METHOD AND APPARATUS FOR INDICATING CONDITIONS (25-July-2021)

Hunter Valley Signs Pty. Limited  v Bartco Traffic Equipment Pty Ltd [2021] APO 28

Matters before the Patent Office are judged on the basis of a balance of probabilities. Apple Inc. [2021] APO 18 illustrates that matters an alleged prior public use will be scrutinized with care.

Diagram

Description automatically generated

In the words of the Hearing Officer: ‘Although it is plausible that the sign was installed at some time between January 2010 and the priority date of 15 November 2011, it is equally plausible that the sign was installed at some time after the priority date of 15 November 2011Consequently, I do not accept that the Glenbrook “2009” sign was installed before the priority date.

(Numbering issues and indentation issues still to be fixed below)

@$1

Summary of Findings

 

1

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Note: 2016210770

 

Comment: @Images;@Claim 1;

Claim 1:

 

An automated sign for indicating environmental conditions comprising a segmented conditions rating scale physically disposed on a substrate for public display wherein an illuminated display panel is operatively associated with each segment of the segmented conditions rating scale, whereby the illuminated display panels are controlled to illuminate one display panel at any one time so as to indicate by way of a selected segment environmental conditions in accordance with a received communications signal comprising prevailing environmental conditions and each of the illuminated display panels are adapted to be visible and distinguishable from each other illuminated display panel by one or a combination of: each illuminated display panel comprising an array of high intensity light emitting elements;the light emitting elements having distinguishable colours for each illuminated display panel; the disposition of each illuminated display panel of the sign

 

Diagram, engineering drawing

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2

Page: 3 Line: 25

Note: The Applicant is given 2 months from the date of this decision to propose suitable amendments.

 

Comment: @Finding;

3

Page: 5 Line: 22

Note: the information was not likely to be determinative of the opposition, and thus would not be relied upon under regulation 5.23

 

Comment: mxi8etm@ @Opposition Evidence#Futher Time#Relevance

4

Page: 5 Line: 26

Note: 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

 

Comment: @Inventive Step#Date;

The current standard for inventive step

5

Page: 9 Line: 7

Note: Claim 1:

 

An automated sign for indicating environmental conditions comprising a segmented conditions rating scale physically disposed on a substrate for public display wherein an illuminated display panel is operatively associated with each segment of the segmented conditions rating scale, whereby the illuminated display panels are controlled to illuminate one display panel at any one time so as to indicate by way of a selected segment environmental conditions in accordance with a received communications signal comprising prevailing environmental conditions and each of the illuminated display panels are adapted to be visible and distinguishable from each other illuminated display panel by one or a combination of: each illuminated display panel comprising an array of high intensity light emitting elements;

the light emitting elements having distinguishable colours for each illuminated display panel; the disposition of each illuminated display panel of the sign.

 

Comment: @Claim 1;

6

Page: 12 Line: 14

Note: Provisional application 2011904416 does not disclose lights in each segment and instead only discloses LEDs to display text messages, for example at page 9 lines 15 to 16 the LED message is “CODE RED: evacuate area immediately”. Thus any notional claim to light emitting elements which illuminate segments of the sign would not benefit from the earlier priority date and thus does not meet the criteria for “prior art base” (b)(ii)(A) and cannot be used as a “whole of contents” novelty document

 

Comment: @Finding

7

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  1. Note: The definition of “prior art base” provided in Schedule 1 of the Patents Act includes “information made publicly available through doing an act, whether in or out of the patent area”. The concept of information being made “publicly available” was explored by the Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 and summarised at [124]:

 

  • The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J cited in Jupiters at [141]). (This test of communication to a member of the public who is free in law or equity to use the information as he or she pleases had been enunciated by the English Court of Appeal as early as 1887 in Humpherson v Syer (1887) 4 RPC 407 at 413 per Bowen LJ.)
  • It is immaterial whether or not the invention has become known to many people or a few people (Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd [1961] HCA 39; (1961) 180 CLR 98 at 111 per Windeyer J). As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality (Fomento Industrial S.A. v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99–100; Re Bristol-Myers Co’s Application [1969] RPC 146 at 155 per Parker LJ).

The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity (Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; (2006) 154 FCR 31 (Merck) at [98]–[103]).

 

Comment: m47xlhm@ @Novelty#Available

8

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  1. Note: The level of proof required was discussed by Besanko J in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]- [200]:

 

“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.

