CGK + 1
160 Under the Patents Act 1952 a prior disclosure, in particular in a specification open for public inspection, did not provide a basis for a conclusion as to obviousness without evidence that the disclosure was part of the common general knowledge at the priority date: Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 292, 295.
161 Section 7(2) and (3) of the current Act, set out at [78], were intended to provide some relaxation of the rule established in Minnesota: Alphapharm at [16]. Those provisions allow the common general knowledge to be combined with (relevantly) information arising from the doing of one act, if a person skilled in the relevant art could, before the priority date, be reasonably expected to have ascertained, understood and regarded the information as relevant to work in the relevant art.
162 In Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280 at [36] the High Court said:
"In Tidy Tea Ltd v Unilever Australia Ltd, Burchett J considered the provisions respecting inventiveness in the new s 7. His Honour observed that it was one thing to say that there had been a relaxation of the rule forbidding the use of prior disclosures not actually proved to be part of common general knowledge at the relevant time and another to say that, in all circumstances, such a disclosure might be used to some relevant effect. His Honour continued:
'The new provisions are limited by the words 'being information that the skilled person … 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'. And if a prior [disclosure] passes those tests, it must still be able to be said that, if that [disclosure] had been considered by the hypothetical skilled person together with the common general knowledge at the relevant time, 'the invention would have been obvious'.
That construction of s 7 should be accepted."
163 Their Honours went on at [37]:
"The trial judge correctly construed s 7(2) as looking first to the light shed by the common general knowledge as it existed in the patent area before the priority date, considered separately, and, secondly, to that common general knowledge considered together with either of the kinds of information mentioned in s 7(3); each of those kinds of information is to be considered separately but in either case must be information which a person skilled in the relevant art in the light of the common general knowledge could, before the priority date, reasonably be expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."
164 Before the primary judge the relevant "act" relied on by Doric for the purposes of s 7(3)(a) was the sale, taken individually, of the locks enumerated at [96], each of which was sold before the priority date.
165 The primary judge held that s 7(3) did not assist Doric. His Honour's reasons in relation to the storeroom locks, the Lockwood 530 and the Boyd mortice lock have been recorded at [99]. His Honour then considered separately the DS60 sliding door lock and the Abloy rim lock. It is not necessary to record what was said about them. On the appeal Doric did not rely on the Abloy, and the DS60 was not at the forefront of its case.
166 As appears from [99], the primary judge gave two reasons for denying Doric resort to s 7(3). The first was the "practical constraints on this approach". The "approach" is looking at other locks to get ideas. The constraints were the need to buy the locks in order to take them apart so as to understand their internal mechanisms. What we have said at [138] to [159] establishes that the primary judge erred in his considerations of common general knowledge by failing to distinguish between the CGK claims and the preferred embodiment claims. That failure appears again in connection with his treatment of s 7(3).
167 In order to determine whether a storeroom lock, a Lockwood 530 or a Boyd mortice lock possesses integer (vi), it is only necessary to operate it or read a brochure describing its attributes. There is no need to take it apart so as to understand its internal mechanisms. For example, the Lockwood brochure for the storeroom locks (510, 5110 and 5210) says "Key outside locks or unlocks both knobs". The primary judge was thus wrongly focusing on the preferred embodiments.
168 The primary judge's apparent finding, on the basis of Mr Freestone's opinion, that in comparing lock designs one has regard to other rim mounted locks only, is mistaken. Claim 1, and thus claim 13 and the other dependent claims, is not limited to rim mounted locks or even to locks for doors. Indeed figure 1 of the Patent is a mortice lock. Further, his Honour's reliance on Mr Freestone's opinion again reflects the failure to distinguish between the CGK claims and the preferred embodiment claims. Mr Freestone's evidence was directed to the latter, and is thus inapposite. In the relevant part of his affidavit he first describes the inner workings of the Blanch prototype, see [148]. Then he disputes Mr Garland's evidence about the prior art base, saying that much of it "does not relate to the design of rim‑mounted locks of the type that Mr Blanch was designing". Then he opines that "the internal mechanisms of Mortice locks … are completely different in design to those of rim‑mounted locks". He then concludes that if he were endeavouring to design a new form of rim‑mounted lock, he would not have regard to the way in which a Mortice lock operated, but would restrict himself to rim‑mounted locks. Mr Freestone's evidence was thus directed to the internal workings of the various locks, and may well be apposite to the design of a new rim‑mounted lock, such as an improvement of the old 001. But that is not the issue here. Rather, it is whether other locks available before the priority date possessed integer (vi).
169 Because of the view he took about the need to take locks apart and the irrelevance of non‑rim‑mounted locks, the primary judge did not reach the stage of asking whether prior art information consisting of the sale, taken individually, of the storeroom locks, the Boyd mortice lock and the Lockwood 530 was "information that the skilled person … could, before the priority date …, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area".
170 The Lockwood 530 was sold in considerable numbers before the priority date. Mr Garland produced photographs of its locking mechanism. He was of the view that it possessed each integer of claim 1. Mr Wilson said he was familiar with the 530 and had been involved in installing it. It contained all the integers of claim 1. He explained the lock's features:
"The features of this are that when you are on the inside you can optionally lock and unlock the handles from both sides, from the inside.
…
The inside handle when it's in the unlocked position can retract the latch and when it's turned and locked it won't retract it. From the outside we have a similar operation except for this time it's using a key. So that you can optionally lock or unlock the lock by turning the key."
The following exchange then took place with Lockwood's counsel:
"If you leave a room which had that lock on it and you wanted to lock the room, may we take it you turn the inside snib and then pull the door shut behind you? --- Yes
When you return to get in, the outside handle is locked? --- Yes.
So you put the key in and the effect of unlocking with the key on the outside, what does that do to the inside handle? --- It also releases the inside handle.
Then you go in the door and you shut the door behind you, may we take it you don't have in that circumstance a problem with being locked inside? --- No."
171 In the course of cross‑examination Mr Wilson said that with the 530 a person on the outside of the door could use the key to withdraw the latch. He was aware of that lock in February 1996. He was also aware of other types of lock used by builders that performed the same function as the 530. Many builders used such a lock with a push button on the inside rather than a snib.
172 Mr Wilson was also familiar with the Lockwood storeroom locks (510 and 5110). The two locks operated in the same way. They worked similarly to the 530, except that instead of a snib on the inside, they have a key hole. The problem of locking yourself in does not arise with these locks. When the lock is in a deadlocked condition and someone uses the key to open it, that renders the locking means inactive. These locks have a lock release means which is responsive to the operation of the outside actuator so as to render the inside locking means inactive.
173 Mr Wilson said the Boyd mortice lock had all the integers of claim 1. The outside key undoes the inside locking means. Mr Garland said the Boyd mortice lock formed part of the relevant common general knowledge, and was well known to him before 14 February 1996 and had become part of his background knowledge by that date. That lock contained each integer of claims 1 to 5. Each lock forming part of the prior art base (including the Boyd mortice) was sold, installed and used in large quantities in Australia prior to 14 February 1996, and as such was well known to him and to other skilled workers. In a later affidavit he repeated that the Boyd mortice had become part of his background knowledge by 14 February 1996.
174 Mr Alchin said that prior to 14 February 1996 the Boyd mortice lock was manufactured and sold in Australia in large numbers by one or more of the Alchin & Long Group of Companies for domestic and commercial application. He was also aware of significant quantities of Falcon S371 and the storeroom locks having been sold, installed and used throughout Australia prior to 14 February 1996. In his opinion each of the above locks, including parts and locking mechanisms, would have been well known to locksmiths and lock designers in Australia as at and prior to 14 February 1996.
175 Mr Garland gave evidence about the Falcon S371, a storeroom type lock. He said that when the lock is in the unlocked position, each handle may be rotated to cause the retraction of the latch bolt. If the key is inserted in either handle and rotated in a clockwise direction, both handles are locked. If the key is inserted in either handle (when locked in position) and rotated in an anti‑clockwise direction, the movement of the key (alone) first unlocks both that handle and the opposite handle and secondly causes the latch bolt to be retracted.
176 In the course of Mr Garland's cross‑examination this exchange occurred:
"And you know that locks such as the Falcon lock don't give rise to the problem which the patent's attempting to address, do they? --- No, but they solve the problem.
…
The reason it didn't was because the locking means of the Falcon lock operated simultaneously on both an inside and outside handle? --- Yes, or individually.
Well, the locking means of the Falcon lock is such that if you turn the key on the outside, it unlocks both the inside and outside handle? --- That's correct.
Once you do that and go inside the door, the inside handle is free? --- That's correct.
So there's no circumstance in which you might be locked in? --- That's correct.
…
And that's how the Lockwood 530 worked, as well, correct? --- Yes.
That's how the Boyd Mortise lock worked, as well, wasn't it? --- Yes.
All the locks you've referred to as containing the features of claims 1 to 5? --- Which they do.
Didn't present the problem which you understood the patent was trying to address? --- No, but I did say they presented claims 1 to 5.
I understood that but you accepted that they didn't present the problem which the patent was trying to solve? --- No, … they didn't … because they never had the problem.
…
You didn't understand the patent was directed to claiming as inventions locks of that type? --- I think a lock of that type overcame the problem that was created prior to the Lockwood lock."
It was common ground that the Falcon S371 lock was publicly offered for sale in Australia before 14 February 1996.
177 Mr Garland also said he was well aware prior to 1996 of certain of the Lockwood storeroom locks (510, 5110 and 5210), though he could not recall precisely with which of them he was familiar. Each of the storeroom locks discloses the integers of claims 1 to 6. Speaking of 510, he said that when the lock
"is in the 'unlocked' position, each handle of that lock may be rotated to cause the retraction of the latch bolt. I have also observed that if the key is inserted in either handle and rotated in a clockwise direction, that handle and the opposite handle are locked. I have further observed that if the key is then inserted in either handle (when in 'locked' position) and rotated in an anti‑clockwise direction, the movement of that key (alone) first unlocks both that handle and the opposite handle and secondly causes the latch bolt to be retracted."
He then said the 5110 operated in the same manner. It was common ground that the Lockwood storeroom locks were publicly offered for sale in Australia before 14 February 1996.
178 Mr Freestone was familiar with the storeroom locks in the 1980s. He was aware that the operation of the outside key retracts the latch bolt: in other words, the inner lock could be unlocked with the outer key. He was also aware of the Falcon range before 1996, including the S371. Lockwood distributed them in the 1980s and 1990s. Key operation of the latch from the outside will release the inside lock, so that the problem to which the Patent was directed did not arise. That was the whole point of the storeroom type locks; to stop people getting locked inside a storeroom.
179 On the basis of the evidence described at [167] to [178], in our view a skilled addressee could reasonably be expected to have ascertained the storeroom locks, and understood and regarded them as relevant. Perusal of the Lockwood brochures would disclose products described as locks where the use of the key on the outside locks or unlocks both knobs. The word "ascertained" simply means discovered or found out. A skilled addressee who did not bother to look at brochures distributed by Lockwood would not be behaving reasonably. In the present context, the word "understood" means that, having discovered the information, the addressee would have comprehended it, or appreciated its meaning or import. There could be no doubt about that. The language is plain; the concepts simple, especially to a skilled addressee. The evidence establishes that a skilled addressee would know of the problem with locks such as the Lockwood 001 and the consequences that could flow from the problem. Such a person who read in the brochures that operation of the key on the outside locks or unlocks both knobs of the storeroom locks could be in no doubt that that information was relevant to the solution of the problem.
180 Section 7(3) speaks of prior art information made publicly available through doing a single act. In view of our conclusion about the storeroom locks, it is not necessary to determine whether sales of the Boyd mortice and Lockwood 530 also satisfy s 7(3).
181 Had the hypothetical skilled worker considered the common general knowledge referred to at [159] together with the kind of information mentioned in the second limb of s 7(3)(a) of the Act, the alleged invention in claim 1 would have been considered obvious. The relevant parts of Doric's notice of contention (par 2(vi)B, so far as it relates to the storeroom locks, and (vii)) should be upheld.