Clearview Towing Mirrors Pty Ltd v Shane Miles [2025] APO 34

I award costs according to Schedule 8 against the applicant, Shane Miles. I apply a variation to fee item 11 so as to include actual costs of counsel to prepare for the oral hearing, and fee item 14 so as to reflect the actual costs of counsel to appear at the oral hearing.

1. Australian patent application 2022202540 (the application) in the name of Shane Miles (the applicant) was filed on 19 April 2022 as a divisional of Australian application 2020281026 (the parent application). I note that the applicant for the parent application was "Shane Robert Miles", while the applicant here is "Shane Miles". S79B(1) states that only "the applicant" of the parent application may file a divisional, and a question may arise whether the applicant is the same (for example, maybe the applicant here is "Shane Peter Miles"). No party to this opposition raised this as a concern. As such, I will proceed as if the applicant is entitled to file the application.

1. While the parent application was originally filed as the last in a string of divisional applications, following a decision by delegate Umehara to the opposition to the parent application[1] (the parent decision), the parent application was amended to remove its divisional status. Consequently, the application claims priority from Australian provisional application 2020902327 with a priority date of 7 July 2020.

1. A request for examination was made on 30 June 2022. The application was accepted on 12 October 2023, and acceptance was advertised on 9 November 2023.

1. A Notice of Opposition was filed on 9 February 2024 by Clearview Towing Mirrors Pty Ltd (the opponent). A Statement of Grounds and Particulars (SGP) was filed on 9 May 2024 and Evidence in Support (EIS) was completed on 8 August 2024. No Evidence in Answer was filed by the applicant. Therefore, there is no Evidence in Reply.

1. Following correspondence on dates for the hearing, the opponent notified the Commissioner that they intended on appearing by written submissions only. The applicant appeared to require an oral hearing. Given the applicant's apparent preference, the Commissioner proposed an oral hearing date and asked the opponent to indicate their availability for an oral hearing. The opponent replied, indicating that, while they had intended on appearing via written submissions only, this would change if the applicant indicated that they wanted an oral hearing. The applicant responded stating that they preferred that the opposition be determined by an oral hearing. A hearing date was duly set and due dates for each party's written summary of submissions were communicated.

1. The opponent filed their written summary of submissions (the OS) on 9 July 2025. Somewhat surprisingly, given their desire for an oral hearing, the applicant informed the Commissioner on 18 July 2025, 5 days before the hearing, that (i) they would not be filing any submissions, and (ii) neither the applicant nor their representative(s) would appear at the hearing.

1. The application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Thus, the standard of proof that applies in the present case is the balance of probabilities.

1. The opponent has the onus to satisfy me, on the balance of probabilities, that a ground of opposition to the grant exists. If I am satisfied, I may refuse the application[2] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition[3].

1. EIS consists of a declaration of Andrew Richard Jones (Jones) dated 8 August 2024, accompanied by exhibits AJ-1 to AJ-5. Dr Jones was, at the time of his declaration, a Principal of Foundry Intellectual Property Pty Ltd. His declaration makes statements about the opposition, claims and priority date of the parent application. Exhibit AJ-5 is a declaration, including exhibit JO-A, made by Jason Oliver (Oliver) as part of the opponent's opposition to the parent application.

1. The SGP set out the application was opposed on the basis of:

a) Lack of novelty;

b) Lack of an inventive step;

c) Lack of utility;

d) Lack of manner of manufacture;

e) Lack of clear enough and complete enough disclosure (S40(2)(a));

f) Lack of best method (S40(2)(aa));

g) Lack of a claim or claims defining the invention (S40(2)(b)); and

h) Non-compliance with the requirements for S40(3).

1. At the hearing, the opponent narrowed its case to:

a) Lack of novelty; and

b) Lack of an inventive step.

1. The invention relates to what are known as "fridge slides". These slides, typically used by 4WD enthusiasts, have a platform generally supporting a fridge allowing it to be moved from a stowed position in the vehicle to an easy access position outside the vehicle. For the purposes of this decision, I will use "fridge" to refer to not only a fridge, but also any other storage container or other element that could be mounted to the slide.

1. The specification notes that fridge slides can be of the type where a frame carrying a platform is fixed to a surface in the storage compartment of a 4WD vehicle so as to allow a person to slide the platform, to which is mounted the fridge, out of and into the storage compartment. When the platform is slid out, the person can access the inside of the fridge.

1. The specification also notes another type of fridge slide that not only allows the platform to slide in and out of the storage compartment but can also lower it to a second position once it is outside the compartment. Such an arrangement is advantageous where the floor of the storage compartment is at such a height that, even when the platform is pulled out, the opening of the fridge is too high to allow easy access to the contents of the fridge. The specification also states that this type of slide means that the frame can be mounted above the floor of the storage compartment (for example, on a set of storage drawers) allowing access to the fridge without having to remove other things in the storage compartment.

1. The specification states that an issue might exist for older 4WD and/or camping enthusiasts who may not have the strength to work the known fridge slides but still need to be able to access their portable fridges and other equipment easily. The specification states that:

"... the present invention is aimed at providing fridge slides and other storage apparatus which require less strength to use and are therefore more desirable for some persons than manually operated apparatus."[4]

1. In general, the invention is a fridge slide having a platform located between two, spaced-apart, slide assemblies and attached to the slide assemblies by linkages. The linkages allow the platform to be raised and lowered once it has been moved from a storage position to an access position. Movement of the platform from its raised position to its lowered position (and back) can be achieved with the use of a powered drive means (such as a linear actuator) controlled by the user.

1. There are a few embodiments disclosed in the specification. To provide some context to the operation of the slide defined in the claims, I will refer to figures 1-3 which show the initial movement of the slide from a stowed position to a withdrawn position, as this phase of movement is not shown in the figures of the embodiment relevant to the present matter:

1. In essence, the tray 14 supporting the fridge can slide from a stowed position Fig. 1 to a withdrawn position Fig. 2. The tray 14 is supported by inner slide assemblies 19 connected to the opposite sides of the tray 14, with the inner slide assemblies 19 being connected to, supported by, and can slide back into, floating intermediate slide supports 20. The slide supports 20 are supported by, and can slide back into, the outer slide support 18 fixed to the vehicle. Once the tray 14 is withdrawn from the vehicle, it is then lowered to an access position Fig. 3. In these figures, the mechanism for lowering are telescopic upright members 23, 24. This operation is performed in reverse to return the tray to its stowed position.

1. The embodiment relevant to the present matter does not use upright members to lower (and raise) the tray. Instead, it uses scissor linkage mechanisms on either side of the tray. The powered drive means acts on this mechanism to raise and lower the tray. Figure 27 shows the apparatus with the tray in its stowed position and figure 29 shows the tray in its withdrawn and lowered position:

1. In this embodiment, the tray 231 is connected to inner slide assemblies 225 via scissor mechanisms 261, 262 on either side of the tray 231. One leg 263 of the scissor mechanism extends above the inner slide assembly 225 and is connected to a lug 274, welded to the tray's frame 230, by a linear actuator 238 and a gas strut 251. Once the tray has been slid from its stowed position Fig. 27 to its withdrawn position (not shown in the figures of this embodiment), the actuator 238 is operated to pull the leg extension towards the lug (i.e. in the opposite direction indicated by the upper, left arrow in figure 29). This causes the leg 263 to rotate about its pivot pin 271 and, given the linkage of the scissor mechanism, also causes the other leg 264 of the mechanism to rotate, pushing the tray 231 downwards. Operating the linear actuator 238 in reverse cause the tray 231 to lift. The gas strut 251 acts as an energy storage means to assist in the lifting of the tray.