 

The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”

 

  1. Besanko J continued at [202]:

 

“In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.”

 

Comment: m1703cm@ @Novelty#Use#Standard;

Pubic use must be strictly proved and evidence which is not corroborated must be scrutinized with care.

9

Page: 19 Line: 7

  1. Note: Although it is plausible that the sign was installed at some time between January 2010 and the priority date of 15 November 2011, it is equally plausible that the sign was installed at some time after the priority date of 15 November 2011.

 

Consequently, I do not accept that the Glenbrook “2009” sign was installed before the priority date.

 

Comment: @Finding

10

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  1. Note: Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd (1981) 148 CLR 262 Aickin J stated:

 

"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."

 

Comment: @Inventive Step

11

Page: 21 Line: 42

Note: I also found that there are at least three possible ways the sign would change its state: local change by an operator, remote change by an operator, or by sensors. When faced with the problem of how to operate such a sign, a person skilled in the art would consider all three possibilities.

 

Comment: @Finding

12

Page: 23 Line: 40

Note: Mr Watson states in his declaration at page 11 that increasing the segment sizes would be a routine variation. I consider that adjusting the sizes of segments to improve visibility would be a routine variation that a person skilled in the art would be expected to make. Consequently claim 3 lacks an inventive step in light of Mona Vale and Glenbrook “2007” model signs.

 

Comment: @Finding

13

Page: 28 Line: 47

  1. Note: Mr Watson and Mr Faith each assert that modifying the luminosity of LEDs would be a routine design choice, however also assert that the luminosity would not be set such that the LEDs could be viewed from 2km away because this brightness would be distracting to drivers.

 

  1. In light of these declarations I consider that a sign which was bright enough such that each segment would be visible and distinguishable at a distance of at least 2 kilometres (at night with the naked eye) would be outside what a person skilled in the art would consider a reasonable modification to the “2007” model Glenbrook or Mona Vale signs.

 

Consequently I consider claim 7 to be inventive in light of the prior art.

 

Comment: @Finding; Seen to be outside reasonable and therefore inventive

14

Page: 32 Line: 30

Note: The sign as claimed in claim 15, 16 or 17 wherein, the electronic control system comprises at least one sensor that detects an observable condition, and the electronic control system is operated to automatically change the status condition conveyed by the sign based on a predetermined change in the condition detected by the sensor.

 

Comment: @Claim 18;

15

Page: 34 Line: 1

  1. Note: A black ice warning sign is automatically turned on once the temperature goes below a threshold. Although a more complex black ice sign with a segmented display for various levels of black ice danger (e.g. that takes into account temperature ranges, recent rain fall, etc.) is conceivable, this level of imagination is beyond what would be expected of a non-inventive person skilled in the art.

 

Consequently, I consider claim 18 to be inventive in light of the prior art.

 

  1. Comment: @Finding;

 

Person skilled in the art m6m3d5m@.  For example

Examiners manual

The Valensi case (supra) should be read in the light of the observation in American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page 245, to the effect that:

"... many of those involved and taking part in the placing on the market of such a new product, which was artificial and had no previous equivalent in this respect, would be highly qualified scientists trained at least to university standard, with all that entails, and used to carrying out chemical and biological research work in research departments. That is what in fact happened in the case of both the plaintiffs' and the defendants' artificial sutures here, and it would ... be highly misleading to suggest that there was in fact, in the present case, any body of 'intermediately' skilled technicians to whom the specification could be addressed whose existence must be assumed to be 'obvious', as was assumed by the Court of Appeal in the Valensi case (1973) RPC 337. The correct view ... which is consistent with the principle which the Court of Appeal must ... be presumed to have acted upon, is to hold as matter of law ... that the answer to the question: "Who is the skilled addressee of the specification?", depends upon making an examination of the facts of each case, and in so doing regard must be paid primarily to the nature of the invention, to the nature and size of the industry concerned, and the way it is organised for the purposes of conducting research into and of producing and marketing its products."

