder body and part remaining in the lock barrel. 

e.         Springs which sit on top of the top pins and which force the top and bottom pins down into the lock barrel.

f.          A cam, which operates the door latch or other similar mechanism.

 

17                  When a pin tumbler lock is in the locked position each of the top pins crosses the shear line.  The “shear line” is the gap (usually about 1/30,000 of an inch) between the lock barrel and the cylinder body.  In order for the lock barrel to rotate and thereby release the lock to the open position, the top pin must be completely within the cylinder body part of the chamber and the bottom pin must be level with the outer surface of the lock barrel.

18                  A pin tumbler lock is operated by inserting the key fully into the key hole.  When the key is so inserted, the shape of the key forces up each bottom pin in such a way that the top of each bottom pin is aligned with the shear line between the lock barrel and the cylinder body.  The barrel may then be rotated by turning the key, thereby moving the latch or other similar mechanism and opening the lock.

19                  The features of a wafer lock are as follows:

a.         Operation by a key.

b.         A lock body, the outer configuration of which is usually cylindrical or square.

c.         A rotatable lock barrel located within a cylindrical bore of the lock body.

d.         A locking bar which is located partly in the barrel and partly in the body when the lock is in a locked condition.

e.         The presence inside the lock barrel of one or more and up to six wafers.  The wafers may be of various shapes.  Each wafer has a recess in the outer surface of the wafer for the entry of the locking bar.

f.          Springs which force the locking bar into the recesses in the outer surface of the wafers and which assist in maintaining each wafer in a predetermined position.

g.         A cam, which operates the door latch or other similar mechanism.

20                  When a wafer lock is in the locked position, the locking bar crosses the shear line, being the gap between the lock body and the barrel as described above (paragraph [17]).  In order for the lock barrel to rotate, and thereby release the lock to the open position, the lock barrel must be completely within the recesses in the outer surface of the wafers and within the cylinder body.  When the key is fully inserted into a wafer lock, the wafers are moved relative to one another so that all wafer recesses are aligned.  The locking bar can then move into the recesses in the outer surfaces of the wafers, aided by the pressure from the two springs.

21                  Some locking systems that are described as “wafer locks” do not have a locking bar.  In those locks the wafers themselves cross the shear line and insertion of the key permits the wafers to move out of the shear line. 

22                  A typical disc tumbler lock prior to the Application included a lock body or cylinder, a hollow barrel rotatably mounted in that cylinder, a locking bar and a group of discs arranged in face to face relationship and rotatably mounted in the barrel.  The locking bar extended in the longitudinal direction of the barrel and is arranged to cross over the shear line between the cylinder and the barrel when the lock is in the locked position and thereby prevent rotation of the barrel relative to the cylinder.

23                  Each of the discs had an opening through which a key can be inserted.  Insertion and rotation of the correct key caused or enabled each disc to rotate relative to the barrel to adopt a predetermined position of rotation at which a recess in the periphery of the relevant disc was aligned with recesses in the peripheries of all other discs of the series.  When the recesses were so aligned, they formed a channel which would receive part of the locking bar.  That enabled the locking bar to move radially inwards to a position at which the barrel was free to rotate relative to the cylinder. 

24                  That description applies specifically to the Abloy system, a disc tumbler lock that was being marketed at the Priority Date.  A pamphlet in relation to the Abloy system described its functions as follows:

·        The key is inserted in the keyway.  It does not meet any resistance by springloaded parts.  Wear and tear is next to nothing.

·        The key is turned 90 degrees clockwise.

·        The right key turns the rotating detainer discs to the correct combination.  A wrong key never locates the discs correctly.

·        When the discs are in the correct combination the key can be turned further and the locking bar is pressed into the slot of the cylinder drum, which can then rotate freely and open the lock.

·        By turning the key at least 90 degrees counter clockwise it can be withdrawn.  The detainer disc combination is scrambled and all the cylinder parts regain their initial position.  The key can be withdrawn only when the cylinder is in the locked position.

The function of the lock is summarised in the pamphlet as follows:

“In principle every Abloy lock functions in two phases.  Not until the key operates the cylinder does the cylinder operate the lock case.”

THE INVENTION claimed in the specification

25                  The Specification contains fifteen claims.  Twelve of the claims, being Claims 1 to 11 and 14 relate to a lock barrel assembly (“the lock barrel claims”) and the other three (“the key claims”), being Claims 12, 13 and 15, relate to a key for operating the lock barrel assembly.  The principal claims are Claim 1 and Claim 12 and they are in the following terms:

“1.       A lock barrel assembly operable by a key and adapted to be received within a hollow lock body, the lock barrel assembly comprising a hollow base having a longitudinal axis, at least one disk rotatably supported in the base and extending generally normal to the axis, the or each disk having an aperture for passage of the key, a key engaging means adjacent the aperture and adapted to engage the key so that the key is capable to locating the or each disk at a predetermined position about the longitudinal axis without rotation of the key, and at least one locking bar operatively associated with the or each disk and adapted to move radially relative to the longitudinal axis from an outer position to an inner position only after the or each disk is located in its predetermined position by the key, characterised in that the or each disk includes a projection or pin adapted to be received in a slot, groove, hole or the like in the or each locking bar.

………………………

12.       A key for operating the lock barrel assembly as claimed in any one of claims 1 to 11, wherein the key bears at least one longitudinal angled track cut into a curved surface, the track being adapted to receive the key engaging means.”

26                  Claim 1 describes a lock barrel assembly that has the following features:

1.1       a hollow base having a longitudinal axis,

1.2       discs rotatably supported in the base and extending generally normal to the axis,

1.3       each disc having an aperture for passage of a key,

1.4       a key engaging means on each disc adjacent the aperture of each disc adapted to engage a key,

1.5       so that a key is capable of locating each disc at a predetermined position about the longitudinal axis without rotation of the key,

1.6       one or more locking bars operatively associated with each disc and adapted to move radially relative to the longitudinal axis from an outer position to an inner position but only after each disc is located at its predetermined position by the key,

1.7       each disc having a projection or pin adapted to be received in a slot, groove, hole or the like in the locking bar or each locking bar.

 

27                  Claims 1 to 11 and 14 extend to a lock barrel assembly that has one or more discs.  I have simplified the description of the features by omitting reference to the possibility of there being only one disc.  Where there is more than one disc, the discs may be identical but they need not be identical. 