1. The specification ends with 9 claims. Claims 1, 5 and 6 are the independent claims. Claim 1 is directed to an "Elevating storage apparatus", claim 5 is directed to "Apparatus for storing and moving one or more items", and claim 6 is directed to "Apparatus for storing and/or moving one or more items". These claims are as follows:

a pair of spaced apart slide assemblies adapted to be mounted to or on a vehicle;

article support means supported by or between said spaced apart slide assemblies for longitudinal movement between an elevated stowed position in or on the vehicle and a withdrawn (or extended) elevated access position beyond the vehicle;

linkage means connecting the article support means to the slide assemblies so as to enable the article support means to be raised and lowered relative to the slide assemblies between the elevated access position beyond the vehicle and a lowered access position also beyond the vehicle;

wherein said linkage means includes spaced scissor type linkage mechanisms connecting respective opposite sides of the article support means to respective opposite ones of the slide assemblies; and

powered drive means operatively connected to said pair of slide assemblies and said article support means and arranged to cause movement of said article support means relative to said pair of slide assemblies between said elevated access position and said lowered access position and vice versa; and

control means in communication with said drive means for controlling operation of said drive means."

"5. Apparatus for storing and moving one or more items, for example, a portable fridge mounted in a vehicle, the apparatus including:

a first part including a base or frame adapted to be mounted to a vehicle;

a second part including a platform or frame adapted to support the item to be stored and moved;

said second part being operatively connected to said first part for substantially linear movement of said platform or frame at one level relative thereto from a retracted position within the vehicle or on the vehicle to an extended position at said one level substantially beyond (or outside) the vehicle and for movement from the extended position at the one level to a down position at a lower level, and

powered drive means operatively connected to said base or frame of said first apart [sic] and said platform or frame of said second part so as to cause movement of said platform or frame of said second part from said one level to said down level and/or vice versa;

wherein said second part is connected to said first part by a pair of spaced apart scissors type linkage mechanisms and wherein said powered drive means includes a pair of powered linear drives or actuators and wherein one part of the respective linear drives or actuators is connected to said first part and the other part is connected to a respective one of said scissor type linkage mechanisms."

"6. Apparatus for storing and/or moving one or more items, for example, a portable fridge mounted in a vehicle, the apparatus including:

a first part including a base or frame adapted to be mounted to a vehicle against movement relative thereto and a second part including a platform adapted to support the one or more items being stored and/or moved;

said second part being operatively connected to said first part by one or more extendable tracks connected to said first part and said second part so as to allow substantially linear movement of said platform relative to said first part from a retracted (or stowed) position at one level within the vehicle or on the vehicle to an extended position at said one level substantially beyond the vehicle; and

said platform being operatively connected to said one or more extendable tracks by a scissor type linkage mechanism so as to allow movement of said platform from the one level at the extended position to a second position at a lower level, and

one or more powered actuators operatively connected to said extendable track and said one or more scissor type mechanisms and arranged to cause movement of said platform or frame from said one level to said second level and vice versa."

1. Appended claims 2-4 and 7-9 define additional features such as the arrangement of the slide assemblies, points of connection between the scissor type linkage mechanisms and the slide assemblies, and the inclusion of an actuating lever connected to the linkage assembly with a handle. The full claim set is in the annex to this decision.

1. I note that the claims in this application align, in a general sense, with claims of the parent application as follows:

1. However, the claims of the present application are broader in scope. For example, claim 1 of this application does not:

(i) require the scissor links to hold the article support substantially horizontally as it moves from the elevated position to the lowered position; and

(ii) limit the powered drive means to being two spaced-apart linear actuators mounted above the slide assemblies and connected to the scissor linkages,

1. As another example, claims 5 and 6 of this application do not limit the claims to the feature that actuation of the linear drives causes movement of the article support (although it may be said to be implied in claim 5), and do not limit their mounting positions to the extent that equivalent claims 7 and 9 of the parent application do.

1. In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the person skilled in the art (PSA) as:

"... a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected." [5]

1. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:

"He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious." [6]

1. In AstraZeneca AB v Apotex Pty Ltd, the High Court additionally noted that:

"The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person - a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step." [7]

"The specification is directed to an apparatus for storing items in vehicles which can be moved to an externally accessible position. Accordingly, the skilled person, or team, would be expected to have a practical interest in this field, including the development process and its use. While neither party provided a characterisation of the relevant person skilled in the art, on the face of the specification, there is little doubt that the notional person skilled in the art would be a team including individuals with expertise in, and knowledge of, mechanical engineering. The team would have particular interest in developing new accessories to be fitted into existing vehicles."[8]

1. There are two declarants in this matter: Dr Jones and Mr Oliver. As already noted, Dr Jones is a patent attorney and only provides comments on the opposition, claims and priority date of the parent application. He asserts that, observing the similarity of claims, the priority date of the present application should be 7 July 2020. I note that this date is now the recorded priority date for the parent application.

1. As was the case for the parent decision, only Jason Oliver is being put forward as a suitable person to educate me as to the state of the art. Mr Oliver is a retail sales manager for vehicle accessories with prior experience in the development of vehicle storage systems, who owns a fabrication business designing new products to mount compressors into four-wheel drive vehicles.

1. As to suitability, the OS contained no submissions on Mr Oliver's suitability. As already noted, the applicant made no submissions at all. However, noting the substantial identicality between this application and the parent application, the submissions made in the parent opposition[9] are apposite. Taking those into consideration, I do not see any justification for excluding Mr Oliver's evidence. I agree with the position stated by the delegate in the parent decision:

"I accept that the identity of the expert witness and their independence may be a relevant consideration when assessing the weight that can be given to their evidence. However, these are not the only considerations in that assessment. Other considerations may include the nature and relevance of their experience and evidence, and whether the evidence is provided from the point of view of the person skilled in the art.

... I consider Mr Oliver has a background that enables him to provide evidence in relation to what a person skilled in the art knew, or would have done, at the relevant date. For instance, Mr Oliver had worked on the development of a competing product with the support of engineers and fabricators prior to 2013[10]."[11]

1. While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[12], the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:

"... the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."[13]

1. I would also note what was said in Eli Lilly and Company Limited v Apotex Pty Ltd:

"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."[14]

1. The Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.[15] recently reiterated the principle that experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on any unusual or special meanings that would be given by the skilled addressee to words which might otherwise bear their ordinary meaning, and the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time.[16] However, it is for the Court, not for any witness, however expert, to construe the specification.[17] A similar approach is taken in matters before the Commissioner.

1. The relevant evidence in this matter comes from Mr Oliver, which was filed in the opposition to the parent application. As such, Mr Oliver provides comments on a slightly different claim set. However, I do not believe that this is any great obstacle. As stated by the delegate in the parent decision:

"The value of expert evidence comes from their ability to provide their views on technical or scientific terms and phrases, and on any unusual or special meanings that would be given by skilled addressees to words which might otherwise bear their ordinary meaning."[18]

1. The terms used in the application are the same as those used in the parent application. Moreover, the description and drawings of the two applications are identical. Interpretations should, therefore, be the same, baring anything unforeseen.