 

 


 

IP AUSTRALIA

 

AUSTRALIAN PATENT OFFICE

 

Hunter Valley Signs Pty. Limited  v Bartco Traffic Equipment Pty Ltd [2021] APO 28

 

 

Patent Application: 2016210770[A1]

<@Images;@Claim 1;

Claim 1:

 

An automated sign for indicating environmental conditions comprising a segmented conditions rating scale physically disposed on a substrate for public display wherein an illuminated display panel is operatively associated with each segment of the segmented conditions rating scale, whereby the illuminated display panels are controlled to illuminate one display panel at any one time so as to indicate by way of a selected segment environmental conditions in accordance with a received communications signal comprising prevailing environmental conditions and each of the illuminated display panels are adapted to be visible and distinguishable from each other illuminated display panel by one or a combination of: each illuminated display panel comprising an array of high intensity light emitting elements;the light emitting elements having distinguishable colours for each illuminated display panel; the disposition of each illuminated display panel of the sign

 

Diagram, engineering drawing

Description automatically generatedDiagram

Description automatically generated with medium confidenceA picture containing text, device, screenshot

Description automatically generatedA picture containing text, clock

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Title: METHOD AND APPARATUS FOR INDICATING CONDITIONS

 

Patent Applicant: Bartco Traffic Equipment Pty Ltd

 

Opponent: Hunter Valley Signs Pty. Limited

 

Delegate: Xavier Gisz

 

Decision Date: 2 July 2021

 

Hearing Date: 30 March 2021, via Video Conference

 

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty and inventive step – information provided by the opponent not relied upon under regulation 5.23 – claims 1 to 6, 8 to 17, 21 and 22 lack an inventive step – costs awarded

 

Representation: Counsel for the applicant: James Samargis

 Patent attorney for the applicant: Matt Pini of Pini IP

 Patent attorney for the opponent: Andrew Caska of Caska IP

 

 


1

 

 

 

 

 

 

IP AUSTRALIA

 

AUSTRALIAN PATENT OFFICE

 

 

Patent Application: 2016210770

 

Title: METHOD AND APPARATUS FOR INDICATING CONDITIONS

 

Patent Applicant: Bartco Traffic Equipment Pty Ltd

 

Date of Decision: 2 July 2021

 

DECISION

 

The invention defined in claims 1 to 6, 8 to 17, 21 and 22 lacks an inventive step in light of the Mona Vale and Glenbrook “2007” model signs.

 

The Applicant is given 2 months from the date of this decision to propose suitable amendments.[A2]

<@Finding;>

 

Costs are awarded against the Applicant.

 

REASONS FOR DECISION

Background

  1. Australian patent application 2016210770 (the Application) in the name of Bartco Traffic Equipment Pty Ltd (the Applicant) was filed on 5 August 2016. The application is a divisional application of 2012250287 which claims priority from provisional application 2011904749 with a priority date of 15 November 2011.

 

  1. A request for examination was made on 17 October 2016. The application was accepted on 13 November 2018 and advertised on 29 November 2018.

 

  1. A Notice of Opposition was filed on 21 February 2019 by Hunter Valley Signs Pty. Limited (the Opponent). The Statement of Grounds and Particulars was filed on 20 May 2019. Evidence in Support was filed on 19 August 2019. Evidence in Answer was filed on 21 November 2019. Evidence in Reply was filed on 24 January 2020.

 

  1. On 11 March 2020 the Opponent requested a stay of 3 months in the opposition on the basis that “The parties intend to enter negotiationswhich was allowed.

 

  1. On 15 June 2020 the Opponent requested a further stay of 3 months on the basis that:

 

“The parties have now entered negotiations relating to the above referenced opposition.

 

However, further time is required to complete the negotiations due at least in part to the impact of Covid-19.”

 

  1. The further stay was allowed.

 

  1. On 21 September 2020 the Opponent requested a further stay of 1 month on the basis that:

 

“The parties are still in negotiations relating to the above referenced opposition.

 

Representatives of the parties are located in Victoria and the Opponent has informed us today that the speed of the negotiations has been impacted by the Victorian lockdowns as a result of Covid-19.”

 

  1. The further stay was allowed.

 

  1. On 23 October 2020 the Opponent requested a further stay of 1 month on the basis that:

 

“The parties are still in the final stage of negotiations relating to the above referenced opposition.

 

Representatives of the parties are located in Victoria and the Opponent has informed us again this week that the speed of the negotiations has been impacted by the Victorian lockdowns as a result of Covid-19.”

 

  1. The further stay was allowed.

 

  1. On 7 December 2020 the Opponent requested a further stay of 2 months on the basis that:

 

“The parties are still in the final stages of negotiations relating to the above referenced opposition, with a Deed of Licence being circulated amongst the parties.

