Cronk v Commissioner of Patents  FCA 37
Justice Robertson of the Federal Court of Australia has recently dismissed an appeal against the Commissioner of Patent's finding that key claims of a patent titled "A luminaire reflector locating arrangement" lacked inventive step. The decision provides guidance in relation to the various avenues of appeal from Patent Office decisions and also highlights the importance of "common general knowledge" evidence from persons truly skilled in the field of the invention in issue.
Mr Paul Cronk's Australian patent application
On 14 October 2008, a Mr Paul Andrew Cronk filed an Australian patent application titled "A luminaire reflector locating arrangement". The alleged invention claimed in the patent application related to the fastening of two arched light fitting metal reflector sheets.
The specification for the patent application explained that the claimed invention allowed for a more convenient assembly of doubly arched light fittings compared to those previously on the market (an example of which is depicted below).
Click here to view image.
The Patent Office's "obviousness" decision
On 8 October 2010, an adverse examination report was issued in respect of Mr Cronk's patent application on the ground that the alleged invention lacked an inventive step. Despite submissions made by Mr Cronk during the examination process disputing the Office's conclusion, the objection was maintained in a series of further examination reports. In an attempt to resolve the obviousness issue, the Patent Office decided to set the matter down for a formal hearing before a delegate of the Commissioner of Patents.1
At that hearing, the Delegate:
- observed that the problem addressed by the patent application was a light fixture arrangement that allowed for more convenient assembly and that the problem was said to be solved by the use of a "key-hole slot" and "mushroom" stud or lug mechanism to join reflector sheets of a doubly arched light fitting;
- considered that documents cited by the examiner in the course of examination (which spanned almost 60 years) demonstrated that the use of such locating arrangements in light fittings and other related devices was very well known before the priority date of the patent application;
- reasoned that it followed that a person seeking to solve the problem addressed by the patent application would reasonably have been expected to try the assembly arrangement claimed as a matter of routine;
- held that, in such circumstances, the invention claimed was prima facie obvious; and that
- the evidence adduced by the patent applicant was not strong enough to refute that finding.
However, the delegate considered that Mr Cronk could possibly overcome the objection by amendment and accordingly gave Mr Cronk approximately three months to propose suitable amendments.
The appeal to the Federal Court under section 51 of the Patents Act
Mr Cronk filed an appeal against the Delegate's decision relevantly seeking an order that the appeal be allowed pursuant to section 51 of the Patents Act "or such other provision as the Court thinks fit".
Justice Robertson considered that the right of appeal provided for in section 51 of the Act was not applicable in the case before him because a decision had not yet been made to refuse or accept the patent application.
Rather, as mentioned above, in his decision, the Delegate simply directed Mr Cronk to propose amendments to try and overcome the obviousness objection.
Justice Robertson considered the applicable section in such circumstances was section 109 of the Act. That section provides that an appeal lies against a direction given by the Commissioner of Patents (in accordance with the Regulations) to file a statement of proposed amendments of the patent for the purpose of removing a ground of objection (amongst other things).
Court confirms obviousness of Mr Cronk's alleged invention
The Court commenced its examination of the obviousness of Mr Cronk's alleged invention by observing that the invention would be taken to involve an inventive step unless the invention was obvious to a person skilled in the relevant art in light of the common general knowledge in that field.
The Commissioner's submissions
In support of the Commissioner's submission that the assembly of the invention (i.e. the engagement of mushroom-shaped lugs or bolts with key-hole shaped apertures) was well known at the priority date and therefore that an uninventive person skilled in the art was likely to use it to solve the problem mentioned in the patent application, the Commissioner of Patents relied on:
- six patent specifications spanning almost 60 years which showed that the concept of using key-hole slots and mushroom studs or equivalents to join metal elements was well known; and
- the evidence of a Mr Stephen Furzey, which was said to demonstrate that the arrangement of the invention was used very widely in connection with standard light fixtures well before the priority date.
Mr Cronk's obviousness submissions
Mr Cronk, on the other hand, argued that the invention was not obvious in light of:
- the fact that a Mr John Ferguson did not arrive at the invention in the course of developing other inventions (the subject of other patent applications and granted patents) based on the prior art devices mentioned in Mr Cronk's patent application;
- evidence from a Mr King that consumers did not want to a buy a defective embodiment of the alleged invention which had been repaired in a way that removed the claimed aspects of the invention (so called "commercial success" evidence); and
- evidence of a Mr Creevey that he had no awareness of using an assembly of the type described in Mr Cronk's patent application.
The Court's dismissal of the appeal
Justice Robertson considered that the matters relied upon by Mr Cronk were "too slight" to cause him to allow the appeal.
- was not persuaded that Mr Ferguson's inventions were directed to solving the problem referred to in Mr Cronk's application and therefore considered the "Ferguson evidence" to be unhelpful (especially in circumstances where no evidence was led from Mr Ferguson himself);
- considered that Mr King's evidence provided an insufficient basis to infer "commercial success"; and
- found Mr Creevey's evidence to be irrelevant as Mr Creevey did not qualify as a person skilled in the art (he was a Chief Executive Officer of a company which manufactured electrical products).
In dismissing the appeal, Justice Robertson rejected Mr Cronk's submission that the invention was not simply a key-hole – mushroom lug arrangement but a locating mechanism with a "friction fit". In this regard, his Honour explained:
Reading the Application according to its terms, the major suggested improvement was to enable the reflectors to be easily and quickly joined together by virtue of the mushroom-shaped lugs engaging with key-hole shaped apertures. The Application has a locating mechanism but that mechanism is the mushroom-shaped lugs and the key hole shaped apertures. Similarly, the friction fit is a consequence of the mechanism, being the mushroom shaped stud or studs and the corresponding key-hole shaped aperture or apertures. It follows that the Application stands or falls by reference to the obviousness in the lighting industry of using key-hole slots and mushroom studs as a means of joining metals."
Reminder for patent litigants
The case serves as a useful reminder of the importance of reliable evidence from persons skilled in the art of the alleged invention on such matters such as the "common general knowledge" and the construction of technical terms.