In Garford Pty Ltd v DYWIDAG-Systems International Pty Ltd [2014] APO 37,  an Opposition Decision recently handed down by the Australian Patent Office, the Hearing Officer provided some useful comments on proving lack of an inventive step in light of the Common General Knowledge (“CGK”) in Australia.

This case involved an Opposition to Australian Patent Application No. 2009329824 (“the Application”), in the name of DYWIDAG-Systems International Pty Ltd (“the Applicant”), which claimed an invention relating to an apparatus and method for manufacturing a cable bolt. Cable bolts are typically used to secure the roof or walls of an underground mine, tunnel or other underground excavation.

Garford Pty Ltd (“the Opponent”) initially opposed the Application on the Grounds of lack of novelty; lack of inventive step; secret use; and lack of clarity.  However, at the Hearing, the Opponent indicated that its focus was on the Grounds of lack of inventive step; lack of novelty for Claims 18 and 19 only; and lack of clarity.

It was held that Claims 18 to 23 lacked fair basis, on a point that was identified by the Hearing Officer.  The Opposition was otherwise unsuccessful.  The Applicant has been given 60 days to file amendments, and no costs were awarded since the prevailing Ground was one that was identified by the Hearing Officer.

Lack of Inventive Step vs. Common General Knowledge (“CGK”)

Of interest were the comments provided by the Hearing Officer relating to the unsuccessful lack of inventive step arguments submitted by the Opponent.

The Hearing Officer considered that the principal problem with the Opponent’s submissions on this Ground was that the evidence provided did not establish “enough” common general knowledge to discharge the Opponent’s onus.

The Opponent argued that accumulators and their use in controlling tension in the processing of continuous strips or lengths of material was CGK at the priority date. However, the question remained whether every other element specified in the claimed method of manufacturing a cable bolt by using the apparatus was also part of the CGK. The Opponent argued that they were and directed the Hearing Officer’s attention to the “Background to the Invention” section of the Specification of the Application-in-suit, in which prior art apparatus had been described by the Applicant.

However, the Hearing Officer refused to regard the information contained in the “Background to the Invention” section as a statement of CGK and stated that:

“If an invention lacks an inventive step in light of the common general knowledge, it does not follow that the invention is common general knowledge…”

It was further considered that even if every individual element of the claimed invention was well-known, an Opponent will still need to provide evidence that the skilled person would have selected those features and combined them in the claimed way to obtain the claimed invention (i.e. as a matter of routine).

The evidence submitted by the Opponent was considered to be tainted by hindsight as the Experts giving evidence started their analysis having read the “Background to the Invention” provided in the Specification and having been told that the apparatus described in the Opponent’s Patent (the prior art in consideration) was inefficient and that the redesign of that device was the problem to be solved.

The fact that the Experts were given the prior art document by the Opponent and informed of the deficiencies of the prior art apparatus, as well as the problem to be solved, made this case difficult for the Opponent. This was because it could not be demonstrated that the prior art document would have been ascertained, understood and regarded as relevant, as is required under Inventive Step considerations, and furthermore, it was questionable whether the prior art document would have been relevant when, in fact, the prior art apparatus had the same problem which the opposed Application sought to solve.

The Claims of the Application were thus considered to be inventive in light of both the common general knowledge and the prior art submitted in support of the Opponent’s arguments.

Take Home Message

This case is a useful reminder of the nature of the evidence that must be submitted in Australian Patent Opposition Proceedings to prove the lack of an inventive step in light of the CGK. Not only must every feature of an apparatus, or step in a method, be well known in Australia as at the priority date, but the combination of those features by a skilled person must also have been obvious.

Furthermore, it is also necessary to bear the strict Australian evidentiary requirements in mind when submitting expert evidence in Patent matters in order to avoid any allegation of the use of hindsight.