 

The Opponent has informed us that representatives of the Applicant are located in the United Kingdom who are impacted by Covid-19 and this has resulted in further delays in the matter.”

 

  1. On 16 December 2020 the Applicant informed the Commissioner that they did not consent to the stay. On 22 December 2020 the Commissioner declined to stay the opposition.

 

  1. The hearing took place via video conference on 30 March 2021.

Regulation 5.23

  1. On 8 March 2021 the Opponent filed documents and requested that they be considered under regulation 5.23.

 

  1. On 11 March 2021 a delegate informed the parties that there was insufficient time before the hearing to resolve the question of whether the information would be considered under regulation 5.23. The Delegate informed the parties that submissions about whether the information would be considered under regulation 5.23 could be made together with the written submissions and at the hearing.

<@Opposition_Evidence#Futher_Time

5.23  Commissioner may consult documents

             (1)  For the purposes of deciding an opposition, the Commissioner may consult a document that:

                     (a)  is relevant to the opposition; and

                     (b)  has not been filed under this Chapter; and

                     (c)  is available in the Patent Office.

             (2)  If the Commissioner proposes to rely on the document, the Commissioner must give the parties:

                     (a)  notice of the Commissioner’s intention to do so; and

                     (b)  a copy of, or access to, the document; and

                     (c)  an opportunity to give evidence or make representations about the document.

 

>

 

  1. The regulation 5.23 matter was discussed at the hearing. Following the hearing on 13 April 2021 I wrote to the parties informing them that the information was not likely to be determinative of the opposition, and thus would not be relied upon under regulation 5.23[A3].

<mxi8etm@ @Opposition Evidence#Futher Time#Relevance>

Applicable Law

  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[A4].

<@Inventive Step#Date;

The current standard for inventive step>

Evidence

  1. Evidence in Support comprises:

 

 

 

  1. Evidence in Answer comprises:

 

 

 

  1. Evidence in Reply comprises:

 

 

  1. Brett Watson is the managing director of Hunter Valley Signs Pty. Limited and has held this position since 1983. Hunter Valley Signs Pty. Limited has been involved in the design, manufacture, installation and maintenance of flashing LED (Light Emitting Diode) signage since 1998.

 

  1. Stephen Faith owned the business Faith Engineering over the period of 1991 and 2014. During that period Mr Faith designed, manufactured, and sold systems relating to smart or autonomous signs.

 

  1. Troy Wollard is the managing director of Bartco Traffic Equipment Pty Ltd and has been involved in the management and monitoring of traffic since 1995.

 

  1. Matthew Pini has been a registered patent attorney since 2004. Andrew Caska has been a registered patent attorney since 2001.

 

  1. Mr Watson, Mr Faith and Mr Wollard each has a significant amount of experience in the field of electronic signage. The evidence they have provided is carefully considered to resolve the issues raised in the opposition.

Grounds of Opposition

  1. The Statement of Grounds and Particulars pertains to the grounds of novelty and inventive step.

The specification

  1. The invention relates to an automated sign for indicating environmental conditions, for example, a fire danger warning sign. The invention is exemplified in figures 1 and 3:

 

Diagram, engineering drawingDescription automatically generated

 

Diagram, engineering drawingDescription automatically generated

 

  1. The corresponding description states at paragraphs 46 to 49:

 

“[0046] Figures 1 to 3 show a warning sign in accordance with a first embodiment of the present invention. In use, the warning sign conveys status of a condition. In this embodiment, the warning sign is in the form of a fire danger rating sign 10, and the condition is the fire danger rating. Thus, the sign 10 is arranged to convey a current fire danger rating.

 

[0047] The sign 10 has a plurality of sections that are permanently visible. Each section represents a level of the condition. In this embodiment, the board 12 displays six distinct fire danger ratings, and thus there are six sections. These include a first section 14a, which represents a "Low - Moderate" rating - the lowest of all the ratings that is to be conveyed by the sign 10; and a second section 14b, which represents a "Code Red" rating - the highest of all the ratings that is to be conveyed by the sign 10.

 

[0048] The sign 10 also has four intermediate sections 14c, 14d, 14e, 14f that respectively represent fire ratings "High", "Very High", "Severe", and "Extreme". The sections are hereinafter referred to collectively as " sections 14".

