FEDERAL COURT OF AUSTRALIA

Cronk v Commissioner of Patents [2014] FCA 37 

Citation:	Cronk v Commissioner of Patents [2014] FCA 37	
		
Parties:	PAUL ANDREW CRONK v COMMISSIONER OF PATENTS	
		
File number:	NSD 532 of 2012	
		
Judge:	ROBERTSON J	
		
Date of judgment:	10 February 2014	
		
Catchwords:	PATENTS – appeal under s 109 – whether evidence established that the invention as claimed involved an inventive step when compared with the prior art base, as it existed before the priority date of the claim	
		
Legislation:	Patents Act 1990 (Cth) ss 7(2), 7(3), 18(1)(b), 45, 51, 107, 109, 142(2), 158, 160

Patents Regulations 1991 (Cth) regs 10.12, 13.4 	
		
Cases cited:	Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411
Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386
Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 192 ALR 306; (2001) 53 IPR 270
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228
New England Biolabs Inc v F Hoffmann-La Roche AG (2004) 141 FCR 1
Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262  	
		
Date of hearing:	14 October 2013	
		
Place:	Sydney	
		
Division:	GENERAL DIVISION	
		
Category:	Catchwords	
		
Number of paragraphs:	104	
		
Counsel for the Applicant:	Mr KP Smark SC	
		
Solicitor for the Applicant:	Fraser Old & Sohn	
		
Counsel for the Respondent:	Ms JR Baird SC	
		
Solicitor for the Respondent:	Australian Government Solicitor	

IN THE FEDERAL COURT OF AUSTRALIA		
NEW SOUTH WALES DISTRICT REGISTRY		
GENERAL DIVISION	NSD 532 of 2012	
 
BETWEEN:	PAUL ANDREW CRONK
Applicant
	
AND:	COMMISSIONER OF PATENTS
Respondent

JUDGE:	ROBERTSON J	
DATE OF ORDER:	10 FEBRUARY 2014	
WHERE MADE:	SYDNEY	

THE COURT ORDERS THAT:

1.	The application in paragraphs 1, 4, 5, 6, 7 and 8 of Part B of the amended notice of appeal filed on 12 July 2012 be dismissed.
2.	The remainder of the application be dismissed.
3.	The applicant pay the respondent’s costs, as agreed or taxed.
4.	The exhibits are to be returned. 

Note:	Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA		
NEW SOUTH WALES DISTRICT REGISTRY		
GENERAL DIVISION	NSD 532 of 2012	
 
BETWEEN:	PAUL ANDREW CRONK
Applicant
	
AND:	COMMISSIONER OF PATENTS
Respondent

JUDGE:	ROBERTSON J	
DATE:	10 FEBRUARY 2014	
PLACE:	SYDNEY	

REASONS FOR JUDGMENT
INTRODUCTION
1		This appeal under the Patents Act 1990 (Cth) (the Act) is against a decision of the Commissioner. There is a preliminary question whether the appeal is under s 51 or under s 109 of the Act. 
2		The relevant form of the Act is as it was before the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) came into force.
3		By amended notice of appeal filed on 12 July 2012 the decision was identified as the decision of the delegate of the Commissioner dated 21 March 2012 in respect of the patent application number 2008229901 filed on 14 October 2008 titled “A luminaire reflector locating arrangement” in the name of the present applicant. 
4		The claims defining the invention were as follows:
1.	A locating mechanism for a pair of reflector sheets from which the reflector of a doubly arched luminaire is assembled, said mechanism comprising at least one mushroom-shaped stud on one of said sheets and a corresponding keyhole shaped aperture on the other of said sheets, said stud comprising a stalk and a cap and said aperture comprising a main opening and a smaller extension wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening but not said extension and said stalk can be retained in said extension with a friction fit.
2.	The mechanism as claimed in claim 1 wherein one of said reflector sheets has a plurality of spaced apart mushroom studs and the other of said reflector sheets has a like plurality of like spaced keyhole apertures, the smaller extensions of said apertures being substantially parallel and like aligned.
3.	The mechanism as claimed in claim 1 or 2 wherein said friction fit is between said extension and said stalk.
4.	The mechanism as claimed in claim 1 or 2 wherein said friction fit is between the surface of said reflector adjacent said extension and said cap.
5.	The mechanism as claimed in claim 1 or 2 wherein said friction is between said extension and said stalk and between the surfaces of said reflector adjacent said extension and said cap.
6.	A locating mechanism substantially as herein described with reference to Figs 2-5 of the accompanying drawings.
7.	A luminaire incorporating a locating mechanism as claimed in any one of claims 1-6.
8.	A luminaire substantially as herein described with reference to Figs.2-5 of the accompanying drawings.
5		The decision, dated 21 March 2012, was in the following terms:
DECISION

