Clearview Towing Mirrors Pty LTD V Shane Robert Miles (2024) APO 11 (5 March 2024)

3/12/24, 10:17 AM Clearview Towing Mirrors Pty Ltd v Shane Robert Miles [2024] APO 11 (5 March 2024)
AustLII
Australian Patent Office
Clearview Towing Mirrors Pty Ltd v Shane Robert Miles [2024] APO 11 (5 March 2024)
Last Updated: 5 March 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Clearview Towing Mirrors Pty Ltd v Shane Robert Miles [2024] APO 11
Patent Application: 2020281026
Title: Elevated storage apparatus for storing or moving items
Patent Applicant: Shane Robert Miles
Opponent: Clearview Towing Mirrors Pty Ltd
Delegate: M. Umehara
Decision Date: 5 March 2024
Hearing Date: Written submissions completed on 2 January 2024
Catchwords: PATENTS - Section 59 – opposition to grant of a patent – clarity, support and clear enough and
complete enough disclosure – claims provide a workable standard and are clear – some claims lack novelty
and inventive step – opposition successful – applicant given two months to propose amendments to overcome
the issues – costs awarded
Representation: Patent attorney for the applicant: Ahearn Fox
Counsel for the opponent: S J Hallahan
Patent attorney for the opponent: Foundry Intellectual Property
https://www8.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/APO/2024/11.html 1/39
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020281026
Title: Elevated storage apparatus for storing or moving items
Patent Applicant: Shane Robert Miles
Date of Decision: 5 March 2024
DECISION
The opposition succeeds on the grounds of novelty and inventive step and fails on all other grounds.
Claims 1-9 lack novelty and claims 1-4 and 6-9 lack inventive step based on the later priority date of 7 July
2020. Given that novel and inventive claims remain, I consider that these issues can be overcome by
amendment.
I allow the applicant two (2) months from the date of this decision to propose appropriate amendments to
overcome the issues identified. The applicant may also wish to amend the patent request during this time to
remove the divisional status claim, which I have found to be invalid.
I award costs according to Schedule 8 against the applicant, Shane Robert Miles.
REASONS FOR DECISION
Background
1. Australian patent application no. 2020281026 (the opposed application) in the name of Shane Robert
Miles (the applicant) was filed on 1 December 2020. It is a divisional application of AU 2019208179 (the
parent application), which in turn is a divisional of AU 2017203158, which is, itself, a divisional of AU
2014201523 (the original application). The opposed application ultimately claims priority from three
Australian provisional applications: AU 2013900915 filed on 15 March 2013; AU 2013900938 filed on 18 March
2013; and AU 2020902327 filed on 7 July 2020. Both priority claims from 2013 were challenged in this
opposition and will be discussed below.
2. The original application was granted on 7 September 2017 while the parent and grandparent applications
lapsed for failure to gain acceptance. While nothing turns on it in this decision, AU 2022202540 was filed as a
further divisional application from the opposed application, was accepted on 12 October 2023 and a notice of
opposition was filed by the present opponent on 9 February 2024. Separately, AU 2021203462 and AU
2023248087 claim divisional status and priority from the parent application without incorporating the later
provisional application, AU 2020902327. However, I also note that a standard application, AU 2021203960,
claiming priority from AU 2020902327 was filed on 15 June 2021.
3. For simplicity, the family structure is as follows:
A diagram of a companyDescription automatically generated
4. The opposed application was advertised as accepted on 24 March 2022. A notice of opposition under
Section 59 of the Patents Act 1990 (the Act) was filed by Clearview Towing Mirrors Pty Ltd (the opponent) on
23 June 2022. The opposed application lapsed for the non-payment of the acceptance fees by the due date of
24 June 2022, which was rectified through section 223 provisions.
5. A statement of grounds and particulars (SGP) was subsequently filed on 23 September 2022. The SGP
identified manner of manufacture, novelty, inventive step, utility, sufficiency, best method, definition, support
and clarity as grounds of opposition.
6. The applicant requested withdrawal of the opposed application on 12 December 2022. However, the
Commissioner indicated that he would not consent to the withdrawal under section 141(1)(b) without the
applicant undertaking to not pursue, in any further applications (whether already filed or not), the same, or
substantially the same, invention as had already been opposed in this opposition. The applicant did not make
the undertaking. Consequently, this opposed application, along with divisional applications AU 2022202540
and AU 2023248087, remains on foot, as well as the standard application AU 2021203960 claiming priority
directly from the later provisional application AU 2020902327.
7. The evidence in support (EIS) was filed on 3 February 2023, consisting of a declaration by Jason Mark
Oliver dated 3 February 2023 (Oliver), accompanied by annexure JO-A.
8. On 1 March 2023, the applicant filed a post-acceptance amendment to the claims under section 104, which
was allowed on 20 July 2023 without any opposition. Further references to the specification in this decision
relate to the specification as amended.
9. The opposed application entered a state of lapse on 14 March 2023 for the non-payment of the renewal
fee. This was paid on 4 April 2023, within the grace period provided by Regulation 13.6(2).
10. No evidence in answer was filed and the matter was set for hearing by written submissions. The
submissions were completed on 2 January 2024. The opponent’s submissions in support pressed novelty,
inventive step, clear enough and complete enough disclosure, support and clarity.
Onus and standard of proof
11. The opposed application was filed after 15 April 2013 and is governed by 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.
12. The onus rests with the opponent to satisfy me, on a balance of probabilities, that a ground of opposition
to the grant exists. Under subsection 60(3A), if I am satisfied, on the balance of probabilities, that a ground of
opposition to the grant of a patent exists, I may refuse the application. I note, however, that, under subsection
60(3B), I must not refuse an application without giving the applicant a reasonable opportunity to amend the
relevant specification to remove any grounds of opposition.
The specification
13. The specification includes 26 pages of written description, followed by 12 claims amended after
acceptance and 19 pages comprising 29 figures.
The description
14. The first paragraph states that the invention relates to “elevating storage apparatus for storing or moving
items”. The invention is said to be particularly applicable to the type of apparatus known as “fridge slides”
typically used in four-wheel-drive vehicles, which support a portable refrigerator and allows it to be moved
between a stowed position within the vehicle to an accessible position outside the vehicle. The invention is
said to also have application to storage containers other than portable refrigerators, specifically noting:
“... while the invention will be described with particular reference to portable fridges, it will be appreciated that
the invention may also have application to storage containers other than portable fridges such as boxes for
storing canned food or dry food or tools and spare parts or for mounting a portable kitchen bench or stove and
the like.”[1]
15. The third paragraph describes the applicant’s previous work which is also related to a fridge slide for four-
wheel-drive vehicles. In this previous work, in addition to the horizontal sliding action between the stowed and
access positions, an additional action to lower the platform to a second access position at a lower height was
added. Whilst this addition was popular among the four-wheel-drive enthusiasts, the applicant had observed
that older persons did not have the strength to operate it. Against this background, the specification states:
“With that in mind, the present invention is aimed at providing fridge slides and other storage apparatus which
requires less strength to use and are therefore more desirable for some persons than manually operated
apparatus.”[2]
16. A broad concept of the invention apparatus is described as including:
“a pair of spaced apart slide assemblies for supporting article support means therebetween for longitudinal
movement between a stowed elevated position above an obstacle and a withdrawn elevated position forward
of the obstacle;
linkage means connecting the article support means to the slide assemblies which enable the article support
means to be raised and lowered between substantially vertically aligned withdrawn and accessible positions,
and
control means for selectively positioning the article support means relative to the slide assemblies.”[3]
17. With respect to each of these features identified above, the specification provides the following:
- Each slide assembly may include an outer support and an inner slide assembly or a compound slide
assembly;[4]
- The slide assemblies may be adapted for independent connection to the article support means or they may
form part of a base frame;[5]
- The article support means may be a tray, supporting frame or the base of the article to be stowed;[6]
- The inclusion of powered drive means, such as powered actuators, is preferred for moving the article support
means between the raised and lowered positions.[7]
- The drive means may include a linear actuator, a telescopic ram assembly or a gear device;[8]
- The linkage means may utilise scissor- or pantograph-type mechanisms interconnecting the article support
means and the inner slide assemblies;[9]
18. The specification goes on to describe various features that may be present in specific configurations. The
description of complete embodiments are provided with reference to the drawings: Figures 1-4 illustrate one
form of an elevated storage apparatus utilising fixed upright carriers; Figures 5-9 illustrate an alternative
embodiment with forward pivoting support assemblies; Figures 10-16 illustrate another embodiment with a
scissor-type mechanism; Figures 17-26 illustrate a powered embodiment having a parallelogram-style linkage
assembly; and Figures 27-29 illustrate another powered embodiment with a scissor lift linkage assembly.
These embodiments are described in detail over pages 15-26 of the description.
19. The first three embodiments take advantage of energy stored within the support assemblies to reduce the
effort required for lowering and raising a relatively heavy article supported on the tray. For example, the
telescopic support assemblies can accommodate energy storage means or it may be connected between the
adjacent links in the scissor mechanism.[10]
20. The latter two embodiments employ powered means to lower and raise the tray. A pair of linear actuators
are attached to one end of the parallelogram or scissor links, driving the tray attached to the opposite end of
the links.[11] The links for the powered embodiments have extension pieces to allow manual operation when
power for the linear actuators is not available.[12]
21. With respect to the specific embodiment as depicted in figures 27-29, which is the subject of the claims,
the specification provides the following explanations:
the scissor-type linkage mechanism comprises two spaced apart scissor-linkages 261, 262, 263, 264, one pair
on each side of the apparatus support means 231;[13]
each scissor link 261, 262, 263, 264 is connected to the apparatus support means 231 by a pivot pin 265 and
to the slide assembly 269 by way of a wheel (not shown);[14]
the scissor links 261, 262, 263, 264 extend upwardly beyond the slide assembly by way of extension pieces
(not labelled);[15]
the linear actuators 238 are mounted between the extension pieces (not labelled) from the scissor links 261,
263 and a lug 274 welded to the slide assembly 269.[16]
A drawing of a deviceDescription automatically generated
A drawing of a scissor liftDescription automatically generated
The claims
22. The specification as amended includes a total of 12 claims. Independent claims 1, 7 and 9 read as follows:
1. Elevating storage apparatus, including:
a pair of spaced apart slide assemblies forming part of a base adapted to be mounted on a
surface in a vehicle;
article support means supported by or between said spaced apart slide assemblies for
longitudinal movement between an elevated stowed position in or on the vehicle and a
withdrawn (or extended) elevated access position beyond the vehicle;
linkage means connecting the article support means to the slide assemblies so as to enable the
article support means to be raised and lowered relative to the spaced apart slide assemblies
between the elevated access position and a lowered access position beyond the vehicle;
wherein said linkage means includes two spaced apart scissor type linkage mechanisms
connecting respective opposite sides of the article support means to respective opposite ones of
the spaced apart slide assemblies and arranged to support said article support means in a
substantially horizontal attitude between said elevated access position and said lowered access
position;
powered drive means operatively connected to said pair of slide assemblies and said article
support means and arranged to cause movement of said article support means relative to said
pair of slide assemblies between said elevated access position and said lowered access position
and vice versa;
wherein said powered drive means includes two spaced apart linear actuators, one of said linear
actuators being operatively connected to one of said spaced apart scissor type linkage
mechanisms and the other one of said linear actuators being operatively connected to the other
scissor type linkage mechanism such that actuation of said linear actuators causes said article
support means to move between said elevated access position and said lowered access position
and vice versa, and wherein one of said linear actuators is mounted adjacent one slide assembly
or extends substantially above one slide assembly and the other linear actuator is mounted
adjacent the other slide assembly or extends substantially above the other slide assembly; and
control means in communication with said linear actuators for controlling operation thereof.
7. Apparatus for storing and moving one or more items, for example, a portable fridge mounted in a vehicle,
the apparatus including:
a first part including a base or frame adapted to be mounted on a surface in or on a vehicle;
a second part including a platform or frame adapted to support the item to be stored and moved;
said second part being operatively connected to said first part for substantially linear movement of said
platform or frame at one level relative thereto from a retracted position within the vehicle or on the vehicle to
an extended position at said one level substantially beyond or outside the vehicle and for movement from the
extended position at the one level to a down position at a lower level;
powered drive means operatively connected to said base or frame of said first part and said platform or frame
of said second part so as to cause movement of said platform or frame of said second part from said one level
to said down level and/or vice versa;
wherein said second part is connected to said first part by a pair of spaced apart scissor type linkage
mechanisms, each of said scissor type linkage mechanisms including two pivotally connected arms and
wherein said powered drive means includes a pair of powered linear actuators and one part of the respective
linear actuators is operatively connected to said first part and the other part of said linear actuators is
operatively connected between respective ones of said pivotally connected arms whereby actuation of said
linear actuators causes said second part to move between the extended position at the one level and the
down position at the lower level and vice versa, and wherein one of said linear actuators is mounted adjacent
one slide assembly and the other linear actuator is mounted adjacent the other slide assembly.
9. Apparatus for storing and/or moving one or more items, for example, a portable fridge mounted in a
vehicle, the apparatus including:
a first part including a base or frame adapted to be mounted to a vehicle against movement relative thereto
and a second part including a platform adapted to support the one or more items being stored and/or moved;
said second part being operatively connected to said first part by two spaced apart extendable tracks
connected to said first part and said second part so as to allow substantially linear movement of said platform
relative to said first part from a retracted or stowed position at one level within the vehicle to an extended
position at said one level substantially beyond the vehicle; and
said platform being operatively connected to said spaced apart extendable tracks by two spaced apart scissor
type linkage mechanisms so as to allow movement of said platform from the extended position at the one level
to a second position at a lower level, and
a first powered actuator operatively connected to one of said extendable tracks and one of said scissor type
mechanisms and a second powered actuator operatively connected to the other extendable track and the
other scissor type mechanism so as to cause movement of said platform from the extended position at the one
level to the second position at the lower level and vice versa, and wherein one of said linear actuators extends
substantially above one of said spaced apart extendable tracks and the other linear actuator extends
substantially above the other one of said spaced apart extendable tracks.
23. Appended claims 2-6, 8 and 10-12 define additional features such as the arrangement of slide supports,
points of connection between the scissor type linkage mechanisms and the powered drive means, inclusion of
an actuating lever, inclusion of stowable handle, and more specific arrangements of parts. The full claim set is
in the annex to this decision.
Person skilled in the art
24. The specification is to be construed through the eyes of the person skilled in the art being a notionally
non-inventive skilled worker aware of the common general knowledge in the relevant field. In KD Kanopy
Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the person skilled in the art as:
“... a person acquainted with the surrounding circumstances of the state of the art and manufacture at the
relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may
often work in the art with which the invention is connected.”[17]
25. In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose
knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is
obvious.”[18]
26. Finkelstein J went on to say at [70]-[72] that the hypothetical skilled person works in the field with which
the invention is connected and is a non-inventive person, or team, likely to have a practical interest in the
subject matter of the invention.
27. The specification is directed to an apparatus for storing items in vehicles which can be moved to an
externally accessible position. Accordingly, the skilled person, or team, would be expected to have a practical
interest in this field, including the development process and its use. While neither party provided a
characterisation of the relevant person skilled in the art, on the face of the specification, there is little doubt
that the notional person skilled in the art would be a team including individuals with expertise in, and
knowledge of, mechanical engineering. The team would have particular interest in developing new
accessories to be fitted into existing vehicles.
28. The sole declarant in this matter is Jason Mark Oliver, a retail sales manager for vehicle accessories with
prior experience in the development of vehicle storage systems, and who currently owns a fabrication
business designing new products to mount compressors into four-wheel drive vehicles.[19] The opponent
submitted that Mr Oliver is a person skilled in the art.[20] Mr Oliver has confirmed that he has no financial
interest in either party and agreed to be bound by the Expert Evidence Practice Note of Federal Court of
Australia.[21]
29. Despite Mr Oliver’s confirmations, the applicant raised questions as to the impartiality and qualifications of
Mr Oliver.[22] The applicant noted that Mr Oliver has worked on the development of products to compete with
the applicant’s products, that Mr Oliver’s company has been bought out by the opponent, and that Mr Oliver is
not an engineer himself. For these reasons, the applicant submitted that Mr Oliver is not a relevant person
skilled in the art.
30. I accept that the identity of the expert witness and their independence may be a relevant consideration
when assessing the weight that can be given to their evidence. However, these are not the only considerations
in that assessment. Other considerations may include the nature and relevance of their experience and
evidence, and whether the evidence is provided from the point of view of the person skilled in the art. Taking
these broader considerations into account, I do not consider the issues identified by the applicant justify the
exclusion of evidence from Mr Oliver, even though it may necessitate a detailed consideration as to the weight
it can be given in some circumstances.
31. The applicant submitted that Mr Oliver, by himself, does not represent a person skilled in the art. However,
I consider Mr Oliver has a background that enables him to provide evidence in relation to what a person skilled
in the art knew, or would have done, at the relevant date. For instance, Mr Oliver had worked on the
development of a competing product with the support of engineers and fabricators prior to 2013.[23]
Furthermore, the applicant concedes that Mr Oliver would be aware of different fridge slides which have been
in the marketplace since 2008.[24]
Construction
32. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v
Alphapharm Pty Ltd:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they
appear. ... While the claims define the monopoly claimed in the words of the patentee’s choosing, the
specification should be read as a whole ... It is not permissible to read into a claim an additional integer or
limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which
are unclear may be defined or clarified by reference to the body of the specification.” [25]
33. I also note the comments of Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a
generous measure of common sense. The Court must place itself in the position of a person skilled in the
relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole,
in the context of the specification and in light of the prevailing common general knowledge and state of the
relevant art at the priority date.”[26]
34. The claims are to be construed in light of the specification as a whole, but the plain and unambiguous
meaning of a claim cannot be varied or qualified by reference to the body of the specification.[27] Further, a
construction according to which the invention will work is to be preferred to one in which it may not.[28]
35. The Full Court in Airco Fasteners Pty Ltd v Illinois Tool Works Inc.,[29] recently reiterated the principle that
experts can give evidence on the meaning which those skilled in the art would give to technical or scientific
terms and phrases and on any unusual or special meanings that would be given by the skilled addressee to
words which might otherwise bear their ordinary meaning,[30] and the Court is to place itself in the position of
some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the
time.[31] However, it is for the Court, not for any witness, however expert, to construe the specification.[32] A
similar approach is taken in matters before the Commissioner.
36. I note that the only evidence in this proceeding was given before the proposal of the amendments to the
claims. However, nothing turns on the exact claims shown to Mr Oliver as he only expressed general
difficulties in following the claims and giving clear interpretation to them.[33] He considered the language of the
claims to be confusing, inconsistent and repetitive.[34] However, patent claims are rarely written in a normal
idiom and this alone does not make any term, phrase or passage therein necessarily unclear. As noted above,
experts are not required to engage in efforts to construe the claims.
37. The value of expert evidence comes from their ability to provide their views on technical or scientific terms
and phrases, and on any unusual or special meanings that would be given by skilled addressees to words
which might otherwise bear their ordinary meaning. Unfortunately, the opponent did not put Mr Oliver to this
task and the applicant did not provide any submissions in relation to the construction of any claim or phrase.
Consequently, I have no evidence that any of the terms have special meaning in the art.
Operatively connected
38. The only phrase Mr Oliver was asked to comment specifically on was “powered drive means operatively
connected to said pair of slide assemblies and said article support means” in claim 1. Mr Oliver answered that
he was unsure about the meaning of this and said “it is not one that I would normally use.”[35] He continued on
to say:
“It could mean that the parts are physically connected (i.e. with nuts and bolts), or that the powered drive
means is connected to a power source. In the context of claim 1, it appears more likely to me that the former
interpretation would be more appropriate.”[36]
39. It is clear to me that Mr Oliver did not consider “operatively connected” to have any technical meaning in
the art. From his statement, I understand that Mr Oliver considered the powered drive means to be directly
fixed to the slide assemblies and article support means with means of attachment, such as nuts, bolts and the
like.
40. Mr Oliver was only asked to comment on the first portion of this feature in claim 1.[37] Given the passage
presented to Mr Oliver in isolation and his discomfort with patent drafting styles, his answer seems a
reasonable one. However, the claim continues on to define the powered drive means being arranged to cause
movement of the article support means between the raised and lowered positions. Claim 1 also defines that
the linear actuators of the powered drive means are mounted adjacent to, or extend substantially above, the
slide assemblies and are operatively connected to the scissor type linkage mechanisms to cause the article
support means to move between the raised and lowered positions.
41. The adjectives “operative” and “connected” are defined in the Macquarie Dictionary as “operating, or
exerting force or influence” and “joined together”, respectively.[38] The ordinary meaning of the feature is that
the components are joined in a manner that allows for the desired operation of the apparatus. With reference
to the present claims, the desired operation is the movement of the article support means between the raised
and lowered positions.
42. I do not understand the claim to be requiring that the powered drive means is directly fixed to each of the
slide assemblies, article support means and scissor type linkage mechanisms. If the powered drive means
was directly fixed to all three parts simultaneously, I cannot envisage any arrangement where the article
support means would be able to move between the raised and lowered positions. Rather, I understand it to be
defining the operational relationship between the parts and the desired effect to be achieved.
43. Firstly, the powered drive means is operatively connected to the collective unit of slide assemblies and
article support means. Separately, the powered drive means is operatively connected to the scissor type
linkage mechanisms to also cause movement of the article support means, relative to the slide assemblies,
between the raised and lowered positions. Consequently, the claim is not defining any mode of connection
between the powered drive means and the article support means by itself.
44. Secondly, the required outcome of the operative connections in both instances is defined in claim 1 as
being to cause movement of the article support means, relative to the slide assemblies, between the raised
and lowered positions. In contrast to the use of other terms such as “connecting”, “mounted” and “connected
to” otherwise appearing in the claims, the term “operatively connected” defines a functional relationship
between the relevant parts. This is similar to “pivotally connected”, also used in the claims, which defines a
connection with the function that a component should pivot in relation to the other component to which it
connects, either directly or indirectly.
45. I do not consider the various parts being “operatively connected” to one another to require only a direct
connection with no more than nuts, bolts and the like, as suggested by Mr Oliver. Instead, I consider the term
“operatively connected” to embrace both direct and indirect connections that achieve the stated outcome.
Depending on the desired operation, a direct connection may suffice. For example, in claim 9, the platform
(equivalent to the article support means in claim 1) is operatively connected to the frame by extendable tracks
(equivalent to slide assemblies in claim 1) to allow substantially linear movement of the platform from a stowed
position to an extended position substantially beyond the vehicle. While an extendable track would not be
considered a means of connection like a nut or bolt, the required relationship between the frame, the
extendable tracks and the platform is made clear.
46. The opponent submitted that:
“If a direct connection is not required, then the extension of this logic is that the control means would also be
‘operatively connected’ to a fastener that fastens the base of the apparatus on the vehicle’s surface”[39] (italics
in original)
If the required operation is that the apparatus be fastened to a vehicle, then the control means and fastener
are operatively connected via the rest of the apparatus to achieve this effect. However, this relationship
between the control means and fastener is not one that a person skilled in the art need be reminded of, nor do
they need to have the operational relationship between each and every component defined.
The apparatus
47. Independent claim 1 is directed to an elevating storage apparatus while independent claims 7 and 9 are
directed to apparatuses for storing and moving articles or items. These claims are not specific to what is
stored but describe its movement in relation to a vehicle. More specifically, the article or item is stowed in or
on a vehicle and accessed by being pulled out to a position beyond the vehicle, and then lowered.
48. The apparatus is adapted to be mounted on a surface in or on a vehicle in claims 1 and 7, or simply
mounted to a vehicle in claim 9. As noted by the opponent, the vehicle itself is not encompassed by the claims
and the features that make the apparatus compatible for mounting in, on, or to a vehicle may also encompass
apparatuses mounted in ways other than that specifically described in the opposed application.[40] That is, the
apparatus is made suitable for mounting to a vehicle but is not necessarily limited to where it is situated.
49. The apparatus is not specific to what article or item it holds. Claim 1 is wholly silent on what the article
may be. While claims 7 and 9 give a portable fridge mounted in a vehicle as an example of the item, these
claims are not limited to such an embodiment.
50. The opponent’s submissions suggest a portable fridge “may weigh as much as 50 kg.”[41] Mr Oliver did not
provide any evidence in relation to the weight of any particular item, but did note there were safety issues to
be considered when moving heavily laden fridges.[42] While the apparatus must necessarily include all of the
claimed components, I would expect that the engineering effort required for moving a light item and a heavy
item would differ significantly. However, this does not appear in the evidence.
51. Although the three independent claims differ slightly in the apparatus they define, there are common
features:
- a first base or frame adapted to be mounted to a vehicle (frame);

- an article support means or a second base, platform or frame for holding an article or item (article support
means);
- means enabling linear movement of the article support means (slide assemblies);
- scissor-type linkage mechanisms for lowering and raising the article support means; and
- powered drive means enabling movement of the article support means between the raised and lowered
positions,
the powered drive means comprises two spaced apart linear actuators; and
the linear actuators are mounted adjacent to, or extend above, the slide assemblies.
52. Both parties made their submissions in relation to a generalised invention referring to the above features.
There appears to have been little doubt that the apparatus defined in all three independent claims referred to
the same invention, albeit with slight differences such as the addition of a control means in claim 1 and a
reference to extendable tracks rather than slide assemblies in claim 9. I will also refer to the general invention
unless there is a particular difference in a given claim that requires specific discussion.
Clarity
53. As provided for in section 40(3) of the Act, the claims must be clear and succinct. As cited with approval in
Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, it was noted in Flexible Steel Lacing
Company v Beltreco Ltd:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard
suitable to the intended use ... The consideration is whether, on any reasonable view, the claim has meaning
... In determining this, the expressions in question must be understood in a practical, common sense manner
... Absurd constructions should be avoided ... and mere technicalities should not defeat the grant of
protection...”[43]
54. In particular, the claims are considered to provide a workable standard if a third party could, without
difficulty, determine whether an act falls within the scope of the claim, as noted in Monsanto Company v
Commissioner of Patents:
“There will, I think, in the present case be no difficulty in a third party ascertaining whether or not what he
proposes to do falls within the ambit of the claim ... For these reasons I do not regard the use of the adjective
‘substantial’ as giving rise to any uncertainty.”[44]
55. More recently, Beach J said in Meat & Livestock Australia Limited v Cargill, Inc:
“A valid claim is required to define with sufficient certainty the scope of the monopoly being claimed (s 40(3)).
Given that a patent is a public instrument, the claim must be defined in such a way that it is not reasonably
capable of being misunderstood so that others know the ‘exact boundaries of the area within which they will
be trespassers’: Electric & Musical Industries Ld v Lissen Ld (1939) 56 RPC 23 at 39 per Lord Russell of
Killowen. A claim will lack clarity if a person skilled in the relevant art cannot ascertain whether what he
proposes to do falls within the claim’s ambit.”[45]
56. After considering the other authorities cited above, Beach J went on to say:
“Finally, if a claim is clear, it is not to be made obscure or treated as obscure by taking elements of a preferred
embodiment not referred to in the claim and artificially creating obscurity.”[46]
57. The gist of the opponent’s submissions is that the claims are imprecise, that the use of inconsistent
language makes the intended scope of the claims uncertain and that they do not provide a workable standard
for how the various parts interrelate.[47] Of particular concern to the opponent was the term “operatively
connected”.[48] The opponent submitted as follows:
“Claim 1 recites a powered drive means operatively connected to said pair of slide assemblies and said article
support means, that the powered drive means includes two spaced apart linear actuators, and then, later in
the claim, that one of said linear actuators being operatively connected to one of said spaced apart scissor
type linkage mechanisms and the other one of said linear actuators being operatively connected to the other
scissor type linkage mechanism. Thus, the claim requires the powered drive means to be ‘operatively
connected’ to the slide assemblies, the article support means and the scissor type linkage mechanisms.”[49]
(emphasis in original)
58. I disagree with the opponent. As discussed in relation to the construction of the claims, the collective of
the drive means, slide assemblies, article support means and scissor-type mechanisms are variously
connected in a manner that allows for the operation of the apparatus such that the article support means can
move between the raised and lowered positions.
59. I acknowledge that Mr Oliver did express difficulties in comprehending the claims, particularly noting that
he considered the language of the claims to be confusing, inconsistent and repetitive.[50] However, as noted
above, experts are not required to engage in efforts to construe the claims. I have construed “operatively
connected” to mean that the parts are connected in a manner that allows for the desired operation of the
apparatus, and the term itself is clear.
60. The applicant did not provide any submissions on the term “operatively connected”. However, the onus
rests with the opponent to establish its case.
61. The opponent also raised concerns over inconsistency between the claims and the drawings.[51] However,
as noted by Beach J, it is not reasonable to artificially create obscurity by comparing the preferred
embodiment depicted in the drawings to the claims, which may define broader or alternative embodiments. It
is the claims that define the scope of the invention and it would be importing a gloss to try to limit the claims,
or to introduce obscurity where none existed before, by attempting to align the claims to the preferred
embodiments.
62. The opponent further submitted that having three independent claims with a mixture of common and
different features results in the claims being unclear and not succinct.[52] I disagree. On the one hand, there
would be redundancy if the three independent claims were absolutely consistent with one another and
therefore identical in scope. On the other hand, without features common to all three independent claims, the
claims would not be unified. Consequently, I do not consider that simply having independent claims with
differing scope necessarily makes the claims unclear or not succinct.
63. As noted above, claims are not required to be drafted precisely. While the use of inconsistent language
throughout the specification and within the claims is not ideal, it can be resolved in a common-sense manner.
The opponent has not pointed to any particular inconsistency that would render the claims so unclear as to be
devoid of meaning. The fact that the drafting of the claims could be improved upon does not render the claims
unclear.
64. The opponent has not established its case on clarity.
Clear enough and complete enough disclosure and support
65. Section 40, as amended by the Raising the Bar Act, relevantly requires that the complete specification
disclose the invention in a manner that is clear enough and complete enough for the invention to be performed
by a person skilled in the relevant art (section 40(2)(a)) and that the claim or claims be supported by matter
disclosed in the specification (section 40(3)).
66. The relevant considerations with respect to each of these grounds are well understood and I do not
propose to repeat them at length.[53] It suffices to say that to comply with section 40(2)(a) it is necessary that
the invention be able to be performed across the full scope of the claims without undue experimentation,[54]
and to comply with section 40(3) the claims should correspond to the technical contribution to the art disclosed
in the specification.[55]
Opponent’s submissions
67. The gist of the opponent’s submissions with respect to both section 40(2)(a) and section 40(3) centres
around the term “operatively connected” lacking enablement across its full scope.[56]
68. The opponent submitted that the specification is “silent regarding how to produce workable configurations
of elevating storage apparatus other than a few specific configurations shown in the Figures.”[57] The
opponent submitted that the opposed application, at best, provided a technical contribution in the form of a
single, specific configuration of an elevating storage apparatus having a scissor-type linkage mechanism, as
shown in the drawings.[58]
69. The opponent stressed that Mr Oliver had provided evidence on “the engineering challenges associated
with producing working versions of elevating storage apparatus, with significant industrial design and trials
being required.”[59] Mr Oliver had stated that factors such as engineering geometry, mounting configurations,
and the locations and manner in which the component parts were joined together all affected the functionality
of the assembled apparatus and gave an example of his experience developing a similar apparatus during
which many prototypes were deemed “non-working” for reasons of insufficient mechanical advantage
(mounting configurations), components coming into contact with each other during use (engineering
geometry), friction issues and unacceptable wear and tear on the parts (how the components were put
together).[60] The opponent submitted that “Mr Oliver’s evidence clearly indicates how challenging it was to
develop elevating storage apparatus that were suitable for release on the market.”[61]
70. In the opponent’s opinion, the claims, by not being limited to any particular arrangement between the
powered drive means and the slide assemblies, article support means and scissor-type linkage mechanisms,
went beyond the disclosure. The opponent also submitted that Mr Oliver’s difficult experience with his
development of a fridge slide with a scissor lift demonstrated the undue burden that the person skilled in the
art would face in trying to work the invention claimed.[62]
Applicant’s submissions
71. The applicant did not provide any submissions in relation to section 40(2)(a) but provided a “Support
Table” giving a list of references to the specification where each feature is said to be disclosed for section
40(3).
72. The applicant also referred to the Explanatory Memorandum to the Intellectual Property Laws Amendment
(Raising the Bar) Bill 2011:
“Overseas law generally requires there to be a relationship between the claims and the description, and
between the claims and any document from which priority is being claimed. This is expressed by the
requirement that a claim be ‘supported by’ or ‘fully supported by’ the description. Broadly speaking, the terms
‘support’ and ‘full support’ pick up two concepts:
there must be a basis in the description for each claim; and

the scope of the claims must not be broader than is justified by the extent of the description, drawings and
contribution to the art.”[63] (references not included)
73. The applicant noted that “the term used in section 40(3) is ‘supported by’ not ‘fully supported by’.”[64] The
applicant stressed that the Explanatory Memorandum reiterates that “There must also be consistency, or
basis, for each claim in the description.”[65]
74. In the “Support Table” annexed to their submissions, basis for each feature of each claim is provided. For
example, the support for the feature of “elevating storage apparatus” is given as “Elevating storage apparatus
is the title of the invention and appears many times throughout the
specification in the description and the claims.”[66] Page references are given for each feature of each claim
for the opposed application.
Consideration
75. Simply finding literal references to the individual features appearing in the claims does not necessarily
mean that the claimed combination of features as a whole has been enabled by the specification. A feature
described in an unrelated embodiment cannot enable this feature being introduced into another embodiment
which is comprised of a different collection of parts or which works differently.
76. On my construction, the term “operatively connected” embraces both direct and indirect connections that
achieve the stated outcome. The opposed application provides a detailed description of an elevating storage
apparatus having scissor type linkage mechanisms having powered drive means operating the lowering and
raising of the article support means.[67]
77. The specific embodiment as shown in Figures 27-29 comprises, on each side of an article support means,
a linear actuator pivotally mounted to an extension piece from the scissor type mechanism and a lug welded to
the frame. The extension pieces extend substantially above the slide assemblies. Each pair of the scissor type
linkage mechanisms are connected to the article support means and a slide assembly by a pivot pin on one
arm and a wheel on the other arm, which rotates on a pivot pin and rolls in a slide slot in the article support
means or slide assembly, respectively. This is the embodiment that the opponent submitted as providing a
technical contribution.
78. Although the opponent focused on the breadth of “operatively connected”, which admittedly is broad, the
claims also define that the powered drive means includes two spaced apart linear actuators, one being
mounted adjacent to or extending substantially above each of the slide assemblies. With the limitation on the
requirement for a pair of linear actuators and their relative location with respect to the slide assemblies and the
requirement for the operation of the powered drive means to cause movement of the article support means
between the raised and lowered positions, the possible permutations of arrangement for each component are
reduced from the “myriad of theoretical configurations”[68] as suggested by the opponent.
79. The physical relationships between the various components are otherwise defined in the claims. The
claims are therefore not reliant on mere desiderata for a result to be achieved by a collection of random parts
to be put together in a random fashion, or through the use of an indefinite number of unknown components.
80. The specification describes a range of apparatuses comprising a series of mechanical components which
work together in a particular way. The specification explains which components are connected to which other
components, and what results are expected from their interaction. The specification does not suggest that the
invention resides in the particular means of attachment as shown in the figures.
81. When asked if the specification contained enough information to produce elevating storage apparatus of
the claims, Mr Oliver responded thusly:
“Figures 27 to 29 in [the opposed application] would give a good starting point for the design of a working
prototype of a powered fridge slide with scissor arms. However, without physically making that prototype and
testing it, I would not know whether it would be capable of lifting/lowering a portable fridge. I expect that further
trials (such as those I describe above and which I note are not described in [the opposed application]) would
be required in order to produce a working prototype.”[69]
82. Mr Oliver’s caution comes from his own experiences manufacturing another fridge slide in 2013 which
incorporated a scissor lifting mechanism into the sliding arms of a straight-out fridge slide.[70] Unfortunately, Mr
Oliver does not provide any evidence in relation to the technical nature of his challenges. Instead, the
problems identified by Mr Oliver, such as engineering geometries, mounting configurations, and joining of
component parts for optimum performance are part and parcel of mechanical engineering in general.
83. I have no evidence to point to any specific challenge that would involve inventiveness and undue burden
for a person skilled in the art to resolve. Furthermore, Mr Oliver’s evidence was that there were many
prototypes required to overcome issues such as unacceptable wear and tear. His evidence was not to the
effect that a fridge slide with scissor arms could not be made unless some special material was used, or some
ingenious selection of components was made.
84. I also note that a specification need only provide a workable standard, not a guarantee of a commercially
viable product. While wear and tear may be of concern in the commercial setting, the claims are not limited to
a perfectly engineered embodiment of frictionless operation or a particularly long working life. Where the
invention does not lie in overcoming some particular engineering problem of parts wearing out during use, it is
unreasonable to expect the specification to provide details on optimal geometries for every part.
85. It follows that the claimed invention is able to be performed across the full scope of the claims without
undue experimentation. The opponent has not established its case on section 40(2)(a) or section 40(3).
Priority
86. In TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 (TCT Group), Burley J outlined the relevant
principles concerning priority dates of divisional applications:
“Section 43(1) of the Patents Act provides that each claim of a specification must have a priority date. If s
43(2A) applies to a claim, the priority date is the date determined under the Regulations: s 43(2)(a). Otherwise
the priority date of a claim is the date of the filing of the specification: s 43(2)(b).
Section 43(2A) provides for a presently relevant exception:
(2A) This subsection applies to a claim if:
(a) prescribed circumstances apply in relation to the invention defined in the claim; and
(b) a prescribed document discloses, or a prescribed set of prescribed documents considered
together disclose, the invention in the claim in a manner that is clear enough and complete
enough for the invention to be performed by a person skilled in the relevant art.
Chapter 3, Pt 1, Div 2 of the Regulations determines the priority date of a claim for s 43(2)(a) of the Patents
Act: reg 3.12(1). Regulation 3.13D(4)(a), which falls within this part of the Regulations, provides that a
prescribed circumstance within s 43(2A) of the Patents Act includes where the ‘specification containing the
claim that defines the invention was filed for (i) a divisional application under s 79B’.
By reg 3.13D(4)(b), ‘the document mentioned in paragraph 1(b) is a prescribed document’. Paragraph (1)(b)
says ‘the specification mentioned in subsection 79B(1) of the Act (the earlier specification) clearly discloses
the invention in the claim’.
It follows that to be a prescribed document, the earlier specification (here, the parent) must (a) be an earlier
specification mentioned in s 79B(1) of the Patents Act; and (b) ‘clearly disclose’ the invention in the claim.
Regulation 3.12(4) provides:
In this Division, a document, or a set of documents considered together, clearly discloses an invention if the
document, or set of documents, discloses the invention in a manner that is clear enough, and complete
enough, for the invention to be performed by a person skilled in the relevant art.”[71] (emphasis in original)
87. In ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 (ToolGen), Nicholas J considered the disclosure
requirement in the context of a claim to priority to a PCT application and provided the following explanation:
“Section (40)(2)(a) requires that the complete specification make the necessary disclosure. Since the claims
form part of the complete specification they may contribute to the disclosure. However, for the purposes of s
43(2A), the claims in the complete specification, although defining the invention, do not contribute to the
disclosure. They serve only to define the invention which must be disclosed in the priority document ‘... in a
manner that is clear enough and complete for the invention to be performed by a person skilled in the relevant
are’. That said, the language used in s 40(2)(a) and s 43(2A)(b) is essentially the same: in both cases the
invention must be disclosed in a manner that is clear enough and complete enough for the invention to be
performed by a person skilled in the relevant art. Section 43(2A)(b) expresses the disclosure obligation by
reference to the invention ‘in the claim’. In my view, nothing turns on the absence of the words ‘in the claims’ in
s 40(2)(a). The disclosure obligation imposed by s 40(2)(a) of the Act relates to the invention as claimed.”[72]
The opposed application
88. The opposed application was filed on 1 December 2020, claiming divisional status from the parent
application and also claiming priority from a provisional application AU 2020902327. Ultimately, the parent
application derives priority from Australian provisional applications AU 2013900915 and AU 2013900938, filed
on 15 March 2013 and 18 March 2013, respectively.
89. The priority date of each of the claims of the opposed application will depend on when the invention in
each respective claim was clearly disclosed in a manner that is clear enough and complete enough for the
invention to be performed by a person skilled in the art. The relevant priority date may be the filing date of any
of the earlier provisional applications, filing dates of the earlier applications or filing dates of substantive
amendments which introduced a clear disclosure of the claimed invention into the opposed application.
90. If the opposed application is not entitled to claim priority from the parent application, it will also not be
entitled to claim divisional status. If the opposed application cannot claim divisional status, the earliest
possible priority date will be the filing date of the provisional application AU 2020902327, that is 7 July 2020.
91. The opponent submissions begin by making note of differences between the complete specification filed in
relation to the opposed application and the earlier applications:
“(a) new Figures 17 to 29 have been incorporated into the specification of the Opposed Application, along with
a description of the new elevating storage apparatuses shown in those Figures (these new Figures 17 to 29 in
the Opposed Application appeared for the first time (in an informal nature) as Figures 1 to 13 in provisional
patent application no. 2020902327, filed on 7 July 2020);
(b) the background section of the specification for the Opposed Application is also different to
that of the Parent; and
(c) intermediate generalisations relating to some of the newly disclosed features shown in new
Figures 17 to 29 have been added to the specification for the Opposed Application.”[73]
92. The opponent acknowledged that the parent application disclosed a number of elevating storage
apparatuses and generically described various aspects of these apparatuses, such as slide assemblies,
linkage means, control means and support means, as well as the movements of these parts relative to one
another.[74] However, the opponent submitted that the parent application only described three specific
embodiments of elevated storage apparatuses as shown in Figures 1-4, Figures 5-9 and Figures 10-16.[75]
93. In contrast, the opponent submitted that the parent application does not contain an enabling disclosure of
at least the powered drive means having two spaced-apart linear actuators, each being operatively connected
to one of the scissor type linkage mechanisms and being mounted adjacent to or extending substantially
above the slide assemblies.[76] The opponent noted that page 3 of the parent application only generally
described a “powered drive means” in the context of being associated with a control means.[77]
94. Again, the opponent raised concerns with the claims defining the powered drive means being operatively
connected to the slide assemblies, article support means and scissor type linkage mechanism, as the term
“operatively connected” is not used in the parent application.[78] According to the opponent, the possibility of
the powered drive means being connected to the various components via anything other than a direct
mechanical connection is not apparent from the parent application.[79]
95. It is the opponent’s view that the claimed embodiment is an intermediate generalisation of the various
features disclosed in the parent application and that “The Parent does not describe any specific configuration
of elevating storage apparatus having scissor type linkage mechanisms and powered drive means.”[80]
According to the opponent, the earliest priority date for the opposed application is “(at best) 7 July 2020, the
date of filing provisional application no. 2020902327.”[81]
96. The applicant submits that all claims are entitled to the priority date of 13 March 2014 (being the filing date
of the original application) and some claims may be entitled to a priority date of 18 March 2013 or 15 March
2013, the filing dates of the earlier provisional applications.[82]
97. The applicant pointed to a passage in the parent application, which also appears in the original application
and the opposed application:
“The further illustrated embodiments utilise similar components as is described for the above embodiment
except for the linkages which interconnect the inner slide assemblies and the article supporting tray. For the
sake of brevity, in the description of the following embodiments numbers utilised for similar components will be
repeated and only the variations will be illustrated and/or described in detail.”[83]
98. Based on this passage, the applicant submitted that “the various options for powered drive means
described earlier apply to the scissor linkage versions described later.”[84] This was followed by references to
parts of the parent application which mention linear drive means, triggers for actuating a drive means and
examples of powered drive means such as a powered hydraulic or pneumatic cylinder, a worm drive or a rack
and pinion drive.[85]
99. Similarly, the applicant pointed to claim 12 in the parent application which reads as follows:
“Elevating storage apparatus as claimed in any one of the preceding claims wherein the control means
includes a control for selectively actuating powered drive means adapted to cause the linkage means to move
the article support means between its withdrawn elevated position and its accessible position.”
100. The applicant submitted that claim 12 “in itself provides sufficient support for a comparable claim in the
opposed application.”
101. The applicant goes on to criticize Mr Oliver for failing to read the specification as a whole rather than
simply relying on the drawings and further submits that a patent specification is not required to provide
manufacturing drawings.[86]
Consideration
102. Neither party drew any distinction between the three independent claims with regard to their priority and
their submissions proceeded on the assumption that the priority date for all of the claims would be the same.
103. While I agree with the applicant that the specification as a whole should be considered for the necessary
disclosure, I disagree that specific disclosures in relation to one embodiment could be carried across to other
embodiments. This would mean that a specification may describe a number of disparate embodiments and
further enable any number of other embodiments as long as traces of the component features could be found
in one described embodiment or another. Similarly, simply drafting a set of broad claims does not provide
enablement for the full breadth of the claimed invention, if it otherwise lacks any enablement.
104. In the parent application, the only general description of the powered drive means is contained in two
passages:
“The control means may be a handle fixed to the article support means or to a lever arrangement which co-
operates with the linkage means whereby the movement of the handle is amplified relative to the movement of
the article support means to reduce the effort required to control the position of the article support means. The
control means may include a control for selectively actuating powered drive means adapted to cause the
linkage means to move the article support means between its accessible position and its withdrawn elevated
position and if desired its stowed position. The drive means may include a liner actuator, or a telescopic ram
assembly operable for raising and/or lowering the article support means and which, if desired, may be
controlled by a handle such that the powered drive means follows the operation of the handle which would
only require light up or down pressure to cause corresponding up or down movement of the article support
means.”[87]
And
“In any of the above variations of the invention, the slide assemblies and some or all of the carriers could be
motor driven and the control means could be a remote handpiece for controlling raising and lowering of the
article support means and horizontal movement to and from the stowed elevated position.”[88]
105. Firstly, I note that only claim 1 in the opposed application explicitly includes the feature of a control
means. Secondly, providing the idea to do something is not the same as providing a clear enough and
complete enough disclosure of that something. Thirdly, figures 5 to 9 show an elevated storage apparatus with
telescopic support assemblies which accommodate energy storage means or powered drive means inside the
support assemblies to assist in lowering and raising the article support means.[89]
106. Even if the description of telescopic supports which house a powered drive means internally is
considered to be enabled by this embodiment with the telescopic support assemblies, the claimed invention is
directed to a pair of linear actuators mounted adjacent to, or substantially above, the scissor type linkage
mechanisms. It is not clear to me how an internally mounted mechanism enables an externally mounted
mechanism. Unfortunately, I do not have any evidence from either party on this point.
107. With respect to the embodiments having the scissor-type linkage mechanisms, the only mention of the
powered drive means is in relation to the operation of a handle:
“At all times the handle assembly 71 is maintained in substantial alignment with the respective pairs of
opposed links 52 or 53 whereby up or down pressure on the handle will apply a rotational force to these
opposed pairs of links for lowering or raising the article support assembly. The amount and or direction of the
applied force can be selectively varied by utilising energy storage means able to support the weight of an
article on the tray 14 in its elevated position or energy storage means able to only partially support the weight
of an article on the tray 14 in its elevated position. This applied pressure may also actuate drive means for
raising or lowering the tray 14.”[90] (emphasis added)
108. In contrast to this general mention of a powered drive means, the positioning of the energy storage
means, which does not appear in the opposed claims, is described as follows:
“In this embodiment the energy storage means is suitably connected between the adjacent upper ends or
lower ends of the links 52 and 53 in one or both the scissor mechanisms 51.”[91]
109. While this embodiment is not specifically provided with a drawn figure either, a person skilled in the art
would understand the required positioning of the energy storage means for the desired effect by reading this
passage. A similar description of the powered drive means in relation to the embodiment with scissor type
linkage mechanisms is not provided in the parent application.
110. The embodiment of an elevated storage apparatus including a pair of slide assemblies, article support
means and a pair of scissor type mechanisms with a powered drive means for moving the article support
means between the raised and lowered positions was introduced with the filing of the provisional application
AU 2020902327. The earlier applications had only suggested the possibility of adding a powered driver to the
apparatus as a whole and did not provide any guidance on how this may be achieved in relation to an
embodiment with a scissor type linkage mechanism.
111. I agree with the opponent that the opposed application introduces new combinations of features which
were not clearly disclosed in the parent application. These embodiments were first described in the provisional
application AU 2020902327, filed on 7 July 2020.
Conclusion on priority
112. In accordance with the above, I find that there is no claim that is eligible to take the priority date of the
parent application. It follows that the opposed application is not entitled to claim priority from the parent
application. Consequently, it is not entitled to a divisional status under section 79B. Accordingly, the correct
priority date for the claimed invention is 7 July 2020, the filing date of the provisional application AU
2020902327.
Novelty
113. It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, is novel.
Subsection 7(1) provides that an invention is taken to be novel unless it is not novel in light of the prior art
base. Prior art information made publicly available in a document or through the doing of an act forms part of
the prior art base for the purpose of novelty if it was published before the priority date of a claim. In addition,
the prior art base under subsection 7(1) includes 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. This is referred to in parlance as a “whole of contents” citation.
114. It is well established that the general test for lack of novelty is the reverse infringement test, as set out by
Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:
“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.”[92]
115. This test is satisfied if the alleged anticipation discloses all the essential features of the invention as
claimed.[93] The level of disclosure required is set out in General Tire & Rubber Co v Firestone Tyre and
Rubber Co Ltd:
“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something
that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s
claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. ... if
carrying out the directions contained in the prior inventor’s publication will inevitably result in something being
made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s
claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a
manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way
which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground
of obviousness. To anticipate the patentee’s claim the prior publication must contain clear and unmistakable
directions to do what the patentee claims to have invented. A signpost, however clear, upon the road to the
patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the
precise destination before the patentee.”[94] (citations omitted)
116. With that in mind, I will now look at the disclosures of the prior art. The opponent pressed the following
documents for novelty:
US 2017/0282775 A1 (D4) published 5 October 2017, against claims 1-4 and 6-9;
US 2018/0312381 A1 (D5) published 1 November 2018, against claims 1-4 and 6-9; and
AU 2021203078 (D6) published 2 December 2021 with a priority date of 14 May 2020, against claims 1-5, 7 and
9.
117. No expert evidence has been provided with respect to any of the prior art documents. These documents
were not shown to Mr Oliver and the applicant did not provide any evidence in answer. However, these
documents were present in the original SGP. Rather than submissions, the opponent provided a Novelty Table
aligning the features of the opposed claims with disclosures in each of D4, D5 and D6. The applicant also
provided novelty tables for D1, D2 and D3 but did not make any submissions on D4, D5 or D6 for the following
reasons:
“the applicant has not considered D4, D5 and D6 because it seems clear that the claims of the opposed
application are entitled to the priority date of the opposed application’s parent No. 2019208179 and the ultimate
grandparent No. 2014201523”[95]
118. Given my finding on the relevant priority date for the opposed application being 7 July 2020, D4 and D5,
being published earlier are clearly part of the prior art base, and D6, being published later than the priority
date of the opposed application but having an earlier priority date than the opposed application, is a “whole of
contents” citation.
US 2017/0282775 A1 (D4)
119. D4 discloses a device for lifting heavy objects, in particular motorcycles, into the cargo bed of a vehicle.
Figures 1 and 4 of D4 show the lift system in the lowered position:
2024_1105.jpg A drawing of a truckDescription automatically generated
120. The lift system has a chassis 12, which is configured to be placed into the cargo area 14 of a vehicle and
is comprised of a frame 18 that includes extension members 20, 22 configured to cooperate in a nested
fashion to fit in the bed 14, which are coupled opposite each other and supported by a set of cross members
24.[96] A lift platform 26 is coupled between the first and second extension members 20, 22 with first and
second scissor supports 32, 34 and is configured as a rigid box frame, bucket or tub.[97] The scissor supports
32, 34 may be connected to the extension members 20, 22 by a variety of methods, such as by pivot pins 38
and translational slides 40.[98] An actuator mechanism 42 is coupled to the chassis 12 and provides the motive
forces to operate the lift system.[99] There can be a variety of actuator designs and/or multiple actuators that
can operate the lift system, such as a set of hydraulic cylinders 44 coupled to drive chains 46, a linear actuator
powered by electric motor drives, or a screw-driven actuator.[100] The actuator 42 provides linear drive motion
that is directed through a set of pulleys or sprockets 48 to the first and second scissor supports 32, 34, and
pulls the platform 26 via the scissor supports 32, 34 to raise the platform 26 and the actuator 42 releases the
tension on the scissors supports 32, 34 to lower the platform 26.[101] A variety of alternative embodiments for
the actuator 42 and scissor support 32, 34 mechanisms are shown in Figures 7-13.[102]
121. The chassis is configured to fit into the cargo bed of a vehicle, such as a pick-up truck, cargo van, military
transport, trailer and the like.[103] The lift system allows the user to lift a load in a stable and level fashion
where the user can extend the structure out of the vehicle in a cantilever maneuverer and lift objects over
difficult to reach locations, such as sidewalks or stair ways.[104]
Consideration – D4
122. I consider that some of the claims lack novelty in light of D4.
123. The elevating storage apparatus of the opposed application is not limited to any particular size or weight
of article. The cargo area 14 is within the bounds of a vehicle and the chassis 12 is equivalent to the base
mounted on a surface of a vehicle. The lift platform 26 falls within the scope of an article support means and is
supported by extension members 20, 22 for longitudinal movement and scissors supports 32, 34 connect the
lift platform 26 to the extension members 20, 22. The actuator mechanism 42 is mounted substantially above
the scissors supports 32, 34 and cause the lift platform 26 to be lowered and raised. Once the item is lifted
and placed in the cargo bed, it is being stored in that position.
124. As stressed by the opponent throughout their submissions, the term operatively connected is broad and
the article support means, slide assemblies and scissor type linkage mechanisms are operatively connected to
the powered drive means to cause the article support means to be lowered and raised. D4 discloses
numerous ways of connecting the actuator 42 to the scissor supports 32, 34, which fall within the scope of
these parts being “operatively connected”. For example, drive chains 46 operatively connect the actuator 42 to
the scissor supports 32, 34, and its positioning on extension members 20, 22 allows the lift platform 26 to be
lowered and raised.
125. Consequently, independent claims 7 and 9 lack novelty in light of D4 as each of the claimed features are
explicitly disclosed.
126. With regard to independent claim 1, there is an additional feature of a “control means in communication
with said linear actuators for controlling operation thereof”. The opponent submitted that it is “[i]mplied that the
actuators are controlled in order to raise/lower the platform 26.”[105] I agree. While there is no explicit
disclosure of a control means in association with any part in D4, the parts are designed to move and the lift
system is intended to be operated. A person skilled in the art reading D4 would understand that the lift system
cannot be operated without some form of a control means and its inclusion is implied. Consequently,
independent claim 1 lacks novelty in light of D4 as well.
127. With respect to the dependent claims, the opponent has pressed D4 for claims 2-4, 6 and 8 as well. The
feature of a compound slide assembly (claim 2), scissor links being operatively connected to respective inner
slides (claim 3), the control means adapted for selectively positioning the article support means between the
raised and lowered positions (claim 4), and one end of each linear actuator being pivotally connected to one
end of a respective scissor arm and the other end being operatively connected to a respective slide assembly
(claims 6 and 8) are also disclosed in D4, as discussed above.
US 2018/0312381 A1 (D5)
128. D5 discloses a cargo-lowering slide assembly. Figure 2 depicts a cargo-lowering slide assembly showing
each side of a slide assembly in an extended position with interconnected scissor arms and cargo platform in
a retracted or lifted position. Figures 4A, 4B and 4C depict a side of the drawer slide with interconnected
scissor arms and cargo platform in retracted, intermediate and extended positions:
A drawing of a machineDescription automatically generated

A diagram of a mechanical mechanismDescription automatically generated
129. The cargo lowering slide assembly generally comprises two drawer slide assemblies, two scissor arm
assemblies 190, and a cargo platform 150, wherein the cargo lowering slide assembly is adapted to be
mounted within an enclosure, but may also be mounted to a surface that is not enclosed such as on the top of
a vehicle or in the bed of a truck.[106] The enclosure may be attached or integrated into the body or chassis of
a vehicle such as a fire engine or emergency response vehicle.[107]
130. The lower ends of scissor arm assemblies 190 are interconnected to opposite sides of the cargo platform
150 and the upper ends of scissor arm assemblies 190 are interconnected to respective slide assemblies.[108]
The cargo platform 150 is raised or lowered by use of scissor motor assembly 160, scissor timing belt
assembly 180, and scissor screw 170.[109] The extension or contraction of the scissor arm assembly 190 may
also be achieved with a series of cables and pulleys, screws, hydraulic actuation, telescopic actuation or any
combination of mechanisms to raise and lower a platform.[110]
132. The cargo-lowering slide assembly of D5 is generally suitable for mounting to a vehicle, including internal
mounting. The drawer slides move the cargo platform horizontally. Scissor motor assemblies are mounted
adjacent to each of the drawer slides, which drives the scissor arms to lower or raise the cargo platform.
133. For similar reasons as given for D4, as each of the claimed features are explicitly disclosed, each of
claims 1-4 and 6-9 lack novelty in light of D5.
AU 2021203078 (D6)
134. D6 discloses an apparatus having a platform on which an item, such as a car fridge, can sit and be
moved from a relatively inaccessible position, such as inside the rear compartment of a vehicle, into a position
where it can be more readily accessed.[111] Figure 1 shows an apparatus in an extended configuration with its
platform in its lowered position.
2024_1109.jpg
135. The apparatus comprises a mounting portion in the form of cross members 12, a sliding mechanism in
the form of telescopic arms 14 made up of a housing 24, first arm 40 and a second arm 42, and a platform 16.
[112] The platform 16 is joined to the second telescopic arm via lifting assemblies 30 having two driven arms
and a support arm.[113] The driven arms of the lifting assemblies 30 are fixed to each other at pivots and to a
linear actuator at their proximal ends.[114] The operation of the linear actuator forces the proximal ends of the
driven arms apart or draws them together and causes their distal ends to slide in the slots provided in the
platform 16, resulting in the upwards or downwards movement of the platform 16, respectively.[115]
136. In some embodiments, a remote control may be provided with the apparatus, with a raise/lower button or
a button may be provided on an accessible part of the apparatus itself.[116] Moreover, both the lateral and
vertical movement of the platform can be automated, meaning that a user can deploy the apparatus fully by
pressing a button.[117]
138. For similar reasons as given for D4, as each of the claimed features are explicitly disclosed, each of the
independent claims 1, 7 and 9 lack novelty in light of D6. The compound slide assembly of claim 2, use of the
control means to selectively positioning the platform between the raised and lowered positions of claim 4 and
pivotal attachment of the scissor type mechanisms to the slide assemblies of claim 5 are also disclosed in D6.
139. The opponent also pressed D6 for claim 3 but D6 does not disclose driven arms of the lifting assemblies
30 being operatively connected to the inner slides 42 providing a fixed link pivot and a sliding link pivot.
Similarly, unlike the other prior art documents, D6 does not disclose the linear actuator being pivotally
connected to the slide assembly 14.
Conclusion on novelty
140. Consequently, claims 1-4 and 6-9 lack novelty in light of D4 or D5 and claims 1, 2, 4, 5, 7 and 9 lack
novelty in light of D6.
141. The opposition is successful on the grounds of novelty.
Inventive step
142. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been
obvious to a person skilled in the art in light of the common general knowledge (whether in or out of the patent
area) before the priority date of the relevant claim when considered alone or together with the information
mentioned in subsection 7(3).
143. Subsection 7(3) defines the relevant information as:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or

(b) a combination of any two or more pieces of prior art information that the skilled person
mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably
expected to have combined.
144. Importantly, where a claim is directed to a combination of known integers, obviousness is not established
merely by identifying each of those features in the prior art or the common general knowledge. This was
explained by Aickin J in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at
[116], stressing that the question is whether the combination of those features is obvious. In a similar vein, the
High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21, at [111], said
that the question of whether it would be obvious to add one integer to a combination of other integers:
“...will turn on what a person skilled in the relevant art, possessed with that person’s knowledge, would have
regarded, at the time, as technically possible in terms of mechanics, and also as practical. ... Even if an idea of
combining integers, which individually may be considered mere design choices, is simple, its simplicity does
not necessarily make it obvious.”
145. The opponent pressed D4 and D5 as prior art for the purposes of claims 1-12 lacking inventive step. The
opponent proposed to raise D1, D2 and D3 for inventive step “only in the event that its challenge to the priority
date fails because the Delegate considers that the invention could have been performed across the full scope
of the claims”.
146. The opponent’s submissions on inventive step with regard to D4 and D5 consists of the following:
“As noted above, Clearview considers that claims 1-9 are not novel based upon D4, D5 and D6. As such, it is
unnecessary to consider inventive step. However, to the extent that Miles may argue that certain features [of]
the claims are not disclosed in D4, D5 or D6, then Clearview also relies upon D4 and D5 as prior art for the
purposes of lack of inventive step.
Separately, Clearview also relies on D4 and D5 with respect to obviousness of claims 10, 11 and 12. Plainly,
adding an ‘actuating lever’ to a known elevating storage apparatus does not constitute an inventive step.
Accordingly, the invention claimed in the claims of the Opposed Application does not involve an inventive step,
and the ground of opposition pursuant to s 18(1)(b)(ii) ought to be upheld.”[118]
147. The applicant only provided novelty tables for each of the prior art documents D1, D2 and D3.[119] As
noted above, the applicant did not consider the relevance of D4 or D5.
Consideration of inventive step
148. Claims 1-4 and 6-9 lack inventive step in light of each of D4 and D5 for the same reasons as novelty.
149. None of the prior art documents were presented to Mr Oliver. Consequently, I have no expert evidence
on any prior art document. Furthermore, while Mr Oliver was asked to provide comments on what fridge slides
were on the market in Australia in early 2013,[120] this information does not equate to common general
knowledge in the art at the relevant time.
150. I also note that the opponent has only made submissions in relation to the actuating lever introduced at
claim 10. Nothing is said of a stowable or releasable handle from claim 11 nor of the combination of actuating
levers and a handle as given at claim 12. Furthermore, no explanation has been provided for claim 5, which
was not covered by D4 or D5 in respect to novelty. Claim 5 requires the linear actuators to be connected to the
upper ends or lower ends of the scissor type linkage mechanisms as opposed to having one end mounted to
the slide assembly in claim 6.
151. In the absence of any evidence on the prior art documents or information on common general knowledge,
I cannot make any meaningful assessment on inventive step in relation to claims 5 and 10-12.
152. Given my finding on the relevant priority date for the opposed application, I do not need to consider D1,
D2 or D3. Even if I were to consider these documents for inventive step, it remains the case that I do not have
any evidence on these documents or information on common general knowledge, and I am unable to make
any meaningful assessment on inventive step in view of these documents.
Conclusion on inventive step
153. Claims 1-4 and 6-9 lack inventive step in light of each of D4 and D5 for the same reasons as given for
novelty. On the evidence before me, I cannot find that claims 5 and 10-12 lack inventive step in light of D4 or
D5.
Conclusion
154. The opposition succeeds on the grounds of novelty and inventive step, but fails on all other grounds.
155. Claims 1-9 lack novelty and claims 1-4 and 6-9 lack inventive step based on the later priority date of 7
July 2020. Given that novel and inventive claims 10-12 remain, I consider these issues can be overcome by
amendment. I therefore allow the applicant two (2) months from the date of this decision to propose
appropriate amendments to overcome the issues identified.
156. Given my findings in relation to the priority date, the applicant may also wish to consider amending the
patent request to remove the divisional status claim. If the opposed application was to proceed to grant with
the patent request in its current form, the patent term would end on 13 March 2034, being 20 years from the
filing date of the original application. If the patent request was to be amended to remove the divisional status
claim, which I have found to be invalid, the term of the patent would end on 1 December 2040, being 20 years
from the filing date of the opposed application.
Costs
157. The normal approach is that costs should follow the event. I see no sufficient reason to depart from this
approach. The opposition is successful. Accordingly, I award costs in accordance with Schedule 8 against the
applicant, Shane Robert Miles.
M. Umehara
Delegate of the Commissioner of Patents
Annexure – Claims
1. Elevating storage apparatus, including:
a pair of spaced apart slide assemblies forming part of a base adapted to be mounted on a
surface in a vehicle;
article support means supported by or between said spaced apart slide assemblies for
longitudinal movement between an elevated stowed position in or on the vehicle and a
withdrawn (or extended) elevated access position beyond the vehicle;
linkage means connecting the article support means to the slide assemblies so as to enable the
article support means to be raised and lowered relative to the spaced apart slide assemblies
between the elevated access position and a lowered access position beyond the vehicle;
wherein said linkage means includes two spaced apart scissor type linkage mechanisms
connecting respective opposite sides of the article support means to respective opposite ones of
the spaced apart slide assemblies and arranged to support said article support means in a
substantially horizontal attitude between said elevated access position and said lowered access
position;
powered drive means operatively connected to said pair of slide assemblies and said article
support means and arranged to cause movement of said article support means relative to said
pair of slide assemblies between said elevated access position and said lowered access position
and vice versa;
wherein said powered drive means includes two spaced apart linear actuators, one of said linear
actuators being operatively connected to one of said spaced apart scissor type linkage
mechanisms and the other one of said linear actuators being operatively connected to the other
scissor type linkage mechanism such that actuation of said linear actuators causes said article
support means to move between said elevated access position and said lowered access position
and vice versa, and wherein one of said linear actuators is mounted adjacent one slide assembly
or extends substantially above one slide assembly and the other linear actuator is mounted
adjacent the other slide assembly or extends substantially above the other slide assembly; and
control means in communication with said linear actuators for controlling operation thereof.
2. Elevating storage apparatus according to claim 1, wherein each of said spaced apart slide assemblies is a
compound slide assembly including an outer fixed slide support, an intermediate slide support and an inner
slide which can be withdrawn (or extended) from its stowed elevated position to a withdrawn (or extended)
elevated position at which both inner slides are supported beyond the outer fixed slide supports.
3. Elevating storage apparatus according to claim 1 or claim 2, wherein the spaced scissor type linkage
mechanisms are operatively connected to respective inner slides, each of which provides a fixed link pivot and
a sliding link pivot.
4. Elevating storage apparatus according to any one of the preceding claims wherein said control means is
adapted to actuate said two spaced apart linear actuators for selectively positioning the article support means
between the elevated access position and the lowered access position.
5. Elevating storage apparatus according to any one of the preceding claims wherein said two spaced apart
scissor type mechanisms each include two pivotally connected arms and wherein one of said linear actuators
is connected between the upper ends or the lower ends of the pivotally connected arms of one scissor type
mechanism and the other of said linear actuators is connected between the upper ends or the lower ends of
the pivotally connected arms of the other scissor type mechanism.
6. Elevating storage apparatus according to claim 5 wherein one end of each linear actuator is pivotally
connected to one end of a respective scissor arm and the other end is operatively connected to a respective
slide assembly.
7. Apparatus for storing and moving one or more items, for example, a portable fridge mounted in a vehicle,
the apparatus including:
a first part including a base or frame adapted to be mounted on a surface in or on a vehicle;
a second part including a platform or frame adapted to support the item to be stored and moved;
said second part being operatively connected to said first part for substantially linear movement of said
platform or frame at one level relative thereto from a retracted position within the vehicle or on the vehicle to
an extended position at said one level substantially beyond or outside the vehicle and for movement from the
extended position at the one level to a down position at a lower level;
powered drive means operatively connected to said base or frame of said first part and said platform or frame
of said second part so as to cause movement of said platform or frame of said second part from said one level
to said down level and/or vice versa;
wherein said second part is connected to said first part by a pair of spaced apart scissor type linkage
mechanisms, each of said scissor type linkage mechanisms including two pivotally connected arms and
wherein said powered drive means includes a pair of powered linear actuators and one part of the respective
linear actuators is operatively connected to said first part and the other part of said linear actuators is
operatively connected between respective ones of said pivotally connected arms whereby actuation of said
linear actuators causes said second part to move between the extended position at the one level and the
down position at the lower level and vice versa, and wherein one of said linear actuators is mounted adjacent
one slide assembly and the other linear actuator is mounted adjacent the other slide assembly.
8. Apparatus for storing and moving one or more items according to claim 7 wherein one end of each linear
actuator is pivotally connected to one end of a respective scissor arm and the other end is operatively
connected to a respective slide assembly.
9. Apparatus for storing and/or moving one or more items, for example, a portable fridge mounted in a
vehicle, the apparatus including:
a first part including a base or frame adapted to be mounted to a vehicle against movement relative thereto
and a second part including a platform adapted to support the one or more items being stored and/or moved;
said second part being operatively connected to said first part by two spaced apart extendable tracks
connected to said first part and said second part so as to allow substantially linear movement of said platform
relative to said first part from a retracted or stowed position at one level within the vehicle to an extended
position at said one level substantially beyond the vehicle; and
said platform being operatively connected to said spaced apart extendable tracks by two spaced apart scissor
type linkage mechanisms so as to allow movement of said platform from the extended position at the one level
to a second position at a lower level, and
a first powered actuator operatively connected to one of said extendable tracks and one of said scissor type
mechanisms and a second powered actuator operatively connected to the other extendable track and the
other scissor type mechanism so as to cause movement of said platform from the extended position at the one
level to the second position at the lower level and vice versa, and wherein one of said linear actuators extends
substantially above one of said spaced apart extendable tracks and the other linear actuator extends
substantially above the other one of said spaced apart extendable tracks.
10. Apparatus according to any one of the preceding claims further including an actuating lever operatively
connected to said linkage mechanisms and arranged to selectively raise and lower said platform when said
one or more powered actuators are not operable.
11. Apparatus according to claim 10 wherein said actuating lever includes a stowable or releasable handle
adapted to be releasably connected to said linkage mechanisms.
12. Apparatus according to claim 10 or claim 11 including two actuating levers and a handle extending between
and connected to said two actuating levers whereby when said actuating levers are connected to said linkage
mechanisms, said handle is at a predetermined position remote from said platform or frame.
[1] Specification at page 1 lines 13-18.
[4] Specification at page 3 lines 26-30 and page 4 lines 8-13.
[10] Specification at page 18 lines 1-8, page 20 lines 1-3 and page 21 lines 18-20.
[11] Specification at page 24 line 28 – page 25 line 2 and page 26 lines 14-25.
[17] KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd [2007] FCA 481 at [16].
[18] Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70].
[19] Oliver at [6]-[8].
[20] Opponent submissions in support at [114].
[21] Oliver at [4] and [5].
[22] Applicant submissions at [2.3], [2.19] and [2.20].
[23] Oliver at [9] and [15].
[24] Applicant submissions at [2.40].
[25] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118]- [120].
[26] Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214 at [139].
[27] Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91 at [610].
[28] Pfizer Overseas Pharmaceuticals v Eli Lilly & Company [2005] FCAFC 224 at [250].
[29] Airco Fasteners Pty Ltd v Illinois Tool Works Inc. [2023] FCAFC 7 at [48].
[30] Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 1529 at [485]- [486].
[31] Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [24].
[32] Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 1529 at [485]- [486].
[33] Oliver at [30].
[37] Annexure JO-A, e-mail of 16 December 2022.
[38] The Macquarie Dictionary online, 2024, https://www.macquariedictionary.com.au
[40] Opponent submissions in reply at [70].
[43] Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81].
[44] Monsanto Company v commissioner of Patents (1974) 48 ALJR 59 at [60]-[61].
[45] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [932].
[46] Meat & Livestock Australia Limited v Cargill, Inc [2018] FCA 51 at [937].
[48] Opponent submissions in support at [109]-[117].
[53] Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; Cytec Industries Inc. v Nalco
Company [2021] FCA 970; Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2022] FCA 464;
Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; Jusand Nominees Pty Ltd v
Rattlejack Innovations Pty Ltd [2023] FCAFC 178; TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493;
Calix Limited v Grenof Pty Ltd [2023] FCA 378; ToolGen Incorporated v Fisher (No 2) [2023] FCA 794.
[54] See, e.g., Cytec Industries Inc. v Nalco Company [2021] FCA 970 at [145]- [146].
[55] See, e.g., ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [394]- [395].
[56] Opponent submissions in support at [94] and [103].
[61] Opponent submissions in reply at [21].
[63] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011
bridging paragraph at pages 48-49.
[64] Applicant submissions in answer at [2.9].
[65] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page
49.
[66] Applicant submissions in answer, Support Table, feature 1.1.
[67] Specification at page 25 line 25 – page 26 line 25 and Figures 27-29.
[71] TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 at [142]- [147].
[72] ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [166].
[74] Opponent submissions in support at [36] and [40].
[83] Parent at page 9 lines 28-32.
[87] Parent application at page 3 lines 16-26.
[91] Parent application at page 11 lines 17-19
[92] Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at 235, [20].
[93] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91 ALR 513 at 517.
[94] General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 457 at 485-486.
[95] Applicant submissions in answer at [1.1. b]
[96] D4 at [0057]-[0058].
[97] D4 at [0059]-[0061].
[98] D4 at [0062]
[99] D4 at [0063].
[100] D4 at [0063].
[101] D4 at [0063].
[102] D4 at [0066]-[0072].
[103] D4 at [0073].
[104] D4 at [0082].
[105] Opponent submissions in support, Annexure A at Feature 1.10.
[106] D5 at [42].
[107] D5 at [43].
[108] D5 at [0048].
[109] D5 at [0048].
[110] D5 at [0048].
[111] D6 at [0001].
[112] D6 at [0073].
[113] D6 at [0081].
[114] D6 at [0082].
[115] D6 at [0083].
[116] D6 at [0068].
[117] D6 at [0018].
[118] Opponent submissions in support at [85]-[87].
[119] Opponent submissions in answer at pages 39-94.

Clearview Towing Mirrors Pty LTD V Shane Robert Miles (2024) APO 11 (5 March 2024)

Uploaded by

Copyright:

Available Formats

You might also like

Clearview Towing Mirrors Pty LTD V Shane Robert Miles (2024) APO 11 (5 March 2024)

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Clearview Towing Mirrors Pty LTD V Shane Robert Miles (2024) APO 11 (5 March 2024)

Uploaded by

Copyright:

Available Formats

3/12/24, 10:17 AM Clearview Towing Mirrors Pty Ltd v Shane Robert Miles [2024] APO 11 (5 March 2024)

Last Updated: 5 March 2024

AUSTRALIAN PATENT OFFICE

Patent Application: 2020281026

Title: Elevated storage apparatus for storing or moving items

Patent Applicant: Shane Robert Miles

Opponent: Clearview Towing Mirrors Pty Ltd

Decision Date: 5 March 2024

Hearing Date: Written submissions completed on 2 January 2024

Representation: Patent attorney for the applicant: Ahearn Fox

Counsel for the opponent: S J Hallahan

Patent attorney for the opponent: Foundry Intellectual Property

AUSTRALIAN PATENT OFFICE

Patent Application: 2020281026

Title: Elevated storage apparatus for storing or moving items

Patent Applicant: Shane Robert Miles

Date of Decision: 5 March 2024

REASONS FOR DECISION

3. For simplicity, the family structure is as follows:

A diagram of a companyDescription automatically generated

Onus and standard of proof

16. A broad concept of the invention apparatus is described as including:

1. Elevating storage apparatus, including:

a first part including a base or frame adapted to be mounted on a surface in or on a vehicle;

Person skilled in the art

46. The opponent submitted that:

- a first base or frame adapted to be mounted to a vehicle (frame);

64. The opponent has not established its case on clarity.

Clear enough and complete enough disclosure and support

there must be a basis in the description for each claim; and

Section 43(2A) provides for a presently relevant exception:

(2A) This subsection applies to a claim if:

Regulation 3.12(4) provides:

The opposed application

2024_1105.jpg A drawing of a truckDescription automatically generated

A drawing of a machineDescription automatically generated

141. The opposition is successful on the grounds of novelty.

143. Subsection 7(3) defines the relevant information as:

The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or

Consideration of inventive step

Conclusion on inventive step

Delegate of the Commissioner of Patents

1. Elevating storage apparatus, including:

a first part including a base or frame adapted to be mounted on a surface in or on a vehicle;

[1] Specification at page 1 lines 13-18.

[2] Specification at page 3 lines 3-6.

[3] Specification at page 3 lines 10-19.

[5] Specification at page 4 lines 25-26.

[6] Specification at page 5 lines 1-4.

[7] Specification at page 3 lines 21-24.

[8] Specification at page 5 lines 22-28.

[9] Specification at page 6 lines 9-23.

[12] Specification at page 25 lines 4-19.

[13] Specification at page 26 lines 1-5.

[14] Specification at page 26 lines 5-8.

[15] Specification at page 26 lines 14-15.

[16] Specification at page 26 lines 15-22.