 

[0049] The sign 10 further has a plurality of illuminated regions 16a, 16b 16c, 16d, 16e, 16f (hereinafter referred to collectively as "illuminated regions 16"), that are each associated with a respective one of the sections 14. Each of the illuminated regions 16 has a respective light source 18a, 18b 18c, 18d, 18e, 18f (hereinafter referred to collectively as "light sources 18").”

Claims

  1. The specification ends with 23 claims; 3 independent claims and 20 dependent claims. The independent claims are as follows:

 

Claim 1:

 

An automated sign for indicating environmental conditions comprising a segmented conditions rating scale physically disposed on a substrate for public display wherein an illuminated display panel is operatively associated with each segment of the segmented conditions rating scale, whereby the illuminated display panels are controlled to illuminate one display panel at any one time so as to indicate by way of a selected segment environmental conditions in accordance with a received communications signal comprising prevailing environmental conditions and each of the illuminated display panels are adapted to be visible and distinguishable from each other illuminated display panel by one or a combination of: each illuminated display panel comprising an array of high intensity light emitting elements;

the light emitting elements having distinguishable colours for each illuminated display panel; the disposition of each illuminated display panel of the sign.[A5]

<@Claim 1;>

 

Claim 9:

 

A sign for conveying status of an environmental condition, the sign comprising: a plurality of sections that are segmented and spaced with respect to each other and that are permanently visible, each segmented and spaced section representing a level of status of the environmental condition; and

a plurality of illuminated regions that are each operatively associated with a respective section, each illuminated region having a light source, whereby, in use, the light sources are controlled, in accordance with a received communications signal comprising prevailing environmental conditions, to be selectively illuminated one illuminated region at any one time such that the illuminated regions and sections together convey a visual indication of a selected status level of the environmental condition and where each illuminated region in operative association with its respective section is adapted to be visible and distinguishable from each other illuminated region in operative association with its respective section by one or a combination of: each illuminated region comprising an array of high intensity light emitting elements; the light emitting elements having distinguishable colours for each section; the disposition of each illuminated region on the sign.

 

Claim 23:

 

A warning sign for conveying status of an environmental condition, the sign comprising: a plurality of light sources whereby each of the plurality of light sources is operatively associated with one of a plurality of segments of a segmented condition rating scale physically disposed on a substrate for public display wherein in combination the light sources and their operatively associated segments are adapted to be selectively illuminated one segment illuminated at any one time for displaying a plurality of distinct status levels of the environmental condition; an electronic control system for controlling illumination of the light sources; and

at least one sensor that detects an observable environmental condition, and which is in communication with the electronic control system; wherein the electronic control system automatically changes the status condition displayed by the light sources in response to a predetermined change in the environmental condition detected by the sensor and each of the plurality of segments are adapted to be visible and distinguishable from each other by one or a combination of: each of the plurality of light sources comprising an array of high intensity light emitting elements; the light emitting elements having distinguishable colours for each respective segment; the disposition of each segment on the sign.

Novelty

Novelty Legal Principles

  1. Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).

 

  1. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:

 

“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”.

Whole of contents

  1. The definition of “prior art base” given in Schedule 1 of the Act is:

 

"prior art base" means:

 

(a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step:

 

(i) information in a document that is publicly available, whether in or out of the patent area; and

 

(ii) information made publicly available through doing an act, whether in or out of the patent area.

 

(b) in relation to deciding whether an invention is or is not novel:

 

(i) information of a kind mentioned in paragraph (a); and

 

(ii) information contained in a published specification filed in respect of a complete application where:

 

(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

 

(B) the specification was published on or after the priority date of the claim under consideration; and

 

(C) the information was contained in the specification on its filing date.

 

  1. Documents that are published before the priority date are part of the prior art base as defined in part (a) of the definition of “prior art base” in Schedule 1 of the Act.

 

  1. Documents that are published after the priority date may form part of the prior art base as defined in part (b)(ii) if the three additional conditions are met. These are known as “whole of contents” prior art documents.