The invention defined by the claims lacks inventive step in the light of WO 96/37732.
The application will not lapse under section 142(2)(e) until after 8 July 2012.  I allow the applicant the remainder of this period to propose suitable amendments. 
6		By way of background, the delegate noted the following about the earlier patent referred to in the decision:
10.	The citation is WO 96/37732.  This international application was filed on 24 May 1995 by Paul Andrew Cronk.  The international application was published on 28 November 1996.  The international application entered the national phase in Australia on 18 November 1997, and was assigned the application number 24416/95.  The application has now been sealed as patent number 716550.
11.	The citation relates to the reflector for a light fitting.  In one form, the reflector is a pair of sheets that are joined along a spine.  This is seen in Figure 1 of the citation (reproduced as Annex 2 of this decision).  The citation discusses this Figure at page 3 – 4.
“Referring to FIG. 1 it can be seen that the adjustable reflector device according to this invention comprises a two piece resilient skin formed by two members 1 and 2, comprised of a substantially orthogonally protruding skirt parallel with the longest edge thereof.  The sheet members are substantially rectangularly shaped sheet, detachably joined about a spine portion 3 then flexed back against its normal resilience to produce a double parabolic shape, as shown, such that one edge and associated skirt of one sheet member fits neatly inside the corresponding skirt and edge of the other, forming substantially orthogonal alignment between sheets.  The sheets are then fixed together and flexed back to achieve a curved shape, such as a double-parabolic shape.  The skin may be made of any suitable material such as colour bonded metal, metal, fibreglass, or plastic.  The pair of sheet members could be integrally manufactured in a one piece construction – as opposed to being separately formed.”
12.	In Figures 2 and 3 it is seen that the sheets 1 and 2 can have a number of holes in the spine region, which presumably are used for joining the sheets.  The citation is otherwise silent on how the sheets are joined.
THE REASONS OF THE DELEGATE
7		In order to understand the amended notice of appeal it is convenient to set out the essential reasoning of the delegate which was as follows, largely using the delegate’s words.
8		The delegate said that the problem addressed by the present application was a luminaire arrangement that allowed for more convenient assembly. This problem was solved by the use of a keyhole slot and mushroom stud mechanism to join the reflector sheets of the luminaire. The evidence produced by the examiner was a number of patent applications that showed the use of keyhole slots.  The examiner had advanced those documents to show that the concept of using keyhole slots and mushroom studs to join metal elements was well known. The documents cited by the examiner were filed between 1942 and 2001.  The documents showed keyhole slots used in joining metal elements in light fittings, shelving, and construction.  The delegate concluded from this that keyhole slots were a known means for joining metal elements.  Further, they had been known for a long time, and were known in a wide range of applications.  It was a safe inference that they were widely known as a joining means.  
9		In patent application 18425/88, keyhole slots were used in conjunction with screws (feature 19 in the Figures) or lugs (feature 16 in the Figures). The nature of the lugs was clearly of the mushroom type. With regard to the use of screws, they were clearly a less elegant version of a mushroom stud.  
10		Similarly, in patent 116,598 members were described as having an enlarged head so they could be inserted in the keyhole slots. This was clearly a mushroom stud by another name.  Similarly, in patent 773023 studs of different shapes were illustrated, but clearly they were also of the mushroom type.
11		Although the term “mushroom stud” was not used in these documents, it was apparent that the studs that were discussed were of this type.  The delegate concluded that studs that could be described as mushroom studs were normally used with keyhole slots.
12		Turning to the material filed in support of the Application, the delegate said that there was nothing to suggest that Mr Creevey, who had provided evidence that he was unaware that mushroom studs and key hole shaped apertures were a possible interconnection device for a pair of metal sheets, had a background in joining metal sheets, but assumed that he did.  The applicant invited the delegate to infer that because Mr Creevey was unaware of the use of keyhole slots and mushroom studs that they were not well known in the art.  The delegate could see no logical basis for such an inference.
13		The delegate concluded that keyhole slots and mushroom studs were a well-known means of joining metal elements.  It followed that a person seeking to solve the problem addressed by the present application would reasonably have been expected to try keyhole slots and mushroom studs because they were well known and their design was likely to solve the problem.  While it could not be said that keyhole slots and mushroom studs would be the only thing that a person would think of, it was clearly a solution that it would have been a matter of routine to arrive at.  Thus there was a prima facie case of lack of inventive step.
14		The evidence of Mr King indicated that his customers refused to purchase a product where the mushroom studs had been drilled out and replaced with bolts. The evidence related solely to a defective product that was altered to imitate the former product. Customers were unwilling to purchase the defective product that had been altered, even at a discounted price.  The comparison of a defective product with the present invention was not a fair comparison.  To some extent it supported a conclusion that customers preferred the new product (which suggested commercial success), but it might also have been an indication that the defects in the defective product were not overcome by simply drilling out the studs.  In the absence of a full understanding of the defective produce, the delegate said he was forced to give this evidence very little weight.
15		As to the evidence of Mr Old in relation to John Ferguson, who was listed as the inventor of patent 759,306, the delegate said he could see no reason to consider that Mr Ferguson was aware of a problem in relation to the complexity of joining the sheets. Consequently, the fact that he did not solve a problem of which he was unaware was unsurprising.  The delegate did not see how he could draw any useful inference from patent 759,306, or the involvement of Mr Ferguson in its creation.
16		The examiner had provided a prima facie case of lack of inventive step.  That had to be weighed against the evidence of Mr King and Mr Old. That evidence provided little assistance to the applicant.  On the balance of probabilities, the delegate considered that there was a lack of inventive step.  The examiner raised the objection against claims 1-5. The features in the appended claims related to the use of a plurality of mushroom studs and keyhole slots, and details of the friction fit. The delegate agreed that these claims did not add anything that could be seen as inventive.  He concluded that the invention defined by claims 1-5 lacked inventive step in the light of the citation.
17		The delegate believed that it was possible to overcome this objection by amendment.  For instance, the Application could be converted to a patent of addition, or the claims could be restricted to the invention covered by claims 6 to 8.  The Application would not lapse under s 142(2)(e) until after 8 July 2012, so he allowed the applicant the remainder of this period to propose suitable amendments.  
THE AMENDED NOTICE OF APPEAL
18		In Part C of his amended notice of appeal the applicant contends as follows, using his numbering:
6. 	The Delegate erred (at [33]) in finding that keyhole slots are a known means for joining metal elements as a result of the documents cited by the examiner dated between 1942 and 2001.
7.	The Delegate erred (at [34] and [35]) in finding that:
a. 	the nature of the lugs in patent application number 18425/88 are clearly of the mushroom type;
b. 	it is apparent from this text that the authors considered the details of the lugs to be a matter that did not require detailed explanation, suggesting that it was well known; and
c. 	screws are clearly a less elegant version of mushroom stud.
8. 	The Delegate erred (at [36]) in finding that:
a.	the members in patent 116,598 are clearly a mushroom stud by another name; and
b.	the studs in patent number 773023 are clearly also of the mushroom type.
5. 	The Delegate erred (at [37]) in finding that:
a.	it is apparent that the studs discussed in the documents cited by the examiner are of the mushroom stud type; and
b.	studs that could be described as mushroom studs were normally used with keyhole slots.
6. 	The Delegate erred (at [38]) in finding that there is no logical basis for inferring that the use of keyhole slots and mushroom studs were not well known in the art because Mr Creevy [sic] was unaware of such use.
7. 	The Delegate erred (at [39]) in finding that:
a.	keyhole slots and mushroom studs were a well-known means of joining metal elements;
b.	a person seeking to solve the problem addressed by the Patent Application would reasonably have been expected to try keyhole slots and mushroom studs because they were well know [sic] and their design is likely to solve the problem;
c.	keyhole slots and mushroom studs is clearly a solution that it would have been a matter of routine to arrive at; and
d.	there is a prima facie case of lack of inventive step.
8.	The Delegate erred in finding (at [45]) that:
a.	there was no reason to consider that Mr Ferguson was aware of a problem in relation to the complexity of joining the sheets; and
b.	no useful inference can be drawn from patent number 759,306 or the involvement of Mr Ferguson in its creation.
9.	The Delegate erred in finding (at [46]) that the invention the subject of the Patent Application lacked an inventive step in circumstances where:
a.	there was no evidence, or insufficient evidence, before the Delegate to support such a finding; and
b.	such evidence as was before the Delegate pointed against such a finding.
10.	In the premises, the Decision was incorrectly made and should be set aside.
As appears below, the appeal was not argued by direct reference to all of these grounds.
PRELIMINARY QUESTION
19		As I have indicated, there is a preliminary question as to whether what the delegate did on 21 March 2012 was a decision within the meaning of s 51, that is, whether it was a decision of the Commissioner under Div 1 of Pt 3 of Ch 3 of the Act or whether the appeal was under s 109. 
20		In written submissions, the respondent submitted that she (by her delegate Dr Steven Barker), being satisfied that the invention defined by claims 1 to 5 of the Application lacked an inventive step in light of the previous Cronk patent, directed pursuant to s 107(1) of the Act that the applicant be allowed to file a statement of proposed amendments within the period remaining to the Application before lapsing. 
21		In written submissions, the respondent submitted that the delegate proceeded under s 107 of the Act, consequent upon examination reports issuing pursuant to s 45 of the Act and having provided the applicant an opportunity to be heard in accordance with s 107(2). Section 107 lies within Pt 2 of Ch 10 of the Act. It followed that the present proceeding could not proceed as an appeal under s 51 of the Act.
22		After discussions between counsel in the course of the hearing before me, the judicial review relief sought in the amended notice of appeal filed on 12 July 2012 was not pursued. There was no document from the respondent expressing refusal of the patent request. A decision had not in fact yet been made and therefore no appeal lay under s 51 which did not pick up a decision under the examination provisions in Div 1 of Pt 2. 
23		The applicant put that the document entitled “Decision” was a decision within the framework provided by s 45 of the Act, that is, the outcome of the examination of the request and specification and report under s 45. There was not expressed to be a decision under s 49(2). Thus the decision was the culmination of the examination process and a decision in the nature of the report directed to the relevant integers specified in s 45, the relevant integer being whether there was an inventive step or not, novelty not being an issue. 
24		The applicant asked me to dismiss the application as noted in paragraphs 1, 4, 5, 6, 7 and 8 of Part B of the amended notice of appeal and I do so. It follows that it is not necessary to consider the amended notice of appeal so far as it relies on the Administrative Decisions (Judicial Review) Act 1977 (Cth) or “judicial review pursuant to the common law” or s 39B of the Judiciary Act 1903 (Cth).
25		This leaves grounds 2 and 3 seeking an order that the appeal pursuant to s 51, or such other provision as the Court thinks fit, be allowed and an order that the decision be set aside. 
26		The applicant put that the terms used at the beginning and the end of the decision were consistent with the form of reg 10.12 of the Patents Regulations 1991 (Cth) (the Regulations) being a direction which specified the time within which the applicant must file a relevant statement of proposed amendments, if any. The applicant submitted that an appeal under s 109 was engaged by the decision to allow amendments, it being an integer in that decision that there was a need for amendment, the integer being lack of inventive step.
27		By that path the applicant submitted that although there had not been a refusal so as to engage s 51, nevertheless there was enlivened under s 109 an appeal by reason of the delegate’s direction that there should be contemplated amendments at all and the decision whether to allow that appeal would turn in substance on whether there was a lack of inventive step.
28		The respondent was content for the recasting of the appeal so as to be an appeal under s 109.  The respondent submitted that the Application had gone through a process of examination which resulted in the objections which were not resolved and which then ended in a hearing. That hearing resulted in the report of the delegate, the decision which allowed amendments to be made within a certain time. The respondent adopted the applicant’s submission that the delegate’s decision was a decision within s 107 and was able to be appealed within s 109. Contained within the decision, the respondent submitted, was a direction which met the requirements of reg 10.12 of the Regulations and the status of the Application was of an application under appeal. It had not yet been accepted as having gone under appeal. The Application had not yet lapsed. Thus the Court, the respondent accepted, was dealing with the correctness of the delegate’s decision. The respondent did not advance any discretionary reason why the Court should not deal with the appeal on the basis outlined above.
29		Section 109 provided:
109 Appeal

An appeal lies to the Federal Court against a direction of the Commissioner under section 106 or 107.
30		Section 107 provided:
107  Amendments directed by Commissioner: applications for standard patents
(1)  Where:
(a)	a complete application for a standard patent has been made; and
(b)	the Commissioner is satisfied that there are lawful grounds of objection to the patent request or complete specification, but that those grounds of objection could be removed by appropriate amendments of the request or specification; and
(c)	the applicant has not taken action to amend the request or specification so as to remove those grounds of objection;
the Commissioner may, in accordance with the regulations, direct the applicant to file, within such time as the Commissioner allows, a statement of proposed amendments of the request or specification for the purpose of removing those grounds of objection.
(2)	The Commissioner must not give a direction without first giving the applicant a reasonable opportunity to be heard.
(3)	An applicant may, in accordance with the regulations, amend a statement of amendments.
(4)	If the Commissioner is satisfied that the amendments set out in a statement (or an amended statement) are allowable and would, if made, remove all lawful grounds of objection to the patent request and complete specification, the Commissioner must allow the amendments.
(5)	On the allowance of an amendment, the amendment is to be taken to have been made.
31		The Regulations provided:
10.12	Form of direction by Commissioner: applications
A direction of the Commissioner under subsection 107(1) of the Act:
(a)	must be in writing; and
(b)	must state the grounds on which he or she is satisfied that there are lawful grounds of objection to the patent request or complete specification; and
(c)	must specify the time within which the applicant must file a relevant statement of proposed amendments.

32		I have already set out the terms of the decision. I was also referred to [46]-[47] of the delegate’s reasons as follows:
The examiner has provided a prima facie case of lack of inventive step.  That must be weighed against the evidence of Mr King and Mr Old.  I noted above that this evidence provides little assistance to the applicant.  On the balance of probabilities, I consider that there is a lack of inventive step.  The examiner raised the objection against claims 1-5.  The features in the appended claims relate to the use of a plurality of mushroom studs and keyhole slots, and details of the friction fit.  I agree that these claims do not add anything that can be seen as inventive.  I conclude that the invention defined by claims 1-5 lacks inventive step in the light of the citation.
I believe that it is possible to overcome this objection by amendment.  For instance, the application could be converted to a patent of addition, or the claims could be restricted to the invention covered by claims 6 to 8.  The application will not lapse under section 142(2)(e) until after 8 July 2012, so I allow the applicant the remainder of this period to propose suitable amendments.
33		In my opinion there is no reason why a direction under s 107 of the Act must be in a separate document. I proceed on the basis that the decision itself stated the grounds on which the delegate was satisfied that there were lawful grounds of objection to the patent request or complete specification.
34		As to the other requirement of reg 10.12, that the direction specify the time within which the applicant must file a relevant statement of proposed amendments, on one view the delegate appears to have been doing no more than drawing the attention of the applicant to the relevant statutory time limits. But the better view, in my opinion, is to give effect to the words used by the delegate as disclosing his mental processes and to conclude that the words “I allow” disclosed a specification of the time within which the applicant must file the relevant statement of proposed amendments. 
35		I therefore conclude on the facts of this case that there was a direction for the purposes of s 107 and thus a direction from which an appeal lay to this Court under s 109. It was not suggested that the Application had otherwise lapsed in light of the appeal to this Court filed on 11 April 2012: see reg 13.4(1)(h).
36		The parties were content to proceed on the basis that whether the delegate should or should not have found that there was a lack of inventive step was to be determined by the Court de novo and not as a question of judicial review. In that regard there would not appear to be any material difference between the language in s 158(1), on the one hand, and the language of s 109 on the other hand. I note however that s 158(2) appears to pick up the jurisdiction of a single judge of the Federal Court to hear and determine appeals from directions of the Commissioner. Similarly, s 160 picks up the hearing of an appeal against a direction of the Commissioner. These provisions appear to align the nature of the appeal in each instance: as to that nature, see generally New England Biolabs Inc v F Hoffmann-La Roche AG (2004) 141 FCR 1. 
THE SUBSTANCE OF THE APPEAL
37		As I have said, it was common ground that the nature of the appeal was a hearing de novo: compare Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386.
38		There was also little difference between the parties as to the relevant principles to apply, the respondent noting that under the present Act the prior art base differs from that in the Patents Act 1952 (Cth) which was the legislation considered in Aktiebolaget Hässle v Alphapharm Pty Ltd (2002) 212 CLR 411 (Alphapharm). It is convenient therefore to set out the general principles stated by the High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173, recognising that s 7 has been amended since the time relevant to that decision:
General principles concerning inventive step
50	Although the threshold of inventiveness has been raised as explained by the legislative changes referred to above, case law developed previously continues to be relevant, not least because the legislation employs many familiar terms, such as “common general knowledge”. That makes it necessary to briefly refer to general principles of continuing relevance before turning to consider the legislative provisions in more detail.
51	In Alphapharm [(2002) 212 CLR 411], this Court reiterated that “obvious” means “very plain”, as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [[1972] RPC 457 at 497]. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a “jury question”. Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also “one of degree and often it is by no means easy”, because ingenuity is relative, depending as it does on relevant states of common general knowledge. This difficulty is further complicated now by the need, in some circumstances, to consider s 7(3) information as well as common general knowledge.
52	Further, as recognised in Beecham Group Ltd's (Amoxycillin) Application [[1980] RPC 261 at 290], as a basic premise, obviousness and inventiveness are antitheses and the question is always “is the step taken over the prior art an ‘obvious step’ or ‘an inventive step’”? An inventive step is often an issue “borne out by the evidence of the experts”. There is no distinction between obviousness and a lack of inventive step. A “scintilla of invention” remains sufficient in Australian law to support the validity of a patent. In R D Werner [(1989) 25 FCR 565 at 574] Lockhart J stated that there must be “some difficulty overcome, some barrier crossed”. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which “any fool” could devise. It also accords with the requirement in the United States that for an invention to be “non-obvious” it must be “beyond the skill of the calling”.
53	The essential question to be posed when considering obviousness under the 1952 Act was outlined by Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [(1981) 148 CLR 262]. Section 101(1) of the 1952 Act set out the grounds upon which a patent might be revoked. Section 101(1)(e) relevantly provided:
“that the invention, so far as claimed in any claim, was obvious and did not involve an inventive step, having regard to what was known or used in Australia on or before the priority date of that claim.”
(Emphasis added.) 
54	In considering whether experiments by an inventor were relevant to the issue of obviousness, in Wellcome Foundation [(1981) 148 CLR 262 at 270], Aickin J stated:
“It is as well to bear in mind that the question of obviousness involves asking the question whether the invention would have been obvious to a non-inventive worker in the field, equipped with the common general knowledge in that particular field as at the priority date, without regard to documents in existence but not part of such common general knowledge.”
(Emphasis added.) 
55	“Common general knowledge” was well understood as being “part of the mental equipment of those concerned in the art under consideration”, and Minnesota Mining [(1980) 144 CLR 253 at 292] had confirmed that what was “known or used” in Australia was confined to common general knowledge, which was explained as:
“the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old.”
The effect of Minnesota Mining and Wellcome Foundation was that for the purpose of determining inventiveness prior disclosures which were publicly available information, but which were not part of common general knowledge, were excluded from consideration. In the case of Minnesota Mining, a number of prior specifications available for public inspection in Australia before the priority date which were not part of common general knowledge were excluded from consideration. 
56	Whether a patent is obvious under the Act is still to be determined by reference to the hypothetical non-inventive worker in the field (now a “person skilled in the relevant art” (s 7(2) and (3)) equipped with common general knowledge, as stated by Aickin J in Minnesota Mining and followed since. Therefore it is irrelevant whether the invention was arrived at as a matter of chance or luck or the result of long experiment or great intellectual effort. However, reference to and use of prior disclosures, in existence but not part of the common general knowledge, has now been extended. This has the result that the limitation in Aickin J's statement of principle, emphasised above, no longer applies, a topic about which more will be said later. The objective approach to determining obviousness is equally applicable to a combination patent.
(footnotes omitted)
39		The priority date in the present matter was 27 February 2002.
40		By s 7(2) an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in s 7(3).
41		The parties also referred to Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173; Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 192 ALR 306; (2001) 53 IPR 270; and Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at 249.
42		Affidavit evidence was given by Mr Old, who swore three affidavits, Mr King and Mr Creevey for the applicant and by Mr Furzey, who swore two affidavits, for the respondent. There was no oral evidence or cross-examination although the respondent objected to parts of the applicant’s affidavits.
THE SUBMISSIONS
43		The applicant submitted that the issue was whether an invention was a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim, when compared with the prior art base as it existed before the priority date of that claim, was novel and involved an inventive step within the meaning of s 18(1)(b) of the Act. By virtue of s 7(2) an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in s 7(3). The applicant also referred to the definition of “prior art base” in Sch 1 to the Act as meaning information in a document that is publicly available, whether in or out of the patent area; and information made publicly available through doing an act, whether in or out of the patent area. Reference was made to Commissioner of Patents v Emperor Sports Pty Ltd (2006) 149 FCR 386 at [31].
44		The applicant submitted that the prior art considered by the examiner did not establish that the use of mushroom-shaped studs and corresponding keyhole shaped apertures was part of common general knowledge by the priority date as a means of joining metal elements in light fittings. Contrary to the reference by the delegate to the use of screws being a less elegant version of the mushroom stud (at [35]), in fact the properties of the two were quite different and the use of the mushroom stud was integral to the applicant’s claim. Further, each of the claims in the Application disclosed an arrangement in which the dimensioning of the studs, extensions and apertures gave rise to a friction fit yet there was no basis to conclude that such an arrangement was part of common general knowledge by the priority date. It was submitted that the limited nature of the prior art material was insufficient for the Court to conclude that the invention in the Application was obvious in the relevant sense.
45		The applicant relied also on other evidence to support the conclusion of an inventive step: evidence of failure to take an inventive step by Mr Ferguson; evidence of particular consumer reaction (Mr King); and evidence of lack of knowledge by a relevant person (Mr Creevey).
46		As to the evidence of Mr Ferguson, it was submitted that he was a skilled addressee who was in fact inventive. Mr Ferguson’s invention was based on the previous Cronk patent. The specification for Mr Ferguson’s invention noted that “[i]n [its] construction, a pair of resilient sheet members are attached together by overlapping angled flanges along their edges and bolted together.” The construction was described as “advantageous in some respects … but … cumbersome and time consuming to assemble.” Despite being addressed to this issue, the specification still proceeded on the basis of fastening by nuts and bolts. It simply did not occur to Mr Ferguson to proceed in the manner proposed by the applicant; in short, it was submitted, the position was similar to that which arose before Hely J in Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2001) 192 ALR 306; (2001) 53 IPR 270. It was reasonable to conclude that it simply did not occur to Mr Ferguson (or any other person before Mr Cronk, so far as the evidence disclosed) that the convenience of assembly could be improved as proposed by the applicant. Having regard to the low threshold required for an inventive step and the limited evidence in relation to prior art, it was submitted that the features of Mr Ferguson’s patent were quite sufficient to lead to a conclusion that the applicant had taken an inventive step in the present case.
47		As to evidence of particular consumer reaction, Mr King’s evidence was, it was submitted, that he sought to sell the improved reflector but due to defects it was sold with nuts and bolts replacing the studs and at a 40% discount. His customers did not wish to buy such a product. This tended to support the conclusion that the changes brought about consistently with the Application were commercially successful which in turn was at least some evidence (where not much evidence may be needed) of inventiveness.
48		The contents of Mr Creevey’s affidavit at [1]-[6] provided a basis to conclude, it was submitted, that he would be a person with common general knowledge concerned with the manufacture of light fittings, especially for hydroponic use. The fact that he had no awareness of even the possibility of using a connection of the kind specified in the present Application was, it was submitted, at least consistent with the proposition that such a step was not an obvious one to take to improve the convenience of assembling reflectors.
49		In oral submissions the applicant emphasised that what was claimed was a locating mechanism, not only a mechanism for attaching a pair of reflector sheets. The locating mechanism in claim 1 was comprised of a mushroom-shaped stud on one sheet and a corresponding keyhole aperture on the other sheet. The concluding element of claim 1 was that the stud with the stalk, the extension and its cap, were to be dimensioned in a particular way and that was central to the claim. They were to be dimensioned first so that the cap could go through only the larger part of the keyhole and, secondly, so that the stalk was retained in the keyhole extension with a friction fit. That use of the friction fit was something which stood in some distinction to the prior art as reflected by other patent specifications relied on by the respondent. There were two dimensions to the friction fit: one was the diameter of the stalk, the friction fit in the horizontal plane, and the other dimension was that the bottom of the cap came into contact with the sheet through which it was going and that was a friction fit in the vertical plane. 
50		What was inventive was that, whether it was in the horizontal or vertical plane, this locating mechanism operated by way of a friction fit and not some other form of attachment. When the prior art was reviewed, much or all of it relied on quite different mechanisms. Whether in the field of lighting, which the applicant submitted was the relevant field of art, or more diverse fields, one was generally not concerned with a friction fit but other forms of attachment. The decision of the delegate did not engage with the fact that this was a locating mechanism relying on a friction fit. 
51		The broadest claim put involved a friction fit for the locating mechanism and that was really the central question: whether that approach to locating the two sheets with respect to each other was something that formed part of the common general knowledge so that when one applied the relevant test it could be said there was an inventive step involved. 
52		The evidence relied on by the applicant involved some particular types of evidence which were not designed to distract from the primary question — the assessment of whether there was an inventive step as against the background of the applicable common general knowledge — but they were relevant matters which, were the matter to be balanced, might lead the Court to consider that there was an inventive step. The major feature of the case was that the claim involved a step forward.
53		In closing submissions, the applicant submitted that an appropriate question was to ask: would a skilled addressee at the relevant date in all the circumstances, including a knowledge of all the relevant prior art, directly be led as a matter of course to try the invention set out in claim 1, in the expectation that it might well provide a useful alternative? More specifically, would the skilled addressee be led as a matter of course to resolve the inconvenience associated with the assembly of a double arched luminaire, by proceeding with a locating mechanism comprising a mushroom-shaped stud with a keyhole aperture that was dimensioned so that the stalk was retained with a friction fit? 
54		A locating mechanism was to be contrasted with simply affixing or attaching the reflector sheets each to the other. The locating mechanism was a prior step to make the task easier. That could be compared with the relevant prior art, namely Mr Cronk’s first patent. The locating mechanism was a new step not found in the several documents relied upon as prior art documents by the delegate or in the documents exhibited to Mr Furzey’s affidavit. 
55		It was submitted that it was the notion of having a locating mechanism and the fact of the dimensioning of the stud and keyhole aperture with a friction fit which took the matter beyond what would be led to directly as a matter of course by someone addressing the problem posed, namely how to overcome the cumbersomeness of assembly which might be thought to flow from assembly by bolts, welds or the like in the first patent. 
56		The applicant emphasised the area with which the skilled addressee would be familiar, lighting equipment; a locating mechanism; and dimensioning so as to achieve a friction fit in carrying out an assembly. The relevant problem was making a double-arched variable luminaire, consisting of two thin sheets of metal, easier to assemble. A friction fit, as opposed to, for example, a pop rivet, made the assembly process reversible. It was these features, it was submitted, which distinguished, and took the matter beyond, mere studs and keyholes.
57		The respondent emphasised in submissions the structure of the patent. The patent related to luminaires and identified as prior art WO 96/37732, described as the previous Cronk patent. The reader was directed to look at that patent application and to use it as the starting point for a consideration of the present application, the problem, and the invention that was alleged and claimed. The present application then proceeded to identify both how the products claimed in the previous Cronk patent were normally sold and assembled and identified a problem. The problem was not identified in the previous Cronk patent. The problem as identified was an assembly process that was relatively time-consuming because there was a large number of bolts, nuts and like fasteners to be assembled. The time-consuming aspect of assembly was the number of bits and pieces.
58		Under the heading "Genesis of the Invention" the aim or object of the invention was described under paragraph 3 as a desire to provide an arrangement whereby the luminaire of the previous Cronk patent, now the luminaire of the present application, could be assembled in a more convenient fashion. A reading of paragraphs 2 and 3 together identified the time-consuming process problem of the large number of bolts and assembly in a more convenient fashion. 
59		The summary of the invention provided a solution which was disclosed as a locating mechanism for which the reflector sheets forming part of the luminaire could be assembled and that mechanism comprised what was described as a mushroom-shaped stud on one of the reflector sheets and a corresponding keyhole shaped aperture on the other. There was then further description of that stud and further description of the aperture with one passing through the opening of the other to retain it in the friction fit.
60		The evidence, particularly from Mr Furzey, was that those two components were commonly used by persons working in the field and the mushroom-shaped stud could be a rivet or it could also work as a screw and the keyhole shaped aperture was often known as a slot or a keyhole slot because it had a larger path through which the head of the retaining piece would pass and then slide down to fit into the neck of the keyhole. That retention then provided the locating mechanism and reduced the large number of bolts, nuts and like fasteners.
61		On the terms of the Application, moving from the unassembled to the assembled position merely required putting the cap of the stud through the central opening that, it said, should locate the two generally in the correct orientation and configuration, and then moving them so as to engage. This movement was to result in the friction fit. That was the sole reference in the Application to the friction fit which the applicant placed great importance on and the only purpose of it appeared to be in the following paragraph.
62		It was clear that the locating mechanism also secured the two sheets together and enabled the next step in the assembly of the luminaire. That was the extent of the description and of the explanation. It identified in brief the starting point of the reading of the invention in the Application; a problem, being time-consuming assembly process because of the large number of bolts, nuts and like fasteners; and an object, to assemble more conveniently and doing so by a stud and keyhole fitting together so that the next steps of the invention so claimed could be undertaken.
63		Claim 1 was the independent claim; claim 2 depended on it, requiring there to be a plurality of spaced apart mushroom studs and apertures; claim 3 depended on either claim 2 or claim 1 and said only where the horizontal friction fit was; claim 4 was the friction fit identified vertically; and claim 5 seemed to talk about both. Claims 1 to 5 were the claims that the delegate considered were lacking in inventive step but formed the view that the lack of inventive step could be overcome either by amending claim 6, claim 7 or claim 8.
64		The respondent submitted the previous Cronk patent was stated to be the starting point for the invention of the Application. It did not appear to be in dispute that the previous Cronk patent was part of the relevant prior art. Any problem with hindsight and whether there was a “scintilla of inventiveness” was avoided by applying the matter of routine approach set out in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 286, and the “Cripps question” stated by the High Court in Alphapharm at 433 [53].
65		It did not follow that because a purportedly inventive person had not arrived at the alleged invention that an inventive step was present in the alleged invention as claimed. That was a false syllogism and not the appropriate test; nor did the authorities sought to be relied upon support any such proposition. Commercial success, or the lack of it, was not determinative of inventiveness. Where established, it was but one matter to take into account.
66		As to the respondent’s evidence, the delegate referred to 6 patent specifications, which specifications ranged over nearly 60 years (1942-2001). The specifications were relied upon by the respondent. The delegate referred to these prior art specifications, as the applicant conceded, not as being themselves common general knowledge, or as s 7(3) documents, but to show that the concept of using keyhole slots and mushroom studs or equivalents to join metal elements was well known. The respondent submitted that where such concept was disclosed in a range of specifications over a period of 60 years, in primarily Australian specifications in both lighting and other fields, it could readily be inferred that the concept was, as at the priority date, well known. So too, and contrary to the applicant’s submissions, it could be appreciated that screws used with keyhole slots achieved a friction fit when used for their ordinary purpose.
67		The respondent’s witness, Mr Stephen James Furzey, had wide experience in the lighting industry, as an industry participant, as a teacher and from sitting on relevant standards and advisory committees. He was a relevant skilled addressee in the field of the Application, giving evidence about the lighting industry in Australia as at the priority date. The respondent submitted that his evidence established that fastening mechanisms in use in the lighting industry in Australia in standard commercial luminaires before the priority date included the fastener and keyhole slot of the Application, although he did not refer to the rivets and studs as “mushroom-shaped studs”. Such fasteners and fixing methods were among those that have been used very widely in the lighting industry in Australia since at least 1983; key hole slotting in particular has been used to simplify in site installation and was a long established fixing method used in standard commercial luminaires at least since 1983.
68		Mr Furzey provided examples and illustrations of product catalogues and work instructions that he located from old catalogues he had kept and materials available before the priority date. These further exemplified the common use in luminaires of fastener and fixing mechanisms the same as and equivalent to the “mushroom-shaped stud [stalk and cap] … and corresponding keyhole shaped aperture” claimed in the Application. Each of the ALI Budget High Bay, the Regent, the SLA high bay reflector and the best-selling Thorn Popular Pack batten luminaire used keyhole slotting and at least pan head screws, that is, having a cap or mushroom head wider than the stalk. The Ecoindy High Bay used tabs, slots and punched holes, and pop rivets whilst the Concord used a variant of a keyhole slot fixing.
69		When Mr Furzey was subsequently shown the Application he recognised the description of the locating mechanism of claim 1 as describing the type of keyhole slot and screw fixing method he had described, noting that the description is of some kind of shoulder rivet. He recalled that he had installed in his garage since at least 1985 a Thorn Popular Pack fluorescent luminaire which used keyhole slots in the reflector. 
70		Both Mr Furzey’s evidence, as a person skilled in the field, and the prior art specifications established that the common general knowledge of a person skilled in the field included the fastener and fixing method of the Application and equivalents using pan headed screws, which could achieve friction fits at installation. Further, the previous Cronk patent encompassed within its description such known fasteners and fixing methods. Contrary to the identical evidence of the applicant’s witnesses, Mr King and Mr Creevey, the previous Cronk patent was not limited to the use of nuts and bolts.
71		The respondent submitted that it followed that a person seeking to solve the problem addressed by the Application would reasonably have been expected to try keyhole slots and mushroom studs (by whatever name) because such fasteners and fixing mechanisms were well known at the priority date and their design was likely to solve the problem. To try their use as a likely solution would have been a matter of routine.
72		The respondent submitted that the applicant’s reliance on the Ferguson patent applications was misconceived. First, the applicant indulged in speculation in asserting that Mr Ferguson (who was not a witness) was a relevant skilled addressee. Secondly, the assertion that the Ferguson application was an attempt to improve the previous Cronk patent misread the Australian Patent Office-provided details; they identified documents considered by the Office to be relevant art. Thirdly, although the specifications were not the previous Cronk patent, the Ferguson application stated that it aimed to provide an alternative construction to those luminaires. It provided for a multiple configuration reflector. Fourthly, there was no identification that the asserted problem of the Application was indeed a problem with which the Ferguson application was concerned, in particular that joining the sheets of the reflector was cumbersome and time consuming. Rather, the specification was particularly concerned to strengthen the spine formed by joining the sheets by use of a V-shaped member, a very different focus. Lastly, that Mr Ferguson did not propose the solution proposed by the Application but proposed a different invention simply did not address the relevant question directed to the alleged invention of the Application.
73		The respondent submitted that Mr King’s evidence was irrelevant. It was no evidence of commercial success of the claimed invention but simply that a batch of defective product —with too thick steel sheets — could not be sold at the discount he offered when he had attempted to drill out the fixing mechanism and replace it with nuts and bolts. This did not tell anything about the success of a product embodying any claim of the Application. There was no evidence from any licensed manufacturer of the Application, nor of industry acclamation, or of the success of a copy product.
74		Mr Creevey did not qualify as a skilled worker/addressee. It did not follow that because he was not personally aware as stated, the claimed invention of the Application had an inventive step. His limited lack of awareness was to be contrasted with the industry knowledge and experience of Mr Furzey and the fasteners and fixing mechanisms he described and illustrated.
75		In closing submissions, the respondent contended that the applicant had attempted to recast the invention and the Application as having a preliminary locating step, a special friction fit and then continuing on to the connectors to actually make the shape of the reflectors. This was not borne out by the body or the claims of the specification and indeed the Application was entirely silent on how to achieve what the applicant submitted were the key features of the invention.
76		The respondent submitted that what the Application described was the assembly of the sheets of the luminaire by one step and the Application did not disclose a separate location step and then a retention or connection step.
77		As to the friction fit, it was to be noted that the Application did not disclose to readers what was the advance and how to do it: it was clear that friction fit was rather just descriptive of the device and a natural consequence of what happened when there was a keyhole slot and a lug, stud or screw used as an engagement or a retainer piece for a keyhole slot. The absence of any description or detail as to the friction fit showed that it was not at the heart of, or an important aspect of, the invention. There was nothing to identify what would constitute a friction fit or what would not.
78		It followed, in the respondent’s submission, that the two major planks on which the applicant sought to distinguish what was the prior art or common general knowledge — first, the separate step of locating prior to connecting and, secondly, that the keyhole slots and mushroom studs had a particular friction fit — were both shown on the face of the specification itself not to be elevated to the degree of inventiveness or newness that the applicant suggested in his submissions.
79		The relevant question, the respondent submitted, was whether a non-inventive skilled worker, in all the circumstances, and with knowledge of the facts, would directly be led as a matter of course to try the invention as claimed in the expectation that it might well produce a solution to the problem. The respondent submitted it would have been a matter of routine to arrive at the proposed solution and reference was made to the evidence of Mr Furzey.
80		The documents before the examiner and the delegate were to show that there was no novelty as at 2002 with the concept of using a keyhole slot and a stud to achieve locating and fitting. The documents were useful because they demonstrated the breadth and the history of the use of such fixing and fastening locating mechanism over some 60 years. Mr Furzey’s evidence added specificity through the practical experience of a person working in the lighting industry in Australia before the priority date.
81		The respondent submitted that in light of the evidence it would be a matter of routine to try or use the mechanism set out in the Application with a view to seeking to solve the problem. It was to be noted that the reflector sheets were not claimed in any of claims 1 to 5 to have a particular thickness or be of any particular shape. Neither did the claims define an invention which required assembly or disassembly. Nor was there a claim that the double-arched luminaire had a variable reflector surface or arc. 
CONSIDERATION
82		In the circumstances of the Application, the evidence was, in my opinion, too slight to establish the applicant’s case. 
83		The applicant sought, through an affidavit of Mr Old, to rely on certain applications or granted patents having Mr John Ferguson as inventor. Mr Old drafted the specification of one of the applications. Mr Old otherwise says little on this topic. Mr Ferguson did not give evidence before me. 
84		It was put on behalf of the applicant that it was reasonable to conclude that while Mr Ferguson was turning his mind to improving Mr Cronk’s original invention from the point of view of convenience of assembly, it did not occur to Mr Ferguson to proceed in the manner proposed by the applicant.
85		On this evidence I am not persuaded to draw the inference for which the applicant contends in relation to Mr Ferguson’s patent. I am not persuaded that the problem referred to in Mr Cronk’s current application was a problem with which Mr Ferguson’s patent was concerned or that, therefore, anything is to be drawn from Mr Ferguson not proposing the solution proposed by Mr Cronk in his current application. 
86		Mr Ferguson was not called as a witness to say that he was faced with the problem which Mr Cronk’s application addresses and that he, Mr Ferguson, did not come up with that solution. No reason was proffered before me as to why, if that was Mr Ferguson’s opinion, that course could not have been taken.
87		The evidence of Mr King is also in my opinion too slight and insufficient to constitute evidence of the commercial success of the claimed invention. Mr King does not seem to have been involved as a retailer until 2006, some four years after the priority date. More importantly, the fact that his customers refused to purchase at a discount some defective reflectors as modified by Mr King provides an insufficient basis to infer commercial success of a product embodying a claim in the Application. I am not prepared to draw the inference that the behaviour of Mr King’s customers is probative of the commercial success of the product derived from Mr Cronk’s application. There was no direct evidence of commercial success.
88		As to Mr Creevey, his evidence amounted to no more than that until the introduction in 2002 of the product he was not aware that mushroom studs and keyhole shaped apertures were a possible interconnection device for a pair of thin resilient metal sheets. Mr Creevey did not qualify as a skilled worker or addressee. The evidence about him was no more than that he was the Chief Executive Officer of Accent Hydroponics Pty Ltd, a company which manufactured electrical products including light fittings predominantly for hydroponic use.
89		Mr Creevey’s knowledge may be contrasted with the industry knowledge of Mr Furzey, an expert called on behalf of the respondent. Mr Furzey was not cross-examined. No objection was taken to his evidence.
90		Mr Furzey began work in the lighting industry in the United Kingdom in 1965 and had worked in the lighting industry in Australia since 1983. He held the position of technical manager at Thorn Australia until 1996. He then became a technical manager with GTE Sylvania. In 1998 he was given the extra role of operations manager and held that additional role for 12 years. He continued to be technical manager. For the last 16 years he has been heavily involved in the design and development of all of the new products the company, now known as SLA, has produced, advising on product design and engineering through to product launch. His evidence was addressed to the position in 2002. 
91		Mr Furzey’s first affidavit was in two parts: the first part was written before he was provided with a copy of the applicant’s patent application 2008229901.
92		Mr Furzey in the first part of his first affidavit deposed to the main types of fasteners typically used in Australia in luminaires to connect, amongst other things, multiple sheets to each other to form the reflector. This included a keyhole slot designed to take a wide headed screw. Mr Furzey gave various examples predating the relevant time.
93		After reading the patent specification Mr Furzey recognised the description of the locating mechanism there described as describing the type of keyhole slot and screw fixing method he had described earlier in his affidavit noting that figure 4 depicted what appeared to him to be some kind of shoulder rivet rather than a screw.
94		Mr Furzey said that by reference to figures 3 and 4 he assumed that the “stud comprising a stalk and a cap” was a shoulder rivet to stand the head of the rivet off the supporting reflector 122 to allow the other reflector 102 to slide underneath the head, although the written description did not tell him this. In his experience the stud as described in the claim would not allow the reflector 102 to pass underneath the cap or head. He expressed the opinion that the description of the stud was unclear and, further, the claim did not tell him how to fix the stud (or studs) to one of the reflector sheets.
95		Mr Furzey also said that when the phrase “friction fit” was used in engineering, the interference tolerance was usually specified. The writer needed to tell the person making the reflector what the interference tolerances were. From the phrase “friction fit” and the description, Mr Furzey was not able to determine how to achieve a friction fit for the locating mechanism described in claim 1. In his opinion the phrase was unclear.
96		Mr Furzey also said that, in his opinion, the locating mechanism as described in each of the claims had significant engineering and practical problems. In order to achieve final location, the length of the stalk of the stud to the underside of the head of the stud must be greater than the thickness of the reflector sheet containing the keyhole slot. He believed that this was claimed in claim 4. This would not create a friction fit however. The sheet would just concertina up against the head of the rivet if sufficient force was applied.
97		In addition, Mr Furzey said, the width of the extension part of the keyhole slot must be just narrower than the diameter of the stalk of the studs so that the stud stuck in the slot extension. He believed that the fit between the sides of the extension and the stalk of the stud (the width) was claimed in claim 3. He believed that the two requirements (height or length of the stalk and width of the slot extension) were claimed together in claim 5. Having the width of the extension just narrower than the diameter of the stalk would cause another problem however, as there could be no certainty or repeatable reliability where along the slot extension the stud would stick. Thus there could not be sufficient certainty to locate the sheets correctly. The aim of making assembly of the luminaire more convenient would not be achieved.
98		Mr Furzey stated his opinion that the locating mechanism described in claim 1 was bad engineering. The solution claimed required at least two processes: first attempting to align the sheets using keyhole slots and then having to fix the sheets in place with some other mechanism (not disclosed in claim 1). The figures illustrated the use of two keyhole slots and four screws and two brackets. Mr Furzey said that just because you had located the keyholes and studs (using the terminology of the claims) did not mean that the reflectors were correctly aligned so that the screws could be fixed in place. He said that if he was presented with a new need to use keyhole slots to locate reflector sheets he would have come up with a one-step solution to align the reflectors and fix them at the same time.
99		I accept Mr Furzey’s evidence. In part it provides a context in which the Application should be read and understood. 
100		I accept the respondent’s submission that through Mr Furzey’s evidence and through the examples he gave of the documents he had located there was a range of fastener and fixing mechanisms which included keyhole slots and studs which achieved a friction fit which could be used, and had been used, by those skilled in the art working in the field of lighting in Australia before the priority date and being part of the knowledge available to all in the field and to be applied to the problem. It would be a matter of routine to try or use this mechanism with a view to seeking to solve the problem.
101		I accept that there are some distinctions to be drawn between some of the mechanisms in the illustrations given by Mr Furzey and the luminaires in evidence illustrative of Mr Cronk’s application. Similarly there are some differences between the material considered by the examiner and the delegate, being documents filed between 1942 and 2001, and Mr Cronk’s application. Nevertheless the essential point to which Mr Furzey deposed and which I accept is that in the lighting industry keyhole slots and mushroom studs were a well-known means of joining metal elements and obvious in the relevant sense.
102		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 keyhole shaped apertures. The Application has a locating mechanism but that mechanism is the mushroom-shaped lugs and the keyhole shaped apertures. Similarly, the friction fit is a consequence of the mechanism, being the mushroom-shaped stud or studs and the corresponding keyhole shaped aperture or apertures. It follows that the Application stands or falls by reference to the obviousness in the lighting industry of using keyhole slots and mushroom studs as a means of joining metal elements. It falls, for the reasons in [100]-[101] above.
103		For these reasons, the evidence does not establish that the invention, so far as claimed in any claim, when compared with the prior art base as it existed before the priority date of the claim involves an inventive step. That is, the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date.
CONCLUSION
104		The application is dismissed, with costs.

I certify that the preceding one hundred and four (104) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.	

Associate:

Dated:	10 February 2014