1. It is Mr Oliver's evidence that he was asked to specifically comment on what he understood by the phrase "powered drive means operatively connected to said pair of slide assemblies and said article support means" in claim 1. Mr Oliver answered that he was unsure about the meaning of this and said, "it is not one that I would normally use."[19]

1. In response to submissions, the delegate construed the term "operatively connected" in the parent decision. In this regard, and while I recognise that claim 1 does not define the powered drive means being operatively connected to the scissor type linkage mechanisms, it is my opinion that the construction placed on the term "operatively connected" by the delegate in the parent decision remains the same. I repeat, and adopt as my own, her reasoning, which was:

"The adjectives 'operative' and 'connected' are defined in the Macquarie Dictionary as 'operating, or exerting force or influence' and 'joined together', respectively. The ordinary meaning of the feature is that the components are joined in a manner that allows for the desired operation of the apparatus. With reference to the present claims, the desired operation is the movement of the article support means between the raised and lowered positions.

I do not understand the claim to be requiring that the powered drive means is directly fixed to each of the slide assemblies, article support means and scissor type linkage mechanisms. If the powered drive means was directly fixed to all three parts simultaneously, I cannot envisage any arrangement where the article support means would be able to move between the raised and lowered positions. Rather, I understand it to be defining the operational relationship between the parts and the desired effect to be achieved.

Firstly, the powered drive means is operatively connected to the collective unit of slide assemblies and article support means. Separately, the powered drive means is operatively connected to the scissor type linkage mechanisms to also cause movement of the article support means, relative to the slide assemblies, between the raised and lowered positions. Consequently, the claim is not defining any mode of connection between the powered drive means and the article support means by itself.

Secondly, the required outcome of the operative connections in both instances is defined in claim 1 as being to cause movement of the article support means, relative to the slide assemblies, between the raised and lowered positions. In contrast to the use of other terms such as 'connecting', 'mounted' and 'connected to' otherwise appearing in the claims, the term 'operatively connected' defines a functional relationship between the relevant parts. ...

I do not consider the various parts being 'operatively connected' to one another to require only a direct connection with no more than nuts, bolts and the like, as suggested by Mr Oliver. Instead, I consider the term 'operatively connected' to embrace both direct and indirect connections that achieve the stated outcome. Depending on the desired operation, a direct connection may suffice."[20] (italics in original)

1. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel. Subsection 7(1) provides that an invention is taken to be novel unless it is not novel in light of the prior art base. Prior art information made publicly available in a document or through the doing of an act forms part of the prior art base for the purpose of novelty if it was published before the priority date of a claim.

1. It is well established that the general test for lack of novelty is the reverse infringement test, as set out by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement." [21]

1. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[22] The level of disclosure required is set out in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd:

"If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. ... if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.

If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee." [23] (citations omitted)

1. In their submissions, the opponent stated that claims 1-6 were not novel in light of:

(i) US 4958979 (D1)

(ii) DE 19606196 (D2)

(iii) US 2004/0131455 (D3)

(iv) US 2017/0282775 (D4)

(v) US 2018/0312381 (D5)

(vi) AU 2021203078 as a "whole of contents" citation (D6)

These documents were also raised in the opposition to the parent application. However, the opponent did not press D1-D3 in their novelty case for the parent opposition.

US 2017/0282775 (D4), US 2018/0312381 (D5) and AU 2021203078 (D6)

1. D4, D5 and D6 were dealt with by the delegate in the parent decision[24]. In that decision, she found that claims 1-4 and 6-9 of the parent application lacked novelty in light of D4 and D5, and claims 1, 2, 4, 5, 7 and 9 of the parent application lacked novelty in light of D6. As I have noted at [24] above, the claims of the parent application were narrower than the claims that are before me. Prima facie, and as submitted by the opponent, it would be reasonable to expect that a document that anticipated a narrow claim would also anticipate a broader version of that claim, which entirely incorporates within its scope the original (narrower) version. That is the case here. I have read D4-D6. I have read, and agree with, the delegate's reasoning in regard to D4-D6. The applicant provided no submissions, effectively conceding that the delegate's reasoning in the parent decision stands. It follows that claims 1-6 of the present application (being broader equivalents to claims 1-4, 7 and 9 of the parent application) lack novelty in light of D4 and D5. It also follows that claims 1, 2 and 4-6 (being broader equivalents to claims 1, 2, 4, 7 and 9 of the parent application) lack novelty in light of D6.

1. The opponent also submitted that claim 3 of the application lacked novelty in light of D6, and they raised the same submission for this opposition as they had for the parent opposition. However, the delegate in the parent decision found that:

"D6 does not disclose driven arms of the lifting assemblies 30 being operatively connected to the inner slides 42 providing a fixed link pivot and a sliding link pivot. Similarly, unlike the other prior art documents, D6 does not disclose the linear actuator being pivotally connected to the slide assembly 14."[25]

1. The opponent provided no reason as to why this finding in the parent decision was incorrect. The wording of claim 3 before me is identical to the wording of claim 3 of the parent decision and, like the delegate in the parent decision, I do not see where D6 discloses the scissor linkage mechanisms being connected to their respective slide by a fixed link pivot and a sliding link pivot.

1. D1 is directed to a lift mechanism for a motor vehicle for use by individuals in wheelchairs. Figure 1 shows the lift in an extended and lowered position:

Figure 5 shows just the lift mechanism in the lowered position:

1. The lift 1 of D1 has a platform 5 which is attached to frame 15 via two scissor mechanisms 6. D1 notes that the two guide channels 16A, 16B can be attached to the chassis 17 of the vehicle and accommodate wheels mounted to the frame 15 such that the frame 15 can be slid between a storage position, which may be within, or under, the vehicle, and an extended position as shown in figure 1. There is a jack 13 connected to the slidable frame and a shaft 30 rigidly connected to ends 9A, 10A of the arms 9, 10 of the scissor mechanisms 6. When the jack 13 is operated, the shaft 30 rotationally displaces 31, 32. This rotation of the shaft 30 causes the arms 9, 10 to pivot, thereby raising and lowering the platform 5. D1 states that:

"[m]aneuvering of the arrangement can be effected in an appropriate fashion, for example by means of controls which are contained within the vehicle, although the possibility is also afforded for the remote control of the arrangement, for example via portable control devices which can be carried by the person riding in the wheelchair."[26]

1. The opponent submitted that claims 1-4 and 6 lacked novelty in light of D1.

1. I agree that the features of claims 1 and 6 are disclosed in D1. It discloses a raisable, and lowerable, article support means (i.e. a platform) connected to a pair of slide assemblies via scissor linkage mechanisms. A powered drive means is connected to both the slide assembly and the scissor linkage in such a way that when it is operated it causes the article support means to be raised or lowered. It follows that the drive means is "operatively connected" as that term has been construed. D1 also disclose control means for controlling the drive means.

1. I also agree that D1 discloses the slide assembly arrangement of claim 2[27], the fixed link pivot and a sliding link pivot of claim 3[28] and the control means having the ability to position the article support means as defined in claim 4[29]. Furthermore, I agree with the opponent that claim 5 is novel in light of D1 because it does not disclose that the powered drive means are a pair of linear actuators.

1. D2 is directed to a lift mechanism for a motor vehicle. As D2 is a German language document, a machine translation of this document was supplied by the opponent with its evidence. Figure 1 shows the mechanism in a lowered position in relation to the vehicle:

1. Figure 2 shows just the lift mechanism in the lowered position:

1. The lift of D2 is mounted to the floor 2 of vehicle 1 via rails 3. A telescopic element 4 runs along each rail 3 and can be extended rearwardly from the vehicle 1. A further pull-out element 13 has arms 14, 15 which are slidably guided within their respective telescopic element. The arms 14, 15 are connected via a frame section 16. While figure 2 shows the pull-out element 13 detached from the telescopic elements 4, in implementation locks are used to ensure that the frame section 16 remains within the longitudinal extent of the telescopic elements 4. A loading platform 19 is connected to the arms 14, 15 via one arm 17b, 18b of scissor links 17, 18. The other arm 17a, 18a of the scissor links 17, 18 are connected to each other by a connecting rod 20 which is free to move along the underside of the loading platform 19. To raise and lower the loading platform 19 via the scissor links 17, 18, a cable winch 26 is provided on one arm 15. A cable 31 runs from the winch over pulleys 26, 27, 28, 29, 30 such that, when the winch is turned, the platform 19 is raised or lowered. With the platform 19 in the raised position, the pull-out element 13 can be slid into, and out of, the vehicle.

1. Operation of the winch can be done by hand by winding a handle 33. The translation of D2 also states:

"The cable winch 25 [sic - 26] can be replaced by other force devices for lifting and lowering the loading platform. In particular, manual operation can be replaced by an electrical operation."[30]

1. The opponent submitted that claims 1-4 and 6 lacked novelty in light of D2.

1. As was the case for D1, I agree that D2 discloses the features of claims 1-4 and 6. While the specific cable mechanism for raising and lowering the article support means is quite different to what is described in the application, what is shown in D2 is, nevertheless, a drive means that is "operatively connected" to the slide assemblies and article support means such that operation of the drive means raises and lowers the support means. With regards to the control means, I accept the opponent's point that, while there is no explicit disclosure of a control means in D2, the lift system of D2, when implemented with the suggested electrical operation, could not be operated without some form of a control means and its inclusion is implied. This was also accepted for the documents considered by the delegate in the parent decision.[31]

1. D3 is directed to a lift mechanism incorporated into a roof rack. Figure 1 shows the mechanism in its stowed position:

1. Figure 2 shows the mechanism in its lowered access position:

1. The lift mechanism 10 has a frame 20 secured to the roof 12 of the vehicle. The frame 20 has two guides 22, 24 into, and out of, which slide respective rails 50, 52. Spring-loaded pins catch holes in each rail 50, 52 to prevent the rails coming out of the guides when they are slid outwards. The lift mechanism 10 has a tray 60 to support articles, and the tray is connected to the rails 50, 52 via pivotally connected drop-down links 80, 82 and scissor links 84. In operation, as the rails 50, 52 slide out of the guides 22, 24 the links 80, 82, 84, which had been folded such that they lay essentially parallel to the rails 50, 52 when the tray 60 was in the position shown in figure 1, unfold, thereby dropping the tray 60 down to the position shown in figure 2.

1. In figure 4, D3 also discloses a lift assist mechanism:

1. The mechanism 100 is composed of cables 106 attached to the rails 50, 52 extending back to a rotatable rod 102 attached to a torsion spring 104. Winding the rod 102 moves the rails 50, 52 in and out of the guides 22, 24. D3 also states:

"It is also appreciated that a motor (not shown) may be operatively connected to the lift assist mechanism 100 to assist in moving the tray 60 from the loading position to the storage position. Further, a reversible motor may be utilized to move the tray 60 between the storage and loading positions."[32]

1. The opponent submitted that claims 1-6 lacked novelty in light of D3. I disagree.

1. Specifically, I do not consider that D3 discloses a powered drive means operatively connected to both the slide assemblies and the article support means. In my opinion, the drive means is operatively connected to only the slide assembly. It in no way interacts directly or indirectly, with the article support means. It follows that the claims do not lack novelty in light of D3.

1. I find that claims 1-6 lack novelty in light of D1, D2 and D4-D6 as follows:

(a) D1 and D2 disclose the features of claims 1-4 and 6;

(b) D4 and D5 disclose the features of claims 1-6; and

(c) D6 discloses the features of claims 1, 2 and 4-6.

1. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in light of the common general knowledge (whether in or out of the patent area) before the priority date of the relevant claim when considered alone or together with the information mentioned in subsection 7(3).

1. Subsection 7(3) defines the relevant information as:

The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or

(b) a combination of any two or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

1. The test for obviousness was stated by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd, and restated in Aktiebolaget Hassle v Alphapharm Pty Ltd:

"The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not."[33]

1. Nicholas J provided a succinct statement of principles relevant to assessing inventive step in Hood v Bush Pharmacy Pty Ltd:

"Section 7(2) of the Act uses the word 'obvious' in the course of describing what must be established before an invention can be held not involve an inventive step. Something may be 'obvious' in light of the common general knowledge, or the common general knowledge coupled with the relevant s 7(3) information, if it is 'plain or open to the eye or mind, something which is perfectly evident to the person thinking on the subject' or something which 'would at once occur to anyone acquainted with the subject and desirous of accomplishing the end'.

An invention may also be obvious in light of the common general knowledge if the person skilled in the art faced with the same problem as the inventor would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not or (using the language of the 'modified Cripps question') if the person skilled in the art would be directly led as a matter of course to take such steps in the expectation that doing so might well produce a useful or better alternative to the prior art. However, a claimed invention is not obvious merely because the person skilled in the art would consider that it was 'worthwhile to try'."[34]

1. Importantly, where a claim is directed to a combination of known integers, obviousness is not established merely by identifying each of those features in the prior art or the common general knowledge. This was explained by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd[35], stressing that the question is whether the combination of those features is obvious. In a similar vein, the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2)[36], said that the question of whether it would be obvious to add one integer to a combination of other integers:

"...will turn on what a person skilled in the relevant art, possessed with that person's knowledge, would have regarded, at the time, as technically possible in terms of mechanics, and also as practical. ... Even if an idea of combining integers, which individually may be considered mere design choices, is simple, its simplicity does not necessarily make it obvious."[37]

1. As noted at [15] above, issues existed around the prior art fridge slides because older 4WD and/or camping enthusiasts do not have the strength to work the lever of the known fridge slides to raise and lower their portable fridges and other equipment easily. As such, the problem to be addressed is to provide:

"fridge slides and other storage apparatus which require less strength to use ... than manually operated apparatus."[38]

1. The opponent relied on D1-D5 as prior art for the purposes of establishing that claims 1-6 lacked inventive step. To the extent that the opponent agreed that D1 and D2 did not disclose the features of claim 5, the opponent maintained that claim 5 lacked an inventive step in light of D1 and D2. The opponent submitted that I should find claims 1-6 do not involve an inventive step for the same reasons that the delegate in the parent decision found that claims 1-4 and 6-9 did not involve an inventive step.

1. I believe it can be said that claims 1-6 lack an inventive step in light of D1, D2, D4 and D5 for the same reasons as novelty. They are clearly relevant to the problem being addressed and disclose the features of the claims. As such, collectively, the claims lack an inventive step because the features of claims 1-6 are found in these 4 citations as follows:

D1 and D2 disclose the features of claims 1-4 and 6; and

1. With respect to D3, I cannot find the claims lack an inventive step, because the evidence does not establish that powered drive means operatively connected to both the slide assemblies and the article support means are common general knowledge (CGK) in the art. Mr Oliver did not address this. Instead, he was asked to provide comments on what fridge slides were on the market in Australia in early 2013. I do not see how this information equates to CGK in the art at the relevant time. In any event, even if I accept the opponent's submissions that Mr Oliver's comments establish the following CGK:

"(a) Fridge slides were common but the vast majority were capable only of moving a portable fridge horizontally, from a stored position inside the 4x4 vehicle to a more stable position outside of the vehicle;

(b) There was many 'straight out' fridge slides on the market, having a range of qualities at a number of price points.

(c) Premium straight out fridge slides included telescopic runners having sliding arms that moved on ball bearings, providing for a smooth and practically effortless sliding action

(d) The MSA Drop Slide, which would swing forward as it lowered because of parallel arm linkages.

(e) The 'Tilt Slide' designed by Candy Campers, which tilted the fridge towards a user as it had been slid out of the vehicle",[39]

it is clear that powered drive means have not been established as being CGK.

1. For similar reasons, claim 5 does not lack an inventive step in light of D1 and D2. The opponent submitted that:

"[p]lainly, using a 'pair of powered linear drives' instead of a single linear drive on an otherwise known elevating storage apparatus does not constitute an inventive step. Again, the lack of an inventive step with respect to this claim is plain whether or not it is specifically addressed by expert evidence."[40]

1. Putting to one side the somewhat questionable statement that expert evidence is not needed, the evidence does not establish that powered linear drives or actuators are CGK in the art. Moreover, I do not believe that the drives of D1 and D2 can be considered linear drives, so there is more than a simple doubling of powered linear drives.

1. The opponent submitted that claims 7-9 lacked an inventive step. These claims are essentially equivalent to claims 10-12 of the parent application. Claims 10-12 of the parent application were found to not lack an inventive step in light of D1-D5 in the parent decision. The opponent submitted that:

"claims 7, 8 and 9 lack an inventive step in light of D4 or D5. Claim 7 defines an otherwise known elevating storage apparatus which further includes an actuating lever (which claim 9 defines as having a handle) operatively connected to said linkage assembly and arranged to selectively raise and lower said platform when said one or more powered actuators are not operable. Providing a lever with a handle for manually operating an elevating storage apparatus in the event of its powered actuator not being operable is clearly an obvious modification, particularly as manual handles/levers are provided in both the EasySlide® (Clearview's existing fridge slide) and the MSA Drop Slide® (Miles' existing fridge slide) referred to in paragraphs 17 and 12 of the Oliver Declaration. This is plain and, contrary to the decision of the Delegate in [the parent decision] (see [150]-[151]), it is plain whether or not it is specifically addressed by expert evidence."[41]

1. The opponent's argument started with the presumptions that (i) levers are CGK for fridge slides, since fridge slides with operating levers had been on the market for a long time, and (ii) that it was CGK in engineering design to include backups. Therefore, the argument was that the PSA, when designing a powered fridge slide would include a manual actuator as a backup.

1. However, as well as being unsupported by any evidence, this approach is contrary to the problem to be addressed. As noted above, the problem was to provide fridge slides which required less strength to operate. Given that was the problem, it seems counterintuitive that the PSA would include something that required the same, or more (given the presence of powered actuators), strength to operate as the prior art slides, when less operating strength was being sought.

1. On the evidence before me, I cannot find that claims 7-9 lack an inventive step.

1. If I am wrong and it could be said that, despite the lack of evidence, a backup, manual mechanism could be included, such a mechanism would potentially have to be designed such that the operating force was not as high as with the prior art manual actuators. The specification does not address this potential problem with a potential design. This could lead to inquiries around whether the claims meet the requirements of s40.

(a) claims 1-4 and 6 lack an inventive step in light of either one of D1 and D2 as they disclose all the features of these claims; and

(b) claims 1-6 lack an inventive step in light of either one of D4 and D5 as they disclose all the features of these claims.

On the evidence before me, I cannot find that claims 7-9 lack an inventive step.

Subsection 60(3) - lack of clear enough and complete enough disclosure (S40(2)(a)) and lack of support (S40(3))

1. The opponent submitted that they did not press the lack of full description, lack of support and lack of clarity grounds in the present opposition given that those grounds were unsuccessful in the opposition to the parent application. However, as I have already stated in my decision, the claims that are before me are broader than those before the delegate in the parent decision. Given this, while writing this decision, I developed concerns that the claims did not comply with s40(2)(a) and lacked support as per s40(3). On 15 August 2025 I exercised my power under s60(3) of the Act to take into account grounds of opposition not relied upon by the opponent. I invited the applicant to file submissions in chief, the opponent to then file their submissions in answer, and the applicant to then file their submissions in reply. I noted that, should the applicant file no submissions in chief, no submissions would be required from the opponent.

1. The applicant failed to file submissions in chief.

Lack of clear enough and complete enough disclosure

1. S40(2)(a) of the Act requires that the complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a PSA.

1. In CSR Building Products Limited v United States Gypsum Company[42] a delegate of the Commissioner determined that the steps involved in assessing whether the disclosure requirement is satisfied were:

"(i) Construe the claims to determine the scope of the invention as claimed;

(ii) Construe the description to determine what it discloses to the person skilled in the art; and

(iii) Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims."[43]

1. In Evolva SA[44], a Deputy Commissioner reformulated the third question stated in CSR as a two-step consideration:

"(a) Is it plausible that the invention can be worked across the full scope of the claim?

(b) Can the invention be performed across the full scope of the claim without undue burden?"[45]

1. The approaches taken in CSR and Evolva have found approval with the Federal Court in Cytec Industries Inc. v Nalco Company[46].

1. In my invitation I noted that the invention of claims 1 and 6 encompassed any power drive means/actuator which was connected to the pair of slide assemblies and the article support means in any manner such that operation of the powered drive means caused movement of the article support means, relative to the slide assemblies, between the raised and lowered positions. I observed that the sole embodiment directed to the claimed invention is shown in figures 27 to 29 of the present application and utilised linear actuators operatively connected to the slide mechanisms and the support means. I highlighted that the only type of drive means mentioned in the specification were linear actuators - powered hydraulic or pneumatic cylinders, a worm drives, rack and pinion drives and telescopic ram assemblies.

1. I stated that, in preparing his evidence, Mr Oliver was given a document which was referred to as "Patent Specification 2", which was the accepted specification of the parent application, and was the same as the specification for the present application. Having read the document, Mr Oliver stated that:

"I was also asked whether I thought that Patent Specification 2 contains enough information to produce any configuration of an elevating storage apparatus including scissor type linkage mechanisms and a powered drive means that would be able to lift/lower a portable fridge. I do not think that this would be the case. For the reasons described above, I expect that the majority of configurations of the component parts listed in claim 1 would result in apparatus that would not work." (my emphasis)

"Figures 27 to 29 in Patent Specification 2 would give a good starting point for the design of a working prototype of a powered fridge slide with scissor arms",

and figures 27 to 29 of the parent application are identical to figures 27 to 29 of the present application. However, I pointed out that these figures only show a linear drive, and the specification provided no guidance as to how to connect powered drive means which were not a type of linear drive so as to move the article support means between the raised and lowered positions when the actuator is operated. I stated that, to my mind, the present application might be said, at best, to provide enough information for the PSA to arrive at the linear actuator-powered fridge slide falling within the claims. I could not see how that disclosure could be applied to other types of powered drive means that fell within the scope of claims 1 and 6.

1. I set out that, in my opinion, the PSA would be in the same position that Mr Oliver encountered when he was asked to read a document referred to as "Patent Specification 1", which was the application from which the parent application was originally divided (and did not describe an elevating storage apparatus having scissor type linkage mechanisms where a refrigerator is lifted and lowered using a powered drive means). Having read Patent Specification 1, Mr Oliver was asked if he could produce a working protype of an elevating storage apparatus having scissor type linkage mechanisms with a powered drive means from the information in the specification. He stated that:

"many factors, few of which are described in Specification 1, would need to be investigated before it would be possible to make such a working prototype ... engineering geometry (e.g. how the intersecting scissor arms move in use), mounting configurations (which can affect the mechanical advantages utilised in the apparatus) and the locations at, and manner in which, the component parts are joined together (e.g. with one end of each scissor arm being able to slide) can greatly affect the functionality of the resultant assembly. Specification 1 does not describe these factors in any detail."

1. He went on to say that something might be able to be produced but:

"doing so would take 12 months or more research and design, assuming that competent design engineers were involved in the process and that parts for the prototypes could quickly be obtained ... Specification 1 does not contain much in the way of guidance for producing such an elevating storage apparatus."

1. I stated that, to my mind, it would be an undue burden on the PSA to take the disclosure of linear actuators operating a fridge slide and try to apply that teaching to make use of other types of non-linear powered drive means. The necessary geometry, mountings, attachments and connections would require extensive work. Noting that only claim 5 limited the powered drive means to a linear actuator, I submitted that, in my opinion, claims 1-4 and 6-9 defined an invention which was not fully described and, consequently, they did not comply with the requirements of S40(2)(a).

1. As already noted, the applicant did not provide any submissions in response to my query and, consequently, there were no submissions from the opponent.

1. Regardless of whether the applicant's position can be seen as a concession or not, it would appear to me that the applicant does not wish to argue against my opinion. In such circumstances, I do not have persuasive refutations to my stance. As such, absent any inclusion in claims 1-4 and 6-9 of linear actuators, I find that it would be an undue burden on the PSA to apply the teaching of linear actuators operating a fridge slide in an attempt to make other variations within these claim's scopes. These "other" fridge slides have not been enabled. As such, claims 1-4 and 6-9 do not comply with s40(2)(a) as there is no clear enough and complete enough disclosure of the invention across the scope of the claims.

Non-compliance with the requirements for support for the claims (S 40(3))

1. S40(3) as amended by the Raising the Bar Act requires that the claims must be supported by matter disclosed in the specification. The requirement of support can be summarised as requiring that the scope of the claims "should correspond to the technical contribution to the art".[47]

1. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[48] Burley J confirmed that the following summary provided by Aldous J in Schering Biotech Corp's Application, and often followed in the United Kingdom, encapsulates broadly the approach in Australia:

"...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court's task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word 'support' means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed."[49]

1. Burley J provided further guidance on what "support" means in TCT Group Pty Ltd v Polaris IP Pty Ltd:

"In Fuel Oils/Exxon, (T409/91) [1994] OJ EPO 653 the EPO Boards of Appeal said, in a passage at 3.3 that has been often cited, including by Lord Neuberger in Generics UK [Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] All ER 955; [2009] RPC 13] at [97], that: (emphasis added):

... [there is a] general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified ... This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.

The language of 'at the disposal of the person skilled in the art' should be understood to mean that the patent must enable the invention to be performed by such a person.

In Jusand [Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540], Rofe J observed that one way for the claim impermissibly to exceed the technical contribution to the art is for the claim to cover ways of achieving the desired result which owe nothing to the patent or any principle that it discloses: at [483]."[50]

1. In CSR, which was referred to with approval in Merck, the delegate summarised[51] the approach to determining whether the requirements of support are satisfied as follows, which remains relevant in view of subsequent Federal Court decisions:[52]

(i) construe the claims to determine the scope of the invention as claimed,

(ii) construe the description to determine the technical contribution to the art, and

(iii) decide whether the claims are supported by the technical contribution to the art.

1. Claims will exceed the technical contribution to the art when they claim products that the specification does not enable[53], or cover ways of achieving the desired result which owe nothing to the patent, or any principle disclosed therein.[54]

1. Guidance on what is meant by "the technical contribution to the art" is apparent from CSR:

"The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics at [30]:

'The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. "Inventive concept" is concerned with the identification of the core (or kernel, or essence) of the invention - the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 9 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept - how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.'

In the same case Lord Neuberger of Abbotsbury described the technical contribution at [95] as:

'in the context of a simple product claim such as the present (especially where the claim is to a single chemical product), the technical contribution is (at least in the absence of special factors) the product itself. As I have suggested, the technical contribution can often be equated with non‑obvious novelty - what is new to the art and not obvious is really another way of identifying the technical contribution.'"[55]

1. In my invitation I raised two points why the claims lacked support:

(i) they were not limited to the technical contribution of linear actuators; and

(ii) claim 6 defined only a single scissor linkage mechanism.

1. I stated in my invitation that, for the reasons set out for lack of full description, claims 1-4 and 6-9 lacked support. Given that the problem to be addressed was to provide fridge slides and other storage apparatus which require less strength to use than manually operated apparatus, I noted the present application solved this with a powered drive means to operate the slide. I stated, however, that this general idea was not the technical contribution, and that it could not be said that the claims extended only to subject-matter at the disposal of the PSA having read the specification (in line with Fuel Oils/EXXON[56]).

1. In my opinion, the specification limited the powered drive means to linear actuators. I could not see how it could be said that linear actuators in a specific configuration represent a general principle of application of actuators in general. I noted that the mode of operation of a powered linear actuator was quite different to a powered rotary actuator. Apart from the (far too) broad principle that a powered actuator actuates when power is applied to it, there were little to no other points of intersection between these two types of actuators. Therefore, I was of the opinion that the technical contribution lies in the use of two linear actuators operatively connected to both the frame mounted to the vehicle and the support platform that holds an article, such that the operation of the actuators raised and lowered the platform.

1. As claims 1-4 and 6-9 did not include this technical contribution, I stated that they lacked support and did not comply with S40(3).

Different invention - scissor mechanism - claim 6

1. In my invitation I stated that claim 6 lacked support because it defined an invention that was materially different from what was described in the body of the specification. As noted in Calix Limited v Grenof Pty Ltd[57]:

"a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed."[58]

1. I noted that claim 6 defined the support platform as:

"being operatively connected to said one or more extendable tracks by a scissor type linkage mechanism".

1. However, there was no disclosure of the connection between the support platform and the vehicle-mounting frame by a single scissor linkage mechanism. I stated that it was difficult to see how such an arrangement would have enough strength to support a load on the platform. I noted that the invention defined in claim 6 was materially different to the invention described, which required at least two such mechanisms. As such, claim 6 lacked support.

1. I also noted in passing in my invitation that claim 6 was internally inconsistent, as it defined only a single scissor linkage mechanism between the frame and the platform, yet referred to "said one or more scissor type mechanisms".

1. As noted, the applicant provided no submissions. As such, there was no need for submissions from the opponent.

1. As I have already stated at [96] above, I am left in a position where I do not have persuasive refutations to my stance. As such, the claims 1-4 and 6-9 lack support.

1. The opposition is successful. Claims 1-6 lack novelty and inventive step. Claims 1-4 and 6-9 do not comply with s40(2)(a) as they define an invention for which there is no clear enough and complete enough disclosure of the invention across the scope of the claims. Furthermore, claims 1-4 and 6-9 lack support as they do not include the technical contribution of two linear actuators operatively connected to both the frame mounted to the vehicle and the support platform that holds an article, such that the operation of the actuators raised and lowered the platform. Finally, claim 6 lacks support because it defines the connection between the support platform and the vehicle-mounting frame by a single scissor linkage mechanism, and this was not described.

1. I consider these issues can be overcome by amendment. I will allow the applicant two (2) months from the date of this decision to propose appropriate amendments to overcome the issues identified.

1. Purely for the sake of completeness, while I did not mention this in my invitation, the dependency of claims 7-9 is problematic. Claim 7 is appended to "any one of the preceding claims" but defines a "platform", which does not appear in claims 1-4. Although one might argue that the reference to "platform" implies claim 7 (and therefore claims 8 and 9) appends from claim 5 or 6, claims 7-9 also define a "linkage assembly", which is not in any preceding claim. This creates a potential clarity issue, which I will not contemplate any further and leave as an exercise for the applicant.

1. While the normal approach is that costs should follow the event, the opponent submitted that the applicant's conduct with respect to the application warranted an award of costs above what is specified in Schedule 8.

(a) filed this (divisional) application with claims identical to the parent application;

(b) refused to give the undertaking requested by the Commissioner, when they sought to withdraw the parent, to not pursue in any further applications (including this application), the same, or substantially the same, invention that had already been opposed in the opposition to the parent application[59]; and

(c) not withdrawn this application following the parent decision, or, at the very least, not sought to amend this application, even though it had claims that were evidently not novel or not inventive.

1. The opponent submitted that this conduct meant that the opponent had been required to oppose substantially the same claims twice. Given the similarity of claims, the opponent felt that they were bound to succeed this time for the same reasons that it succeeded in the parent decision. In the opponent's opinion, the present second opposition (and the costs associated with it) should never have been necessary.

1. The opponent noted that the parent decision had issued on 5 March 2024, and, thus, the applicant had been well aware since then that, if the narrower claims of the parent application lacked novelty and inventiveness, the broader, unamended claims of this application would also lack novelty and inventiveness. The opponent submitted that a properly advised applicant would have withdrawn this application, or conceded to the present opposition, shortly after receiving the parent decision. However, they had not and had allowed this application to carry on.

1. The opponent also noted that the applicant had requested an oral hearing, indicating to the opponent a desire to prosecute this application. As such, the opponent had proceeded on the basis that there would be an oral hearing and had paid the hearing fee and briefed counsel to draft written submissions, prepare for the hearing and appear at the hearing. But the applicant's desire had not manifested. The opponent noted that the applicant had informed the Commissioner and the opponent after the deadline for filing their written submissions that it would not be filing any submissions and would not be appearing at the hearing.

1. According to the opponent, the applicant knew, or ought to have known, that its position was not viable when it requested an oral hearing on 28 January 2025. The applicant had not given any explanation for its actions, or lack of actions, from that point onwards. Consequently, the opponent had been forced to incur a substantial amount of unnecessary costs due to the applicant's conduct/indifference.

1. The opponent referred to the Patent Manual of Practice and Procedure (the Manual) which stated:

"While the Commissioner will not normally award costs other than on the basis of Schedule 8, such an award will be appropriate 'when the justice of the case so requires or where there may be some special or unusual feature in the case' (Re Wilcox; Ex parte Venture Industries Pty Ltd and Others, [1996] FCA 1942; 141 ALR 727). This could include circumstances where, because of the complexity or importance of the case, the Schedule provides inadequate recompense, or where the conduct of one or other of the parties indicates that variation of the scale is appropriate (see GS Technology Pty Ltd v Davies Shephard Pty Ltd [2000] APO 49). The basic question to consider is 'whether the justice of the case requires variation of the schedule' (E.I. Du Pont De Nemours and Company v ICI Chemicals & Polymers Limited [2007] APO 12), and principles relevant to the variation of the scale have been discussed in a number of Office decisions including, for example, Sterling Drug Inc v Boots Company PLC, 35 IPR 630_, E.I. Du Pont De Nemours and Company v ICI Chemicals & Polymers Limited_ [2007] APO 12 and Viskase Corporation v W.R. Grace & Co.-Conn [1998] APO 47. ...

Conduct that the Courts have found to warrant the award of costs on an indemnity basis includes misconduct that causes loss of time to the Court and to other parties; making allegations which ought never to have been made, or unduly prolonging a case by groundless contentions; commencing or continuing an action for some ulterior motive, or with wilful disregard of the known facts or the clear law in circumstances where the applicant, properly advised, should have known there was no chance of success; and abusing the process of the Court, in the sense that the Court's time, and the litigants' money, has been wasted on totally frivolous and thoroughly unjustified proceedings (Rouse v Shepherd (No 2) (1994) 35 NSWLR 277 at 279-280). See also Colgate-Palmolive Co and another v Cussons Pty Ltd[1993] FCA 536; , 28 IPR 561.

Conduct both in and leading up to proceedings may be taken into account when considering an award of costs (Evans and Another v Maclean Shire Council and Another [2004] NSWLEC 89, Oshlack v Richmond River Council [1998] HCA 11; (1998) 193 CLR 72 at 97-98).

Costs awarded in relation to proceedings on the basis of a variation of the scale may include items included in the Schedule on full or partial indemnity basis, or additional items that may otherwise be relevant to the proceedings. In this regard the Federal Court Scale of Costs may be a useful guide."[60]

1. The opponent submitted that the applicant's conduct clearly met a number of the types of conduct referred to in this part of the Manual as being a basis for a special costs order. They submitted that the applicant was:

(a) unduly prolonging a case by groundless contentions;

(b) commencing or continuing an action for some ulterior motive, or with wilful disregard of the known facts or the clear law in circumstances where the applicant, properly advised, should have known there was no chance of success; and

(c) abusing the process of the Court or IP Australia in the sense that the Court's or IP Australia's time and the opponent's money had been wasted on totally frivolous and unjustified proceedings.

1. The opponent maintained that this had been the case since at least the parent decision had issued on 5 March 2024.

1. While not relying on the accusation that the applicant was continuing an action for an ulterior motive (since the opponent's position was focussed on continuing an action with wilful disregard of the facts or law), the opponent did point to a significant degree of acrimony between the opponent and the applicant following the applicant's unsuccessful infringement action against the opponent, but the opponent's successful cross-claim for misleading and deceptive conduct.[61]

1. The opponent submitted that the approach adopted by the applicant to this opposition had required the opponent to incur substantial costs in drafting and filing a statement of grounds and particulars, preparing and filing evidence, preparing and filing written submissions, paying a hearing fee and preparing for an oral hearing, while the applicant incurred no costs themselves since they did not file any evidence, did not file any submissions, and do not make an appearance at the hearing.

1. Accordingly, the opponent submitted that the applicant should be ordered to pay the actual costs of the opponent incurred in relation to the conduct of this opposition on an indemnity basis. The opponent suggested that calculation of such costs could be made in accordance with the scale provided in the Federal Court Rules 2011 (Cth).

1. I have some sympathy with the opponent. It is confusing to me why, in light of the parent decision, the applicant did not, at the very least, amend their claims. Instead, the applicant deliberately pursued substantially the same invention that was found to be non-patentable in the parent decision. To my mind any competent party would have recognised what the outcome of this opposition would be and, if genuinely seeking to obtain a patent, would have taken steps to at least narrow the focus of the opposition. This borders on, if not is, wilful disregard of the known facts. The applicant's behaviour is such that it could be said that the opponent was forced down a route that did not necessarily have to be taken.

1. Moreover, the applicant's conduct in requesting an oral hearing and then failing to appear raises concerns. The applicant knew that the opponent was willing to proceed on the basis of written submissions but also knew that the opponent would attend if the applicant requested an oral hearing. However, the applicant did not indicate their intention to not participate in the hearing in any way until effectively the last minute, when there was no doubt that the opponent had already outlaid substantial sums of money. The applicant's actions have rendered the oral hearing proceedings frivolous.

1. As such, I believe that a variation in costs is appropriate. In this regard, while I accept that the opponent drafted and filed a statement of grounds and particulars, and prepared and filed evidence, it must be observed that the SGP filed for the parent opposition and the SGP filed for this opposition are essentially identical. Moreover, while I recognise that the declaration by Andrew Jones is EIS that was prepared for this opposition, it merely provides background facts, gives the outcome of the parent decision and observes that the priority date of this application as shown on the IP Australia website was different to the priority date determined in the parent decision. While interesting, it is of no import to the grounds of opposition. The most important role that Mr Jones' declaration did was introduce the declaration by Jason Oliver which formed the EIS for the parent opposition. As such, the EIS filed in this opposition is essentially the same as the EIS filed for the parent opposition. Consequently, while it may be said that the applicant's behaviour forced the opponent down a path, and there is no doubt that preparing the SGP and EIS required some time and effort, most of the work undertaken for that route already existed and can be encompassed within the existing costs structure in Schedule 8.

1. Notwithstanding that, the applicant's behaviour in insisting on a hearing and then not participating in that hearing requires redress. The opponent has been put to unnecessary expense by requiring counsel to prepare for, and appear at, an oral hearing that did not, having regard to the applicant's behaviour, need to happen.

1. Consequently, I will award costs according to Schedule 8 against the applicant, Shane Miles. I will apply a variation to fee item 11 so as to include actual costs of counsel to prepare for the oral hearing, and fee item 14 so as to reflect the actual costs of counsel to appear at the oral hearing. I would note that the oral hearing itself lasted for approximately 27 minutes.

a pair of spaced apart slide assemblies adapted to be mounted to or on a vehicle;

article support means supported by or between said spaced apart slide assemblies for longitudinal movement between an elevated stowed position in or on the vehicle and a withdrawn (or extended) elevated access position beyond the vehicle;

linkage means connecting the article support means to the slide assemblies so as to enable the article support means to be raised and lowered relative to the slide assemblies between the elevated access position beyond the vehicle and a lowered access position also beyond the vehicle;

wherein said linkage means includes spaced scissor type linkage mechanisms connecting respective opposite sides of the article support means to respective opposite ones of the slide assemblies; and

powered drive means operatively connected to said pair of slide assemblies and said article support means and arranged to cause movement of said article support means relative to said pair of slide assemblies between said elevated access position and said lowered access position and vice versa; and

control means in communication with said drive means for controlling operation of said drive means.

2. Elevating storage apparatus according to claim 1, wherein each slide assembly is a compound slide assembly including an outer fixed slide support, an intermediate slide support and an inner slide which can be withdrawn (or extended) from its stowed elevated position to a withdrawn (or extended) elevated position at which both inner slides are supported beyond the outer fixed slide supports.

3. Elevating storage apparatus according to claim 1 or claim 2, wherein the spaced scissor type linkage mechanisms are connected to respective inner slides each of which provides a fixed link pivot and a sliding link pivot.

4. Elevating storage apparatus as claimed in any one of the preceding claims wherein the control means is adapted to actuate said powered drive means for selectively positioning the article support means between the elevated first access position and the second lowered access position.

5. Apparatus for storing and moving one or more items, for example, a portable fridge mounted in a vehicle, the apparatus including:

a first part including a base or frame adapted to be mounted to a vehicle;

a second part including a platform or frame adapted to support the item to be stored and moved;

said second part being operatively connected to said first part for substantially linear movement of said platform or frame at one level relative thereto from a retracted position within the vehicle or on the vehicle to an extended position at said one level substantially beyond (or outside) the vehicle and for movement from the extended position at the one level to a down position at a lower level, and

powered drive means operatively connected to said base or frame of said first apart and said platform or frame of said second part so as to cause movement of said platform or frame of said second part from said one level to said down level and/or vice versa;

wherein said second part is connected to said first part by a pair of spaced apart scissors type linkage mechanisms and wherein said powered drive means includes a pair of powered linear drives or actuators and wherein one part of the respective linear drives or actuators is connected to said first part and the other part is connected to a respective one of said scissor type linkage mechanisms.

6. Apparatus for storing and/or moving one or more items, for example, a portable fridge mounted in a vehicle, the apparatus including:

a first part including a base or frame adapted to be mounted to a vehicle against movement relative thereto and a second part including a platform adapted to support the one or more items being stored and/or moved;

said second part being operatively connected to said first part by one or more extendable tracks connected to said first part and said second part so as to allow substantially linear movement of said platform relative to said first part from a retracted (or stowed) position at one level within the vehicle or on the vehicle to an extended position at said one level substantially beyond the vehicle; and

said platform being operatively connected to said one or more extendable tracks by a scissor type linkage mechanism so as to allow movement of said platform from the one level at the extended position to a second position at a lower level, and

one or more powered actuators operatively connected to said extendable track and said one or more scissor type mechanisms and arranged to cause movement of said platform or frame from said one level to said second level and vice versa.

7. Apparatus according to any one of the preceding claims further including an actuating lever operatively connected to said linkage assembly and arranged to selectively raise and lower said platform when said one or more powered actuators are not operable.

8. Apparatus according to claim 7 wherein said actuating lever is releasably connected to said linkage assembly.

9. Apparatus according to claim 7 or claim 8 further including a handle connected to or integral with said actuating lever whereby when said actuating lever is connected to said linkage assembly, said handle is at a predetermined position remote from said platform or frame.

[1] Clearview Towing Mirrors Pty Ltd v Shane Robert Miles [2024] APO 11

[4] Specification, page 2 line 29-page 3 line 2

[5] [2007] FCA 481 at [16]

[6] [2000] FCA 980 at [70]

[7] [2015] HCA 30 at [23]

[12] [1988] FCA 399; 13 IPR 385

[13] [2009] FCAFC 70; 81 IPR 228 at [118] - [120]

[14] [2013] FCA 214 at [139]

[15] [2023] FCAFC 7 at [48]

[16] Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [24]

[17] Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 1529 at [485]- [486]

[21] [1977] HCA 19; 137 CLR 228 at 235, [20].

[22] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517.

[23] [1972] RPC 457 at 485-486.

[24] Parent decision at [119]-[140]

[27] See items 16, 15 and 7 of D1 figures

[29] Power source 13 is actuated, implying a control means (see, for example, [126] of the parent decision)

[30] See also D2 at column 6, lines 27-30 (this also indicates the number "25" when it should be "26"

[31] Parent decision at [126] for example

[33] [2002] HCA 59; (2002) 212 CLR 411 at [50]

[34] [2020] FCA 1686 at [116]- [117] (citations omitted)

[35] [1980] HCA 9 at [116]

[36] [2007] HCA 21

[38] Specification, page 2 line 29-page 3 line 2

[42] [2015] APO 72 (CSR)

[44] [2017] APO 57 (Evolva)

[46] [2021] FCA 970 at [143]- [149]; [2021] FCA 970; 162 IPR 202.

[47] Fuel Oils/EXXON (T 409/91) [1994] OJ EPO 653 at 659 (Exxon).

[48] [2020] FCA 1477 (Merck) at [546].

[49] [1993] RPC 249 at 252-253

[50] [2022] FCA 1493 at [243]-[245] (TCT Group)

[52] See, e.g. Merck at [546]-[547], Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 (Jusand) at [481]

[53] Merck at [553], TCT Group at [243]-[244]

[57] [2023] FCA 378 (Calix)

[61] MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24