28                  Claim 12 describes a key that has the following features:

12.1     capable of insertion into the aperture of the disc, as described in feature 1.3 of the lock barrel assembly;

12.2     able to engage the key engaging means on the disc so that the key is capable of locating the disc at a predetermined position about the longitudinal axis without rotation of the key, as described in feature 1.4 of the lock barrel assembly.

12.3     having at least one longitudinal angled track;

12.4     the track being cut into a curved surface of the key; and

12.5     the track being adapted to receive the engaging means on the disc (an overlap with feature 12.2 above).

 

29                  The Specification states that, in the interests of security, the physical co-relation between the locking bar and the key should differ markedly, so that even when placed side by side there is no apparent resemblance.  Such lack of physical resemblance is said to be possible because the discs “comprise transfer or scrambling means linking the locking bar and the key”.  As the key is inserted into the lock barrel assembly and the key arranges the discs in their predetermined positions, the discs essentially pick up the “code” or combination from the key.  The code or combination is transferred to the locking bar, even though the physical configuration of the locking bar is different from that of the key.

30                  When the correct key is inserted in the lock barrel assembly, the discs are rotated so that each of the external projections or pins aligns with a slot, groove or hole in the locking bar.  By turning the key, the locking bar is pushed from its groove in the hollow lock body and meshes with the projections or pins.  Thus, the lock barrel assembly can rotate, permitting unlocking.  Because each of the projections or pins is meshed with a slot, groove or hole in the locking bar, the key cannot be withdrawn from the locking bar assembly until the locking bar is returned to its groove in the hollow lock body.  A spring biases the locking bar to the outer position, so that continuous turning of the key would be interrupted by the spring loaded locking bar dropping back into the groove when the bar is aligned with it.  That indicates the position at which the key can be withdrawn.  As the key withdraws, it “scrambles” the discs as they step through the angles in the track or tracks of the key.

31                  According to the Applicant, the lock assembly of the Specification has three essential features, with a working interrelationship, which do not appear in combination in any of the prior art.  The features as described by the Applicant are as follows:

·        A key engaging means feature.

·        A combination alignment feature.

·        A locking bar code feature.

32                  The key engaging means feature entails that each disc has an aperture for the key, with key engaging means adjacent to the key aperture and aperture and adapted to engage the key.

33                  The combination alignment feature signifies that the key engaging means on each disc engages the key and the key locates the discs so that the discs rotate to their predetermined position around the longitudinal axis of the assembly without rotation of the key, bringing the discs into chosen alignment as soon as the key has been fully inserted. It then requires only a small degree of torque to be applied to the key to cause the locking bar or bars to move radially inwards.  That is said to be an advantage over similar types of locking systems. 

34                  Existing forms of disc tumbler locks, such as the Abloy system, require that, when the correct key is inserted in the lock, it be turned 90 degrees clockwise before the user can know whether the key is in fact the correct one.  It is only after that first 90 degree clockwise turn of the key, if it is the correct one, that the key can be turned still further to open the lock.  The key cannot be withdrawn without turning it at least 90 degrees counter clockwise.  That counter clockwise turning scrambles the disc combination.  The applicant adduced evidence intended to demonstrate that some users found frustrating the need to rotate the key first approximately 90 degrees clockwise to open the lock and then anti clockwise to extract the key. 

35                  The locking bar code feature contemplates that the code of each lock assembly is carried only by the key and the locking bar.  Thus each locking bar is unique to its particular lock assembly.  The uniqueness is the presence of the slots, grooves, holes or the like in the locking bar, the projection or pin from the outer surface of each disc being adapted to be received into its particular slot, groove, hole or the like in the locking bar.  Consequently, the combination of a lock may be changed without having to disassemble the drum assembly.  It is only necessary to change the locking bar and to provide a key cut in accordance with the code on the locking bar.  That is said to be a significant advantage over similar types of locking systems. 

the delegate’s decision

36                  Before the Commissioner, Lockwood relied on the grounds referred to in s 59(b) and s 59(c) of the Act, namely, that:

·        the invention the subject of the Application is not a patentable invention because it does not comply with s 18(1)(b);

·        the Specification does not comply with s 40(2) and s 40(3).

novelty

37                  The Commissioner’s delegate concluded that none of the documents relied on by Lockwood disclosed all the essential features of Claim 1.  The delegate concluded, therefore, that none of the documents deprived Claim 1 of novelty.  However, the delegate found that certain of the documents disclosed all the essential features of Claims 12 and 15 and that the inventions disclosed in those documents differed from Claim 13 only in respect of an inessential feature.  The delegate concluded, therefore, that Claims 12, 13 and 15 were not novel.

inventive step

38                  The delegate found that, before the Priority Date, disc tumbler cylinder locks were commonly known to those working in the field of the invention claimed in the Specification.  The delegate also concluded that rotatable disc tumbler locks, in which the discs are properly positioned without the need to rotate the key, also formed part of the common general knowledge at the relevant time.  However, the delegate was not convinced that locking bar arrangements wherein projections formed on the discs are received in a cavity in the locking bar could be regarded as part of the body of knowledge at the relevant time.  The delegate found, therefore, that not all the individual features of Claim 1 were part of common general knowledge as alleged by Lockwood. 

39                  Nevertheless, the delegate concluded that it was not possible to deduce a problem that was solved by the invention claimed in the Specification.  The delegate accepted evidence that showed that it was common practice to employ a locking bar that, following rotation of the discs to their predetermined position by insertion of the key, is received in a recess of each disc to release the lock.  By contrast, claim 1 requires a projection or pin on each disc to be received in a recess or the like of the locking bar. 

40                  However, the delegate concluded that the only feature of Claim 1 that was not already to be found in known rotatable disc tumbler locks was a “reversed” arrangement of the discs and locking bar.  The delegate was of the view that the simple reversal of a previously existing arrangement within a lock barrel assembly of the type described in Claim 1 would provide the same functionality in the context of that assembly and, therefore, would not alter its essential character.  The delegate concluded that the claimed invention could not be regarded as other than “an old combination which has been, at most, subjected to slight variations” and therefore lacked an inventive step. 

41                  The delegate considered that there was no evidence that indicated anything inventive in using a particular number of discs or in providing anti-picking recesses in the locking bar instead of the discs, as referred to in Claims 5 and 9.  The delegate considered that Claim 14 did not add anything of substance beyond what was already contained in Claim 1 and, accordingly, did not involve an inventive step.

42                  The delegate, having already decided that Claims 12, 13 and 15 were not novel, considered that whether those claims involved an inventive step was a moot question.  In any event, the delegate concluded that it was not evident from the Specification that the provision of an additional track in the key materially affected the operation of the key and, consequently, concluded that that feature did not give rise to an inventive step.

section 40

43                  The delegate also concluded that:

·        Claims 1, 6, 10 and 13 are not clear;

·        Claims 1 and 10 are not fairly based on the matter contained in the body of the Specification; and

·        the Specification does not fully describe the claimed invention.

The delegate concluded, therefore, that the specification does not comply with s40(2) and s40(3).

delegate’s conclusion

44                  The delegate concluded, therefore, that the opposition succeeded on all grounds relied on.  However, as I have said, the delegate was also of the view that the Specification could be amended to overcome those grounds.  No indication was given as to the amendments that would achieve that result.  In any event, as I have said, no application to amend was made with the time limited be the delegate.  Accordingly, the appeal falls to be decided by me on the basis of the Specification in the form in which it was considered by the Commissioner’s delegate.  I should observe that, because the Applicant took no part in the proceeding before the delegate, the delegate did not have the benefit of the submissions made to me on behalf of the Applicant. 

grounds of opposition in this proceeding

45                  By its amended points of opposition filed in this Court, Lockwood relies on the following grounds:

·        the invention as claimed in any claim of the Application is not a patentable invention because it is not novel, when compared with the prior art base as it existed before the Priority Date;

·        the invention as claimed in any claim of the Application is not a patentable invention because it does not involve an inventive step when compared with the prior art base as it existed before the Priority Date;

·        the specification filed in respect of the Application does not comply with s 40(2) or s 40(3) of the Act.

46                  Particulars of those grounds were furnished in the amended points of opposition filed with leave of the Court.  I shall deal with the particulars below in the course of dealing separately with each of the grounds relied on by Lockwood.  Several questions as to the construction of the Specification are raised by Lockwood.  I shall deal with the questions of construction in the context of the particular ground of opposition. 

NOVELTY

47                  Challenges on the ground of lack of novelty are mounted against both the lock barrel claims and the key claims.  I shall deal with each group of claims separately. 

the lock barrel claims

48                  Feature 1.7 (see paragraph [26] above) provides the foundation for the Applicant’s case that there exists a “coded locking bar feature”.  Lockwood contends, however, that that feature does not arise from a fair reading of Claim 1.  Lockwood says that the purpose and function of the pin or projection in the disc, as described in feature 1.7, is not specified, except that it is to be received into the locking bar (feature 1.5), and so permit the locking bar to move to an inner position, thereby facilitating the opening of the lock.

49                  Claim 1 refers to a pin or projection adapted to be received in a slot, groove, hole or the like.  It does not refer to the pin or projection being contained within the outermost circumference of the disc.  The Specification does not refer to a portion of the disc being grooved or cut away.  On the other hand, the embodiments in the Specification show the discs having a cut away portion to receive the locking bar.  Lockwood contends that Claim 1, and all of its dependent claims, require the locking bar to be received into the disc and not the reverse.  That assertion is correct in one sense, namely, that when the pin or projection of each disc is aligned with the appropriate slot groove or hole, the locking bar will then be able to move radially towards the centre of each disc.  That is how the lock opens.  Nevertheless the pin or projection is still received into the slot, groove or hole.

50                  Feature 1.7 does not specify that the pins or projections on the disc must be in different places.  Lockwood suggests, therefore, that a lock of the invention claimed could have identically located projections on each disc, such that they extend in a straight line that is parallel to the axis, all of which would fit into the locking bar.  Lockwood contends that, on the true construction of Claim 1, the locking bar has a “slot, groove, hole or the like” singular.  If there is a single slot or groove or hole or the like, there could be no “coded” locking bar, since it would always co-operate with the discs in the same way.

51                  I consider that a fair reading of Claim 1 does not require a single slot, groove, hole or the like.  Elements shown in the figures attached to the Specification show slots, holes or grooves for each projection on the discs.  In any event, there is nothing in Claim 1 to require that any single slot, groove or hole be straight.  That is to say, it could be irregular so as to receive the pins or projections on the discs.

52                  The Specification contains no limitation requiring the discs to be identical.  If they happen to be identical, the inside projections would be in the same line.  Lockwood contends that, in order to have a code, the discs would have to be different but the locking bar would still have a straight lined groove.  That, however, indicates a misconception.  If the discs are identical, the irregularity of the groove in the key would take them to different angles.  At those angles, a pin or projection would correspond with the slot, groove, hole or the like in the locking bar intended to receive it.  As long as the groove in the key is irregular, any slot, groove, hole or the like in the locking bar would also need to be irregularly placed to receive the pins or projections.

53                  Lockwood points to the so called importance of the locking bar because it “carries a code of grooves, slots or holes”, such that all that is required to re-key or re-code the lock assembly is the generation of the new key/locking bar combination and a replacement of the old locking bar with the new one.  Lockwood asserts, however, that Claim 1 does not define an invention limited to those features.  It asserts that, while Claim 1 might be broad enough to include a lock with the features of the embodiment described in the body of the Specification, it encompasses a much broader range of lock devices.

54                  It is not legitimate to confine the scope of claims by reference to limitations that may be found in the body of a specification but are not expressly or by proper inference reproduced in the claims themselves.  That is to say, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of a specification – Décor Corporation v Dart Industries (1988) 13 IPR 385 at 400.  On the other hand, a patent specification should be given a purposive construction rather than a purely literal one.  It is right to construe a claim with an eye benevolent to the inventor in the light of the body of the Specification – Leonardis v Sartas (No. 1) Pty Ltd (1996) 67 FCR 126 at 149.

55                  It is sufficient for Claim 1 to disclose an invention.  There is no need for a claim to identify an inventive step – Winner v Ammar Holdings (1993) 25 IPR 273 at 285.  It is not necessary that a claim should state in detail the advantages that would accrue from the use of the invention – R.D. Werner & Co Inc. v Bailey Aluminium Products Pty Ltd (1989) 13 IPR 513 at 535 and Universal Oil Products Co. v Montsanto Co. (1972) 46 ALJR 658 at 662.

56                  Lockwood points out that one of the claimed essential features of the so-called invention is that the combination can be changed without having to change the drum assembly.  It asserts that, while such a feature can be present only if all of the discs are identical, there is no such requirement in Claim 1 that the discs be identical.  However, such a contention also suggests a misconception.  It would not matter whether the discs are identical or not.  The combination could be changed in either case by changing the key and the locking bar.  However, if the discs are identical, the keeping of inventory would be simplified.  That is a different matter altogether. 

57                  Lockwood contends that prior art information discloses each of the integers in Claim 1 of the Specification.  That information is said to be contained in five published documents as follows:

·        complete specification of AU-A-77173/81 (“Wartsila”);

·        complete specification for US4067214 (“Kiraly”);

·        complete specification of AU86467/82 (“Ogden”);

·        complete specification for US1616255 (“Douglas”);

·        complete specification of FR2384922 (“Fichet-Bauche”);

Lockwood’s contention was based mainly on the terms of the complete specifications in Wartsila and Kiraly. 

58                  While the Applicant accepts that certain of the features of Claim 1 of the Specification can be seen in those prior art documents, she asserts that certain essential features of Claim 1 are missing.  In the case of Wartsila and Ogden, the Applicant says that features 1.4 and 1.5 are missing.  In the case of Kiraly, Ogden, Douglas and Fichet-Bauche, the Applicant says that feature 1.7 is missing. 

59                  While Lockwood accepts that certain of those features are missing from the respective prior art documents, it contends that, in so far as they are missing, they are features that are not essential to the invention disclosed in Claim 1 of the Specification.  Alternatively, Lockwood contends, the relevant features can be seen to be the mechanical equivalent of features to be found in the prior art documents.  It is necessary, therefore, to say something about each of the prior art documents.

Wartsila

60                  The Wartsila application was lodged on 6 November 1981 by Oy Wartsila Ab.  The invention claimed is described as a “disk cylinder lock”.  The Wartsila complete specification contains the following:

“This invention relates to a cylinder lock mechanism of the kind comprising a housing enclosing a turnable hollow cylinder which in turn encloses a plurality of tumbler disks, turnable by the key of the lock mechanism from a locking position, in which they keep said cylinder locked to said housing, through a certain angle individually determined for each tumbler disk in accordance with the opening combination of the lock mechanism, to a releasing position, in which said cylinder is free to rotate relative to said housing.

………………………

The present invention aims to provide a cylinder lock mechanism in which the individual lock mechanism combination is determined in a way which allows most of the elements of the lock mechanism to be identical and to have the differences which determine the lock mechanism combination in a single element, or having the lock mechanism combination determined by the pattern formed by a number of identical elements inserted in a holder.  In the conventional disk cylinder lock mechanism, the lock mechanism combination is created by differences in the tumbler disks.  In a lock mechanism according to the invention, the tumbler disks are identical and the combination is formed in a locking element or a locking element assembly corresponding to the conventional element, known as a locking bar or side bar, which is normally used in disk cylinder lock mechanisms to lock the turnable cylinder to each surrounding housing.

………………………

A lock mechanism in accordance with the invention provides a number of advantages.  Firstly, all basic parts of the lock mechanism are identical…  Secondly, a single element determining the entire lock mechanism combination can be manufactured separately…

Thirdly, the combination of already delivered lock mechanisms can be easily changed by changing only the combination-determining element.”

61                  Claim 1 of the Specification requires a key engaging means adjacent to the aperture of each disc, adapted to engage a key so that the key is capable of locating each disc at a pre determined position about the longitudinal axis, without rotation of the key.  Lockwood contends that there are two aspects of that requirement.  The first is said to be the “key engaging means adjacent the aperture” and the second is the key engaging means being adapted to engage the key so that the key can locate the disc at the predetermined position without rotation. 

62                  Lockwood contends that the first aspect is to be found in Wartsila because the tumbler discs disclosed in Wartsila have a central opening for the key.  The opening describes a segment of a circle greater than a semi circle.  The key has a number of flat surfaces.  After it is inserted into the lock and turned, one of the surfaces connects with the chord of the segment of the circle in the centre of the aperture in the disc.  It is said that the chord of the key aperture is a key engaging means. 

63                  Secondly, it is said that, while the second aspect is not present, its absence is not fatal to the opposition because it is not an essential integer.  It is said that the only difference between the function of a lock in claim 1 of the Specification and Wartsila is that, in the latter, the alignment of the discs is achieved manually by rotation of the key whereas in Claim 1 of the Specification it is achieved without rotation of the key. 

64                  Claim 1 of the Specification unequivocally requires a means whereby each disc can be located at its predetermined position without rotation of the key.  Further, the segmental central opening for the key in each tumbler disc disclosed in Wartsila cannot be said to be a “key engaging means”.  Rotation of the key, because of the semi circular opening, will rotate the disc.  The essence of Claim 1 of the Specification, however, is that the discs will be rotated by mere insertion of the key.  I am not satisfied that the invention of Wartsila clearly anticipates all of the essential features of Claim 1 of the Specification.

Kiraly and others

65                  The application for Kiraly was filed on 18 June 1976 by Franz Kiraly.  The invention claimed is described as “safety lock”.  The specification includes the following:

“The present invention relates to a safety lock comprising a fixed cylinder casing, a drum rotatable in the cylinder casing, a lock lever for locking and unlocking the drum, a plurality of tumbler discs rotatable with a lock key, each having on its periphery at least one recess, which recesses become aligned with each other when the key is inserted to form a groove to receive the lock lever, whereupon the drum is released so that it can be rotated and at least one guiding device, e.g. a profile disc, for the lock key which is fixed in relation to the drum but is rotatable in relation to the cylinder casing.

Safety locks with rotatable tumbler discs have been known for a long time, and it is also known to operate the tumbler discs in such locks by means of a groove formed in the lock key, whereby the recesses in the peripheries of the tumbler discs become aligned with one another when the key is inserted in the lock.  When the key is inserted in the lock, a certain axial force is applied on the locking mechanism, which force is transferred to the tumbler discs and the intermediate discs or spacers.  Thus the friction between the tumbler discs and intermediate discs increases, resulting in the disc wearing and in the operation of the lock requiring considerable effort.

Attempts have been made to eliminate this friction by providing each tumbler discs with an anti-friction surface on one side or by means of arranging anti-friction intermediate discs between the tumbler discs.  These solutions have, however, not produced the desired result.

It has also been suggested to provide the intermediate discs with peripheral flanges, or similar, which engage each other, so that the intermediate disc bear the major part of the axial loads exerted on the lock device, and, consequently, each individual tumbler disc only requires as much force as is necessary to move its own mass.

However, it has proved that even the latter construction is not satisfactory, since the friction, between each individual tumbler disc and corresponding intermediate disc, despite the fact that the edge flanges of the intermediate discs bear the major part of the axial forces, is so considerable that such a lock in practice is nevertheless difficult to operate.

The object of the present invention is to eliminate these disadvantages caused by the friction between the discs.  The safety lock according to the invention is characterized by tumbler discs which are of such form that they touch each other, or possibly the intermediate discs which may be arranged between the tumbler discs, only over a comparatively small area near the central opening of the discs.”

66                  Claim 1 of the specification of Kiraly is in the following terms:

“1.       A safety lock comprising

a cylinder casing;

a drum rotatable in the cylinder casing;

a lock lever for locking and unlocking the drum;

a plurality of discs positioned in a stack within the cylinder casing, at least some of which discs are tumbler discs rotatable with a lock key, each such tumbler disc having on its periphery at least one recess which recesses are aligned with each other when the key is inserted in the lock to form a groove to receive the lock lever whereupon the drum is unlocked;

at least one key guiding element fixed in relation to the drum but rotatable in relation to the cylinder casing; and

said tumbler discs being of such configuration that each tumbler disc contacts an adjacent disc of the stack only over a relatively small area near the center of the discs.”

67                  Lockwood accepts that Kiraly does not contain feature 1.7 of Claim 1, namely, the requirement that each disc have a projection or pin that is adapted to be received in a slot, groove, hole or the like in the locking bar.  Kiraly discloses a locking bar, described as a “lock lever”, that is received into a recess in the periphery of each disc when the discs are placed into alignment by the key.

68                  However, the essence of feature 1.7 is that the locking bar contains the “code” or “combination” for the particular lock assembly.  Each locking bar is unique to its particular lock assembly.  That uniqueness is constituted by the slots, grooves or holes or the like in the locking bar, which correspond with the pins or projections when they are properly aligned.  The projection or pin from the outer surface of each disc is adapted so as to be received into its corresponding slot, groove, hole or the like.

69                  In Kiraly, each disc has a recess or groove into which the locking bar is received.  The locking bar must “match” with the groove in order to fit.  However, the essence of the invention disclosed in Kiraly is that the locking bar is a single bar, which would be identical in each lock assembly.  The essence of Kiraly is the variation in the discs that constitute the code or combination that makes any particular assembly unique. 

70                  Lockwood contends that the locking bar of Claim 1 of the Specification is simply a reversal of the locking bar or lock lever disclosed in Kiraly whereby, instead of the locking bar being received in a recess in the discs, recesses in the locking bar mesh with projections in the discs.  That proposition, however, ignores the coded feature of the locking bar in the invention disclosed in Claim 1 of the Specification.

71                  Lockwood advances the same contentions in relation to Ogden, Douglas and Fichet-Bauche.  For the same reasons, that aspect of those prior art documents does not anticipate feature 1.7 of the invention disclosed in Claim 1 of the Specification.

72                  For the purposes of an opposition, I am not satisfied that a patent in respect of the Specification, if granted, would be invalid on the ground of want of novelty. 

THE KEY CLAIMS

73                  The Applicant contends that the key of Claim 12 must be suitable for operating the lock and barrel assembly of Claim 1, including the locking bar arrangement of feature 1.7 of Claim 1.  Lockwood contends, on the other hand, that such an approach does not accord with a fair reading of Claim 12 and the use of the expression “for operating” at the beginning of Claim 12.  Lockwood says that the means by which the discs and the locking bar co-operate are quite different from the operation of the key itself and that the key claims are not limited to use in such a lock.

74                  Claim 12, together with Claims 13 and 15, begin by referring to “a key”.  Further, in the body of the Specification, the following appears:

“In another aspect, this invention provides a key for operating the lock barrel assembly, the key bearing at least one longitudinal angled track adapted to receive the key engaging means.” (emphasis added)

75                  Nevertheless, I consider that a fair reading of Claim 12 requires that all of the features of Claim 1 be incorporated as part of Claim 12.  Thus, Claim 12 should be construed as relating to a lock barrel assembly such as is described in Claims 1 to 11, that is operated by a key such as is described in Claim 12. It may be that, as a consequence, Claim 12 is no more than a dependant of Claim 1.  Nevertheless, if Claim 1 stands, Claim 12 can stand with it. 

76                  Kiraly discloses the following:

“Safety locks with rotatable tumbler discs have been known for a long time, and it is also known to operate the tumbler discs in such locks by means of a grove formed in the lock key, whereby the recesses in the peripheries of the tumbler discs become aligned with one another when the key is inserted in the lock.”

The key disclosed in Kiraly has two angled tracks, one on each side of the key.  However, the Kiraly key is not designed to operate a lock that has a coded locking bar. 

77                  I do not consider, on a fair reading of Claim 12 and the Specification, that Claim 12, construed as indicated above, is anticipated by Kiraly.  That is to say, since Claim 12 incorporates Claim 1, if Claim 1 is not defeated by lack of novelty nor will Claim 12 be defeated.  The position may well  be otherwise, of course, if Claim 12 were to be construed as not being dependent on Claim 1.

78                  Lockwood also refers to Fichet-Bauche as anticipating the key of Claim 12.  An agreed translation of the Fichet-Bauche specification describes the operation of the invention there disclosed as follows:

“The key… is inserted into the tunnel defined by the internal surface… of the collar… of the rotor and the rings… placed by side, with the groove… of the key being presented facing the rectangular tooth… of the rotor.  The funnel… of the key approaches the appendix… of the ring… and, as it progresses longitudinally, the key causes the ring… to turn, with its flank… co-operating with the edge… so that, when the key has progressed far enough, the appendage… is positioned at the start… of the groove… the edges… co-operate with the flanks… of said groove; when the groove… co-operates with the edge… the ring… turns anticlockwise; by contrast, when the flank… co-operates with the side…, the ring… turns clockwise.

The co-operation of the key shank… with the appendages… of the other rings occurs in the same manner as has just been explained…:  as soon as the end… of the groove… approaches the ring…, the latter is caused to rotate in one direction or the other….

When the key is fully inserted, the angular positions of the various rings… depend on the configuration of the groove… with the appendages… of the various rings reproducing the contour of the groove… .  If the key matches the lock, when the key is fully inserted, all the rings have been brought into their position wherein their circular notch… faces the longitudinal slit….”

79                  Lockwood contends that the key depicted in a figure contained in the specification for Fichet-Bauche bears a longitudinal angled track, which is Feature 12.3 of Claim 12.  Lockwood also says that the track of the key in Fichet-Bauche is cut into a curved surface as is provided for in Feature 12.4 of Claim 12 and that the track is adapted to receive the engaging means of the discs, as is apparent from the passage quoted above.

80                  Claims 8 and 9 of Fichet-Bauche are as follows:

“8.       Key with a sinuous groove for the actuation of a lock according to any one of Claims 1 to 7.

9.         Key according to Claim 8, characterised in that it further presents a rectilinear groove suitable for co-operating with a tooth of the rotor except for the fully inserted position of the key.”

81                  The Applicant asserts that the longitudinally extending track of Fichet-Bauche is “sinuous” and not “angled” so that it changes as it progresses along the length of the key blade.  The Applicant asserts that, according to the specification of Fichet-Bauche, the curvilinear configuration of the sinuous groove in the key is an essential part of the invention disclosed.  The specification includes the following:

“According to the invention…, the positions of the locking members, for the actuation of a lock, are imposed by the curvilinear configuration presented by the key, advantageously a sinuous groove extending over the length of a key shank.  Noses or appendages of the locking members then co-operate with said groove and impose on the latter a pre-determined angular position corresponding to the unlocking when the key is in its fully inserted position.”

82                  The Applicant asserts that Fichet-Bauche omits an essential feature of the invention of Claim 12, namely, that the track is “angled”.  However, I do not consider that the language of Claim 12 should be limited in that manner.  The object of the angled track is to enable the discs to be aligned at a pre-determined position by the insertion of the key.  Apart from requiring a track to be “longitudinal” there is no limitation on the direction that the angle is to take.

83                  However, Fichet-Bauche does not anticipate the key of Claim 12 in so far as Claim 12 is dependent on Claim 1.  Accordingly, I am not clearly satisfied that any patent, if granted in respect of the key claims of the Specification, would be invalid for want of novelty.

inventive step

84                  The test for determining whether the claimed invention includes an inventive step is whether it would have been obvious to a skilled non-inventive worker in the field of a locksmith, equipped with the common general knowledge in that field as at the Priority Date, faced with the problem confronting the inventor, to have taken, as a matter of routine, whatever steps might have led from the prior art to the invention – Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 270 and 286.

85                  Common general knowledge is the knowledge that forms the background knowledge and experience that is available to all in the field in considering the making of new products or the making of improvements in old products.  It must be treated as being used by an individual as a general body of knowledge – Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (“Minnesota Mining”) (1980) 144 CLR 253 at 293.  The prior existence of publications revealing the several integers of an invention, as separate items, and other possible integers does not of itself make an alleged invention obvious.  It is not appropriate to make a mosaic of prior publications to compare with the invention in order to test obviousness – Minnesota Mining at 293.

86                  Lockwood contends that conventional disc tumbler locks, pin tumbler locks and wafer locks formed part of the common general knowledge known to expert locksmiths and lock designers before the Priority Date.  The features of such locks are described above.  Lockwood says that, while different types of casings and mechanisms existed in locks, the features of one type of lock could typically be, and were, adapted to the design of another. 

87                  Lockwood also says that the claimed combination of known integers does not produce a new result from the mutual operation of the integers.  Lockwood asserts that the invention claimed in the Specification does no more than produce in a disc tumbler lock something that admittedly existed in a pin tumbler lock with a side locking bar.  Lockwood says that the only feature of disc tumbler locks not already part of the prior art was the use of a side locking bar that has recesses in it to receive projections on the discs.  Lockwood claims that that is no more than a reversal of the prior art and no particular advantage is disclosed by such a combination and that, therefore, the invention claimed is no more than a collocation of known integers.

88                  The Applicant accepts that there were several separate categories of locks known in Australia as at the priority date as follows:

·        pin tumbler locks;

·        wafer locks;

·        disc tumbler locks such as the Abloy system and the Ingersoll lever lock.

In the Ingersoll lever lock the discs are automatically brought into alignment by the insertion of the key into the lock, each disc or lever having a cavity into which the locking bar can fit to enable the rotation of the lock barrel. 

89                  The combination alignment feature did not exist in disc tumbler locks such as the Abloy system.  Combination in key operable locks was most commonly obtained by the use of pins or, in the unique case of the Ingersoll lock, fixed, pivoting levers biased with springs.  The problems of the requirement for a 90 degree turn with the Abloy system were addressed by changing to a pin tumbler design, with the resulting problems of that type of lock.

90                  The problems of guiding moving parts into alignment were dealt with by the interaction of the profile of the key and inwardly biased springs, biasing vertically moving pins, in the case of pin tumbler locks, or levers, in the case of the Ingersoll lock.  In the Abloy system, alignment was a complex process of the action of the flat surfaces of the Abloy key pushing with a rotating/turning motion, the flat surfaces of the disc aperture and then requiring returning surfaces on the key to push the aligned discs, into a scrambled state. 

91                  Not only did the integers of the lock barrel assembly of Claim 1 not exist in any single lock available in the field as at the Priority Date, but all of the integers were not present, even combining all by means of an impermissible mosaic in relation to existing lock assemblies.  However, Lockwood relies on s 7(3) of the Act, which allows the common general knowledge in the field to be combined with one piece of prior art.  Lockwood contends that, if the inventive step propounded by the Applicant is a feature of Claim 1, then the only part of the invention that was not part of the common general knowledge is the reverse locking bar feature. 

92                  Lockwood asserts that that is disclosed by Wartsila.  Specifically, Wartsila refers to a “single element” that determines the lock mechanism combination, which can be changed easily by simply changing the combination determining element.  That suggests the locking bar code feature.  The question is whether it would have been obvious to a skilled non-inventive worker in the relevant field to look to Wartsila – see Tidy Tea v Unilever (1995) 32 IPR 405 at 414.

93                  Lockwood adduced evidence from Mr Hans Jurgen Esser and Mr Peter Rodney Loschiavo that it was the habit of each of them respectively to obtain and read relevant patents for their work.  Accordingly, so it was said, patent specifications in Australia were part of the relevant common general knowledge. 

94                  Mr Loschiavo said that he reads patent specifications as disclosed in the locks he has seen in the course of his trade.  It may be inferred that if any lock assemblies on the market disclosed an Australian patent number prior to the Priority Date, he may have attended the Patent Office to locate the corresponding patent document.  However, no lock assembly corresponding to Wartsila was on the market at the Priority Date.  Mr Loschiavo also said that he reads patents when prompted, referring to the United States magazine “Locksmith Ledger”.  There is no evidence that that magazine ever disclosed the numbers of patents of locks on the market in Australia, let alone of specifications not commercialised.  There was no evidence that the patent application number of Wartsila was ever published in Locksmith Ledger.  It is a matter of speculation as to what use, if any, Mr Loschiavo made of any patent specification.  He was not a designer or manufacturer of lock assemblies.

95                  Mr Esser described the technique that he employed in designing a lock from 1974 to the Priority Date.  He first produced a product design brief in conjunction with the marketing department and research and development department of Lockwood.  In response to the design brief, he normally located all of the relevant documents and lock examples that he could obtain, in order to provide him with background material that would assist him in the design and development of the lock.  In the course of that process, he would look at disc tumbler locks, wafer locks and also pin tumbler locks in order to obtain ideas.  He also looked at patent specifications to give himself further ideas.  Copies of some patent specifications were maintained in Lockwood’s research and development department.

96                  After reviewing the documents and locks that were available within the Lockwood research facilities, Mr Esser worked on developing a concept for a new lock design.  That generally took the form of several drawings of alternative designs together with some written commentary.  After the design concept had been devised he would commission a patent search to be done on the design in order to determine whether or not the concept was novel or was likely to infringe any existing patents.  He retained external patent attorneys to conduct such searches.  The results of the searches enabled him to determine how to complete the design in a manner that did not infringe any existing patents.  He often gave to the patent attorneys for use when conducting searches reproductions of the drawings that he had made.  The process just described was also adopted by all of the other research staff at Lockwood from 1974 until the Priority Date.  Approximately six employees who began working in the research and development department of Lockwood at various stages between 1974 and the Priority Date left Lockwood and went to work for competing lock designing companies.  There were between six and eight such companies during the 1980s.  Mr Esser trained many of those employees in the methods of lock design.

97                  Mr Esser, an inventive skilled worker, at best, saw, in Lockwood’s files in the mid-1980s, the abstract and drawings of Wartsila.  However, it does not necessarily follow that a non-inventive skilled worker would have ascertained Wartsila, let alone understood it, and considered information in it relevant to work in the relevant art in the field.

98                  Wartsila was not originally in the particulars of grounds of opposition filed before the Commission.  It was added by amendment only after Mr Esser subsequently came across the abstract of Wartsila in Lockwood’s files.  It is reasonable to draw an inference that, if anyone within Lockwood had made any reference to the abstract of Wartsila before May 1995, evidence would originally have been adduced to that effect.  It was not.  It is reasonable to conclude that the abstract was not understood or considered relevant within Lockwood. 

99                  I consider that there is a reasonably cogent argument to support the Applicant’s contention that Claim 1 involves an inventive step and that Wartsila was not within the common general knowledge of the art in Australia as at the Priority Date.  I am not clearly satisfied that the invention disclosed by Claim 1 was obvious within the meaning of s 7(2) of the Act.

SECTION 40

100               Lockwood contends that the Specification is generally ambiguous and fails clearly and fully to describe the invention, so as to satisfy s 40(2), because:

1(a)      The purpose of the locking bar is not made clear, particularly having regard to the preferred function of the bar as described in the Specification. 

1(b)      It is said in the Specification that a locking bar may be associated with each disc, but there is no description of an arrangement in which there is a plurality of locking bars each of which is associated with a respective one of the discs. 

1(c)      The purpose of receiving the pin or projection of the disc in the slot, groove, hole or the like of the locking bar, is not made clear. 

101               Lockwood also contends that the claims of the Specification are not clear and succinct so as to satisfy s 40(3) of the Act because:

2(a)      Claim 1 fails to make the purpose of the locking bar clear, particularly having regard to Claim 3, which specifies one purpose for the locking bar and causes Claim 1 to embrace other purposes.

2(b)      It is not clear what is meant by the reference in Claim 1, to a locking bar associated with each disc.

2(c)      The purpose of the “characterising” features, referred to in Claim 1, is not made clear.

2(e)      Claim 6 is not clear because neither the purpose nor the location of the disc-like washer is specified.

2(f)       Claim 9 is not clear, when appended to claim 6, because it is not clear whether the “washer” referred to in Claim 9 is the same as the “disc-like washer” referred to in Claim 6.

2(g)      Claim 10 is not clear because of the reference to “means for preventing rotation of the discs”.  It is in conflict with Claim 1, which requires that the discs be rotatable.

2(h)      It is not clear what is meant by “longitudinal angled track” in Claim 12.

grounds 1(a) and 2(a)

102               Lockwood contends that, where the Specification refers to each disc including “a projection or pin adapted to be received in a slot, groove, hole or the like in the locking bar”, the Specification does not indicate what form the co-operation takes when the locking bar is in its inner or outer position.  Nor, so Lockwood contends, does it identify the purpose of the co-operation.  Lockwood accepts that it may be assumed that the purpose is to enable the lock assembly to be rotated relative to the lock body but asserts that that assumption is based on what happens in conventional locks, rather than the words of Claim 1.

103               Lockwood says, however, that, even if such an assumption is made, the meaning of the passage remains unclear, because the conventional arrangement, which allows the locking bar to move to the inner position to permit rotation of the lock barrel within the assembly, is described in the Specification as a preferred arrangement only.  Where the body of the Specification describes the movement of the locking bar in detail, it is described as “a preferred embodiment”.  Thus, so it is contended, Claim 1 extends to arrangements in which inward movement of the locking bar does not necessarily free the lock barrel for rotation.  It is not possible, so Lockwood contends, to determine from the Specification what those arrangements might be.  Lockwood contends that the Specification consists almost entirely of preferred embodiments and that it is not possible to determine what departures from the preferred embodiments are envisaged by the invention in its broadest form.

104               The locking bar is discussed in the Specification in several places as follows:

“… at least one locking bar operatively associated with the or each disc and adapted to move radially relative to the longitudinal axis from an outer position to an inner position only after the or each disc is located in its predetermined position by the key ….”

“In an especially preferred embodiment, both the locking bar and the key are cut to the same “code”….  However, in the interests of security, the physical correlation between the locking bar and the key should differ markedly, so that even when placed side by side there is no apparent resemblance.  This lack of physical resemblance is possible because the disks comprise transfer or scrambling means linking the locking bar and the key.  As the key is inserted into the lock barrel assembly and the key arranges the disks in their predetermined positions, the disks essentially pick up the “code” from the key.  The “code”is transferred unchanged to the locking bar….”

“When the correct key is inserted in the lock barrel assembly, the disks are rotated so that the external projections or pins align with the slots, grooves, holes or the like in the locking bar.  By turning the key, the locking bar is pushed from its groove in the hollow lock body and meshes with the projections or pins.  Thus, the lock barrel assembly can rotate, permitting unlocking.

Because the projections or pins are meshed with the slots, grooves or holes in the locking bar, the key cannot be withdrawn from the lock… assembly until the locking bar in returned to its groove in the hollow lock body.”

105               In the light of those passages, while the Specification makes references to preferred embodiments, I consider that the function of the locking bar as envisaged in its broadest form is adequately described in Claim 1.  I am not clearly satisfied that Lockwood’s criticisms are made out. 

grounds 1(b) and 2(b)

106               In the Specification it is said that a locking bar may be associated with each disc but there is no description of an arrangement in which there is a plurality of locking bars, each of which is associated with a respective one of the discs.  The same language is reproduced in Claim 1.  Lockwood contends that it is not clear from that language whether there is a separate locking bar for each disc, if more than one disc is present, or if there is more than one locking bar, whether each such bar is associated with each disc.  While the Specification says that “for the sake of economy” it is convenient if there is only one locking bar in the assembly, that statement does not clarify the position, since it refers only to a preferred embodiment.  The Specification does not identify what other disc and locking bar permutations are contemplated.

107               The Specification states that there is “at least one locking bar operatively associated with the or each disk”.  It is clear that the lock barrel assembly of the invention may include more than one locking bar although it also states that it is convenient if there is only one locking bar.  The feature is fully described.  Claim 1 refers to the locking bar being “operatively associated with the or each disc”.  I do not consider the statements are ambiguous.  I would construe them as providing for the possibility of one or more locking bars (with one locking bar being most likely) associating with the totality of the discs (with a plurality of discs being most likely).  I would not construe the specification as contemplating a separate locking bar for each disk.  I am not clearly satisfied that this criticism is made out.

grounds 1(c) and 2(c)

108               Lockwood contends that the Specification is ambiguous and fails clearly and fully to describe the invention because the purpose of receiving the pin or projection of a disc in the slot, groove, hole or the like of the locking bar is not made clear.

109               Claim 1 refers to the locking bar as being:

“characterised in that the or each disc includes a projection or pin adapted to be received in a slot, groove, hole or the like in the or each locking bar.”

The feature is adequately described.   The purpose of receiving the pin or the projection of the disc in the slot, groove, hole or the like of a locking bar is to allow the locking bar to move radially inwards and thereby permit the lock to open.

ground 2(e)

110               Claim 6 is as follows:

“A lock barrel assembly as claimed in any one of Claims 1 to 5, which includes at least one disk like washer.”

Lockwood asserts that neither the purpose nor the location of the disc-like washer is specified.

111               If there is any doubt as to the clarity of the words, the purpose and possible rotation of the washer is explained in the following passages in the body of the Specification:

“Optionally, a disk-like washer may be included in the lock barrel assembly of the invention… the washer may be stationary until the locking bar has moved to the unlocked position, at which time the washer can be rotated with the whole assembly.

The washer has an aperture which is preferably as that of the key profile so that the washer can act as a guide for the key and transfer the turning action of the key to the whole assembly.

………………………

…the disks are rotatably supported within the base.  Especially when washers are included, the angle supporting the arc of rotation of the disks may be limited if desired.”

This ground is not made out.

ground 2(f)

112               Claim 9 is as follows:

“A lock barrel assembly as claimed in any one of Claims 1 to 8, wherein there are 10 disks, arranged in 5 pairs, each pair being separated by a washer with a key profile aperture.”

Lockwood asserts that Claim 9 is not clear when appended to Claim 6 in that it is not clear whether the “washer” referred to in Claim 9 is the same as the “disk like washer” referred to in Claim 6.

113               Claim 6, while it specifies a disc-like washer, does not require that the washer have a key profile aperture.  That is a requirement of Claim 9.  To that extent, the washers are clearly different.

ground 2(g)

114               Lockwood contends that Claim 10 is not clear because the reference to means for preventing rotation of the discs is in conflict with Claim 1, to which it is appended.  Claim 10 is as follows:

“A lock barrel assembly as claimed in any one of Claims 6 to 9, wherein means are provided to prevent rotation of the disks.”

Further, Lockwood contends that Claim 10 “lacks fair basis” to the extent that it covers an unspecified field of means to prevent rotation of the discs when the only disclosure is of an “anti pick” option.

115               The Specification states that the feature in Claim 10 is to inhibit the picking of the lock.  An embodiment is described in the Specification and it is illustrated in Figure 5.  The reference to prevention of rotation of the discs is clearly a reference to rotation otherwise than by use of key.  This ground is not made out.

ground 2(h)

116               Finally, Lockwood contends that it is not clear what is meant by “longitudinal angled track” in Claim 12.

117               The phrase is clear enough.  The angled track proceeds along the length of the locking bar.  The Specification refers to the track in the following terms:

“The key blade may have a track or slot machined into it, preferably incorporating programmed angles.”

… … … … … … …

“The track is cut lengthwise into the key blade and changes radially in angles as it progresses.”

This ground is not made out.

conclusion

118               Lockwood has advanced substantial arguments concerning the validity of any patent that might be granted to pursuant to Application.  However, I am not satisfied to the requisite degree of clarity that such a patent would be invalid.  I am mindful of the fact that the Commissioner’s delegate concluded that the opposition should succeed on all grounds.  However, as I have indicated, the delegate had no assistance from the Applicant on the hearing of the opposition.  Further, there has been significantly more evidence before me than before the delegate.  Having regard to the nature of the proceeding, there has been no cross examination of witnesses. 

119               It follows from the conclusions I have recorded above that the appeal should be upheld and the decision of the delegate of 13 May 1997 should be set aside.  In lieu of the delegate’s original decision, there should be a decision that the grounds of opposition are not made out.  Lockwood should pay the Applicant’s costs of this application. 

I certify that the preceding one hundred and nineteen (119) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett .

Associate:

Dated:              20 December 2001

Counsel for the Applicant:	Ms J R Baird
Solicitor for the Applicant:	Chrysiliou Moore Chrysiliou
Counsel for the Respondent:	Mr S C G Burley
Solicitor for the Respondent:	Phillips Ormonde & Fitzpatrick
Date of Hearing:	2-4 April, 20-21 June, 27-28 August, 29-30 October 2001
Date of Judgment:	20 December 2001