AU2012201396

  1. The Opponent asserts that the claimed invention lacks novelty in light of AU2012201396. AU2012201396 contains the following disclosure at paragraph 51:

 

To improve the effectiveness and/or visibility of sign 10 (or scale 16), particularly at night or at times during which light conditions are poor, as can be seen in Figure 1, sign 10 may also include additional lighting components. For example, each of segments 16.1 to 16.6 of scale 16 may include at least one LED segment light 18.1 to 18.6 for illuminating a respective segment 16.1 to 16.6 corresponding to the position of needle 14. This illumination of a segment 16.1 to 16.6 serves as an additional means for passing motorists, etc., to easily determine the position of needle 14, and hence the relative fire danger level. As can be seen in Figure 3, LED segment lights 18.1 to 18.6 are preferably coupled to outputs 206.4 to 206.9 of PLC 204, and are illuminated when required by the detection of the position of indicator needle 14 by a respective proximity sensor 17.1 to 17.6 coupled to PLC inputs 204.1 to 204.6. In a preferred form, each of LED segment lights 18.1 to 18.6 may be coloured to suit the colour of segments 16.1 to 16.6 of scale 16. For example, segments 16.5 ("extreme") and 16.6 ("code red") may each be coloured red, hence each of LED segment lights 18.5 and 18.6 may be red LED lights (or have red diffusers associated therewith) to correspond to those red segment colours 16.5, 16.6. Similarly, green, blue, yellow and orange colours may apply to segments 16.1 to 16.4, respectively, meaning matched coloured LED segment lights 18.1 to 18.4 (or diffusers, etc.) could be provided if desired. Sign 10 may also include a plurality of display surface illumination lights 21 (Figure 1), such as, for example, suitable white or clear LED lights 21. Display surface illumination lights 21 are preferably coupled to output 206.3 of PLC 204 and may be illuminated: at all times; at times when light conditions are poor or at night; or at selected times as instructed by server or client computer systems 110, 120.”

 

  1. The LED segments 18.1 to 18.6 are the key feature which prima facie anticipates the claimed invention.

Can AU2012201396 be treated as a “whole of contents” document?

  1. AU2012201396 was published on 9 May 2013 which is after the priority date of the presently opposed application of 15 November 2011. However AU2012201396 is based on provisional patent application 2011904416 which was filed on (and has a priority date of) 26 October 2011. Thus AU2012201396 can potentially be used as a “whole of contents” document.

 

  1. Provisional application 2011904416 does not disclose lights in each segment and instead only discloses LEDs to display text messages, for example at page 9 lines 15 to 16 the LED message is “CODE RED: evacuate area immediately”. Thus any notional claim to light emitting elements which illuminate segments of the sign would not benefit from the earlier priority date and thus does not meet the criteria for “prior art base” (b)(ii)(A) and cannot be used as a “whole of contents” novelty document[A6]. Consequently, the claimed invention is novel in light of AU2012201396.

 

<@Finding>

Prior use

  1. The Opponent raised three examples of prior use:

 

 

 

 

  1. The definition of “prior art base” provided in Schedule 1 of the Patents Act includes “information made publicly available through doing an act, whether in or out of the patent area”. The concept of information being made “publicly available” was explored by the Full Court in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139 and summarised at [124]:

 

 

  1. The level of proof required was discussed by Besanko J in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]- [200]:

 

“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.

 

The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”

 

  1. Besanko J continued at [202]:

 

“In Windsurfing International Inc v Petit (1983) 3 IPR 449, Waddell J (at 489) referred to the need to scrutinise evidence of an alleged prior public use with great care and said that such a use should be strictly proved.”[A8]<m1703cm@ @Novelty#Use#Standard;

Pubic use must be strictly proved and evidence which is not corroborated must be scrutinized with care.>

Mona Vale Road Sign “2007” model – MV10

  1. The Opponent states in their submissions:

 

“MV10 Sign - A “2007” model Mona Vale Road Sign referred to in the Declaration of Mr Brett Watson dated 18 August 2019 as the MV10 sign, and shown in Exhibits O and P. Exhibit N provides the relevant invoices dated 29 October 2007, and 25 March 2008. The sign being installed by 21 July 2008 with the photograph shown in exhibits O and P having meta data showing its date of 28 August 2008, the original photograph and meta-data being provided as Exhibits O-A and O-B with a second Declaration of Mr Brett Watson dated 8 March 2021. The same photograph was provided as part of a Tender to Rural Fire Services NSW dated September 2009 provided in Exhibit S referred to in the Declaration of Mr Brett Watson dated 18 August 2019.”

 

  1. Exhibit O contains the following photograph: