Sunnyfield Association v Cronk

the issues 11 The first issue in relation to PA 716550 as amended on 3 September 2003 is whether the claims are fairly based on the disclosure contained in PA 64800/94. If this is answered in the affirmative then the claims of PA 716550 are entitled to the priority date they would have if included in PA 64800/94. If the question is answered in the negative then the claims are conceded to be invalid for lack of novelty. 12 In relation to PA 759725 the question is whether the claims in PA 759725 as amended on 4 March 2003 are fairly based on matter disclosed in the Specification of PA 716550 as filed. If these claims are found to have been fairly based then it is common ground that the claims of PA 759725 are entitled to a priority date based on PA 716550 as filed. 13 In relation to s 114(1) of the Act the relevant amendments are those made to PA 759725 on 4 March 2003. Section 114(1) of the Act requires a consideration of these amendments and the complete specification before amendment, that is to say, between the claims as amended and the Specification filed on 17 April 2000.

principles 14 The appeal is brought pursuant to s 60(4) of the Act and is a hearing de novo. Under s 105 the Court has power to direct the amendment of the patent application to afford an opportunity to the applicant to propose amendments to overcome any objections which may be found have been made out. As a hearing de novo the evidence to be considered is that adduced by the parties during the hearing and admitted by the Court, but it is appropriate that the Court give due attention to the views expressed by the Commissioner's delegate where the issues call for the exercise of technical knowledge and experience on the part of the delegate: see EI Dupont De Nemours & Co v ICI Chemicals & Polymers Ltd (2003) 128 FCR 392 at [28]. The burden of proof rests with the opponent to satisfy the Court that the patent, if granted, would not be valid. 15 The relevant construction principles in relation to patents are set out in Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 391. It is common ground that it is appropriate for drawings or diagrams, where they form part of a specification, to be taken into account in construing the specification and when considering the claims: see CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 284. In that decision there is a detailed consideration of the principles relating to fair basing and the necessity for real and reasonably clear disclosure. Drawings are important in the present case because the specifications direct attention to the accompanying figures to assist with an understanding of the general disclosures made in the body of the document. A helpful discussion as to the use which may be made of drawings when considering whether there is a fair basis for claims is to be found in Leonardis v Sartas (No 1) Pty Ltd (1996) 67 FCR 126 at 137. 16 Under the Patents Regulation 1991 ("the Regulations") r 3.12(b), the priority date of a claim in a specification is the earliest of a series of dates and where the claim is fairly based on matter disclosed in a priority document the date of filing of the priority document in which the matter was first disclosed is the applicable priority date. 17 The expression "fair basis" as used in the Act and in the Regulations does not refer to notions of equity or fairness in the general sense but rather refers to the extent of disclosure. 18 There are some differences pointed to by the parties in the language of s 40 of the Act and that of reg 3.12 in relation to "fair basis." Section 40 is concerned with internal "fair basing" and calls for a consideration of matter described in the particular specification. The language of reg 3.12 on the other hand directs attention to the claim being fairly based on what is disclosed in one or more other documents. 19 In addition, s 40(3) refers to matter described in the specification, whereas reg 3.12 refers to matter disclosed in one or priority documents, which Mr Cronk submits is less restrictive and supports the view that it is only necessary to consider whether the matter is in the specification and not so much the way it is used. 20 In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 212 ALR 1 the High Court at 300 identified the correct approach when applying s 40(3) of the Act as being whether there has been "a real and reasonably clear disclosure" and importantly the Court pointed out that those words did not limit disclosures to preferred embodiments. Their Honours cited the comments of Gummow J in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at 95 as follows: The circumstances that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.. 21 Their Honours in Lockwood also emphasised that the reference to a real and reasonably clear disclosure served the function of compelling attention to the construction of the specification as a whole putting aside particular parts which although in isolation might appear to point against the real disclosure are in truth only loose or stray remarks. The observations of Gummow J in Rehm point to a broader rather than a narrow approach in considering the question of real and reasonably clear disclosure. 22 In CCOM the Full Federal Courtwarned against seeking to resolve the issue of fair basing by an overly meticulous verbal analysis as if the question was whether one statute operated in the same field as another and it confirmed, as well as established, that a claim may be fairly based on matter in a specification which is not a verbal description but can be disclosed by accompanying drawings as read by a skilled addressee. See also Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 20; ICI Chemicals & Polymers Ltd v Lubrizol Corp [1999] FCA 1417 at [35]-[36] and Gambro Pty Ltd v Fresenius Medial Care South East Asia Pty Ltd (1999) 48 IPR 625 at [25]-[30]. 23 I now turn to consider the appeals.

delegate's first decision - PA 716550 As amended 24 The question raised is whether the claims of Amended PA 716550 are fairly based on the disclosure contained in PA 64800/94. If there is no sufficient disclosure then the claims of PAS 716550 are conceded to be invalid for want of novelty. It is therefore first necessary to consider PA 64800/94 to ascertain what is disclosed, taking into account the evidence adduced before the Court by the parties and by their expert witnesses in particular. 25 PA 64800/94 gives the Invention Title as "Adjustable Reflector." The invention is stated to relate to improvements and devices for reflecting light emitted by artificial sources. It is pointed out that previous reflector devices associated with artificial illumination of industrial spaces have all required a fixed shape or lamp mounting position or a fixed mounting position which is precisely specified to create optimal light distribution for a particular purpose. For example, a "Chinaman's hat" reflector might commonly be used in situations where a wide uniform spread of light is required, and in such a case the spread of light is largely dependent on the fixed internal angle of the cone shaped "Chinaman's hat" reflector and the uniformity of the light emitted is largely dependent on the non-adjustable lamp position with the reflector. There is a disadvantage in that such small rigid non-adjustable designs limit efficient use to a small range of applications. 26 The specification describes the invention when it states that: These problems are overcome by the present invention, which provides an adjustable light reflective device comprising a resilient reflective skin flexed to form a double parabolic shape which is held in place against its resiliency by adjustable retainers located at each end of the skin and an independently adjustable lamp mount that attaches to the skin when it is the retained position. (Emphasis added) 27 The Specification then proceeds to describe one form of the invention as having a resilient reflective skin comprising: A pair of substantially rectangularly shaped sheet members both having substantially orthogonally protruding skirts parallel with the longest edges. The said sheet members join together so that one edge and associated skirt of one sheet member fits neatly inside the corresponding skirt and edge of the other, forming a substantially orthogonal alignment between sheets. The sheets are then fixed together and flexed back against the newly created reinforced central spine to achieve a double parabolic shape that is secured at each end by attaching lengthwise adjustable retainers, which in a preferred form of the invention, comprise links of chain that hook to the said skin. (Emphasis added) 28 In another form of the invention the resilient reflective skin may comprise one or any number of sheet members and any necessary reinforcing members fashioned so as to approximate the pre-defined shape and conditions required for formation of a double parabolic shape as herein defined. This form of the invention is silent as to any need for orthogonal alignment or skirts but emphasises the need for a double parabolic shape. The retainers used to secure this skin in a double parabolic shape may comprise chain, wire or any like means, optimally adjustable in length. 29 To assist with understanding the invention reference is made to accompanying drawings Figures 1, 2 and 3, which are expressed to show one example of the invention. Throughout the specification the term "double parabolic" is defined and used to describe the shape of the device when it is in its flexed position and retained against the bias of its normal resilience as for example shown in Fig 1 of the drawings. The specification states that when considering this definition it should be appreciated that any size, shape or width of double parabolic shape should be considered to fall with in the scope of this definition. 30 The three drawings are as follows:

31 Figure 1 above is stated in the specification to show one example of an adjustable reflector device according to the invention. Figure 2 is stated to show a disassembled view of the skin of the reflector device depicting the substantially orthogonal protruding skirts present on sheet members, and Figure 3 is said to show an assembled view of the skin prior to flexing, again depicting a substantially orthogonal alignment. The specification proceeds to state that: By appropriate adjustments of the reflective device many and varied desirable conditions of artificial illumination may be achieved and therefore the need to employ more than one reflective device to efficiently service a range of discrete tasks may be reduced or abolished. 32 Importantly, PA 64800/94 states that: It will be realised that the reflector devices according to this invention is not restricted to the specific shape and construction of the untensioned resilient skin shown in the example but may use a skin fashioned from the two or more pieces is suitable material of any suitable shape or size so long as the essential feature of being flexed back against a spine or axial crease to create an adjustable double parabolic shape is achieved. (Emphasis added) 33 The primary claim in PA 64800/94 reads: 1. A reflector device, comprising a pair of resilient sheet members, which are normally disposed at an substantially orthogonal angle relative to each other, and which are adapted to be flexed and retained against the bias of their normal resilience such that said device is formed to a double parabolic (as herein defined) shape. (Emphasis added) 34 These extracts point to the central importance of the alignments being such as will result in the double parabolic shape. 35 The first question is whether the matters disclosed in PA 64800/94 limited to a device which has substantially orthogonally projecting skirts, or where there is a substantially orthogonal alignment between sheets. Those requirements, as the specification makes clear, are directed to only one form of the invention and Figures 2 and 3 relate only to one example of the invention. In my view, the disclosure is not confined by concepts of substantially orthogonal alignments or positions. There is a broader reasonably clear disclosure in the specification of an adjustable reflector device comprising single or multiple sheets of resilient reflective skin that can be flexed back against a central or common spine to create what is described as an essential feature, namely the flexing back against a spine to create an "adjustable double parabolic shape." There are numerous references to the double parabolic shape in the body of the application. This reference to double parabolic shape is used to describe the shape of the reflector when flexed and retained against the bias of its normal resilience, and this is shown in Figure 1. 36 The specification states that the adjustments are designed to achieve many and varied desirable conditions of artificial illumination so that the need to employ more than one reflective device to service a range of discrete tasks may be reduced. This indicates that the reflector is designed to operate over a wide range of illumination requirements and points to a broader disclosure of a range of parabolic shapes. 37 The definition of "flexible double parabolic shape" is a description of the shape of the device when it is in its flexed position and is retained against the bias of its normal resilience. Sheets of any size or shape are specifically stated to be the scope of the definition. So the angle between sheet members for example in their unflexed state is not critical, but it is necessary that, on flexing, the sheet members should achieve a shape falling within the definition of double parabolic. Dr Watson agreed that this result would be achieved where the pair of sheets were disposed at an angle falling within a large range, from acute to obtuse, and that the size, shape or width of the curved shape would vary depending on the angle between the sheets in their unbiased state, provided that each shape would be a double parabolic one. 38 The reference to "predefined shape" is a reference to the position before flexing and achieving the required shape, and not the earlier reference to the one form of the invention which refers to substantially orthogonal. The resultant shape shown in Fig 1 after flexing and retaining the sheets said to be joined at a substantially orthogonal angle is only one form. Reference to predefined shape is not limited to particular shape or embodiment. Having regard to these considerations I do not accept that PA 64800/94 requires the substantially orthogonal alignment. Accordingly, on its proper construction I do not consider that PA 64800/94 is confined by the concept of "substantially orthogonal." 39 Accordingly, I do not accept the submission that PA 64800/94 requires that in all forms of the invention the sheet members should have substantially orthogonally protruding skirts or that there should be a substantially orthogonal alignment between sheets. The requirement of the orthogonal positioning is not a limiting consideration. 40 In considering the disclosure of PA 64800/94 it is necessary to take into account the evidence of Mr Rogers, who was called by Sunnyfield, and that of Dr Watson, who was the skilled addresses witness for Mr Cronk. In summary, the evidence of Mr Rogers was given on the basis that the "substantially orthogonal" requirement was a limiting factor on the disclosure, and that the references to "substantially orthogonal" must be understood as a reference to "90 degrees within normal engineering tolerances as best as can be produced in the production process." He considered that the expression "substantially orthogonal" would encompass angles which are within a few degrees only of ninety degrees, from around say 88 degrees to 92 degrees. He said that there was no evidence that the expression "orthogonal" or "substantially' carried any specialised meaning in the lighting industry at the relevant dates and that therefore those words were to be given their ordinary meaning in that "substantially" means according to the Australian Concise Oxford Dictionary having substance and something which includes "the real essence or meaning of a thing." There is no dispute that "orthogonal" in ordinary usage means at a right angle. 41 On the evidence of Mr Rogers the proper construction of substantially orthogonal, consistent with the ordinary English meaning, is that it meant essentially 90 degrees, subject to manufacturing tolerances. Dr Watson's view was that an angle may be "substantially orthogonal" when it is, for example, at a 30 percent variation from 90 degrees. Dr Watson expressed the generalised view that large variations and tolerances in the lighting industry were not unusual. However, the applicant submits that this explanation should be rejected as having no specific relevance when considering the connection required between two physical members. 42 The evidence disclosed that Dr Watson's view as to the meaning of the words "substantially orthogonal" was formed on the basis of his interpretation of the Figures in the Specification. These figures, in his opinion, depicted 120 degree angles, which would mean substantial variances from the dictionary meaning of "orthogonal" to the extent of between 60 degrees to 120 degrees. There was no evidence that the figures contained any definition of the term. 43 In relation to the three Figures, it is submitted for Mr Cronk and I accept that Figures 2 and 3 are not accurate or dimensional and were not intended to denote specific angle drawings, but were general references to show where positions were located, and further that they could not portray the correct angle of the skirts because there was no indication of the view from which the Figures were drawn. This is in keeping with the view of Aldous J in Vax Appliances Limited v Hoover plc [1991] FSR 307 at 313, where his Honour stated that "patent drawings are not designed to be used to denote precise measurements unless so stated. They are there to illustrate the concept and the overall relationship of the parts." 44 Mr Rogers gave evidence of a view of a rectangular sheet with orthogonal skirts. Dr Watson would not accept the assumption that the skirts shown to him were orthogonal. He also considered that Figure 3 was not an accurate representation of any angle since the view from which it is made was not stated. Dr Watson considered that an angle of 90 degrees could appear to the eye to be greater than 90 degrees depending on the angle of inclination. The applicant submits that the Figures in the drawings were not intended to be accurate as to detail and were expressly drawn as in effect general indicators to illustrate a general arrangement of the parts and could not be used to measure or expand the expression "substantially orthogonal." There was no dispute between the parties that each of the two expert witnesses qualified as "skilled addressees." 45 On the specific question of the meaning to be given to the expression "substantially orthogonal" in PA 68400/94 I prefer the evidence of Mr Rogers to that of Dr Watson. On the plain ordinary meaning of the words "substantially orthogonal" the language is simply not wide enough to encompass a thirty percent variation. Nor do I consider that the proffered explanation by Dr Watson that there are large measurement variations tolerated in the lighting industry provides any satisfactory explanation when determining the connection of two physical members. Moreover, the understanding of Dr Watson as to the meaning of "substantially orthogonal" was taken from preconceived ideas based on his view of the Figures in the Specification, which to his eye depicted 120 degree angles. I do not accept that these drawings were intended to be accurate as to angles but were included to illustrate simply all features of one embodiment of the arrangement. They are not engineering drawings and they are not dimensional. In addition, Dr Watson admitted under cross-examination that, before receiving the letter requesting expert advice, he had a conference with representatives and was shown patent documents and the particular figures. Also, I consider that his refusal to accept the assumption that the skirts were orthogonal, when in fact they were shown by a set square to be so, demonstrated a predetermined approach to the specification. 46 For the above reasons, I do not consider that the requirement of orthogonal alignment is a limiting consideration on the specification. The use of the expression "substantially orthogonal" in the specification is merely one possible form of the invention, and does not confine the specification in any way. The draftsman of the specification has intentionally refrained from making the "substantially orthogonal" requirement an essential element of the specification. It is not limited to any particular shape or embodiment. In Flexible Steel Lacing Co v Beltrecco Ltd [2000] FCA 890 at 130, Hely J observed that where drawings or figures are given as examples of an invention, this would suggest that "the drawings may only show one embodiment, alternative embodiments being available." Similarly, the High Court in Lockwood (at [93]) referred to the many examples of cases "in which courts have refused to construe the specification as disclosing an invention limited to the preferred embodiment because of statements that it is not so limited." See also Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd [2006] FCA 261 at 47; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 at 139; and Gambro Pty Ltd v Fresenius Medical Care Australia Pty Ltd [ 2004] FCA 323 at 128. 47 However, if I am wrong in this conclusion I do not consider the expression "substantially orthogonal" sufficiently broad to encompass a significant departure from the requirement that there should be a right angle alignment. I do not accept the submission on behalf of Mr Cronk that the Specification can be interpreted by examining the figures in such a way as to show that the requirements as to "substantially orthogonal" would be read by a skilled addressee to allow anything other than a relatively small departure from a 90 degree right angle relationship. In particular, I do not consider that the relevant Figures in the Specifications can be construed to contradict or substantially modify the clear, simple and unambiguous expression "substantially orthogonal."

Claims of PA 716550 as Amended 48 Having regard to the above disclosure made under PA 68400/94 it is then necessary to consider whether, in relation to the claims under PA 716550, there has been a fair and reasonably clear exposure by matter in the earlier application. 49 Claim 1 of PA 716550 as Amended is for a lamp reflector with adjustable curvature in which unflexed sheet members are transverse to each other but are adapted to be flexed from an unflexed position to a fully flexed position. 50 It is common ground that the expression "transverse to" means "cross wise" or "running" or "lying across" and that it does not mandate any particular angle or intersection. Sunnyfield submits that because the expression "transverse to each other" is broader than "substantially orthogonal" therefore this claim is not fairly based on the matter described or disclosed in the grandparent as filed. 51 In construing the expression "transverse to each other" as used in the context of the specification of the amended Claim considered as a whole the expression means that in the unflexed state the reflective surfaces of the "pair of resilient sheet members" lie across each other in such a way that they are adapted to be flexed from the unflexed position to a fully flexed position. There is no necessity for the relationship to be substantially orthogonal. 52 PA 68400/94 makes it clear that the invention is not confined to a reflector where the sheet members in the unflexed state are aligned at any particular angle (see the reference at [39] above.) In cross-examination (T 82) Dr Watson agreed that a range of different lighting effects could be achieved if the angle of the predetermined shape were varied, and that the angle at which the arrangement commences would determine the nature of the particular shape and hence would produce varied lighting effects. 53 Having regard to the above matters I consider that there is a substantial disclosure of material which could fairly, reasonably and clearly provide a basis for the claims in PA 716550 as amended.

SECOND DECISION - amended PA 759725 54 The question is whether the claims of PA 759725 as amended claim matter that was in substance disclosed as a result of amending the application from PA 759725 as filed. 55 PA 759725 as filed is entitled "A Shielding Device" and the background of the invention is that it is said to relate to improvements in devices for reflecting light emitted by artificial sources. Sunnyfield first submits that, having regard to the fact that the applications is for a "shielding device," there is no fair and reasonable disclosure in relation to the "Luminaire" reflector, which is the device the subject of the amended application. The independent claims in the amended PA 759725 are confined to a reflector, described in PA 759725 as filed, as being prior art. The invention disclosed in Claim PA 759725 as filed is said to be expressly confined to the "heat shield" that was described to have a function totally separate from that of the reflector device. 56 In my view, notwithstanding that the title of the application as filed related to a "shielding device" it was capable of providing sufficient disclosure, and it contained matter which was sufficient to constitute a substantial disclosure of the "Luminaire" reflector device claimed in the amendment. The description and numerous references to the adjustable reflector device used in conjunction with the shielding device, when considered in the light of Figures 3, 4 and 5, is a sufficient disclosure for the claim made in relation to the reflector device in the amended claim. Extensive references are made in the body of the application as filed to the reflector device, the non-limiting nature of the Figures, and the flexing required to create a double parabolic shape. This disclosure cannot be said to be in any way "loose or stray" remarks. 57 Accordingly, the amendment did not claim matter that was not in substance disclosed in the application as filed, so that s 114 of the Act has no application. 58 Next, Sunnyfield submits that the claims of amended PA 759725 are not fairly based on PA 716550 as filed because the Independent claim 1 in First Amended PA 759725 refers to a luminaire having a reflector device comprising a pair of resilient sheets positioned one to either side of a spine in the manner of the pages of a book so that the sheets, when in a unbiased condition, lie substantially in two planes intersecting at an obtuse angle. Sunnyfield submit that these expressions travel beyond the requirements that there be a substantially orthogonal alignment. 59 They also rely on Claim 22 which refers to a pair of sheets positioned one to each side of spine in the manner of the pages of a book so that the sheets, when in an unbiased condition lying substantially in two planes, intersect at an obtuse angle. 60 There is no dispute that the term "obtuse" means an angle greater than 90 degrees and it is common ground that the reference to "in the manner of the pages of a book" is not a term which has any specialised meaning to a person skilled in the art. Mr Roger's evidence was that the term meant that the reflector sheets were separated by "an angle." Sunnyfield submits that it is necessary to have the sheets of resilient reflective skin disposed at an angle substantially orthogonal to each other so as to create a double or parabolic shape. Sunnyfield refers to the references in PA 716550 to an angle substantially orthogonal. 61 In my view, for the reasons given earlier I do not consider that there is any limitation that the sheets should be disposed at an angle "substantially orthogonal," and that provided essential features are met so that the parabolic shape is formed the angle of the sheets flexing is not essential, and there is therefore a real and reasonably clear disclosure. Accordingly I reject the submissions of Sunnyfield on this point. 62 In its Particulars of Opposition Sunnyfield alleges that the invention claimed in PA 716550 as filed limited the reflector to being adjustable whereas the invention claimed in PA 759725 extended to luminaires which were not adjustable, and that therefore Claim 1 in the latter application was not disclosed and therefore was not entitled to an earlier priority date under s 79B. 63 The question is raised whether there was a real and reasonably clear disclosure of the invention as claimed. 64 When the earlier application refers to an adjustable reflector device it is drawing a distinction between devices such as a "Chinaman's hat" reflector and the reflector device which is the invention with a resilient reflective skin which can be flexed to form a double parabolic shape. In one preferred form there is provision for a retaining chain or wire which is optionally adjustable and in another form the lighting means is adapted to be attached when in the retained position by an optionally adjustable attachment means. It is, however, not an essential feature of the invention that the fastening device is adjustable. It is the ability of the sheet members to be flexed and retained against their normal resiliency which makes the reflector adjustable. As Mr Rogers agreed, what is essential is that the reflector device is made of suitable material to enable it to be flexed back against a spine or crease to create an adjustable double arch configuration and this is what is meant by the expression that the adjustability of the reflector is effected by the fact that the sheets are resilient members. Claim 1 of the Luminaire application claims a reflector device comprising resilient sheets capable of being flexed and retained to create the required configuration. Accordingly, the invention as claimed does not travel beyond the disclosure made in the Application for the reflector device application as filed.

conclusion 65 For the above reasons the appeal must be dismissed with costs. I certify that the preceding sixty-five (65) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin.

Associate: Dated: 28 January 2009 Counsel for the Applicant: Mr S. Burley SC

Counsel for the Respondent: Ms S. T. Chrysanthou