Archibald Kenrick & Sons Ltd v Laird Security Hardware Ltd

Factual and Procedural Background

The appeal arises from a decision by the Comptroller of Patents, acting through his Deputy Director, who refused a proposed amendment to claims 1 and 2 of a patent concerning an improved locking mechanism. The refusal was based primarily on the grounds that the amended claims lacked novelty, with an additional argument concerning inventive step left undecided. The patent in question relates to a locking mechanism designed to improve the security of movable panels such as sash windows by reducing the air gap that allows unauthorized entry. The invention features a bolt mounted to slide relative to an operating member, enabling enhanced security by allowing the bolt to move in a different direction from the operating member.

The Respondent, Company A, alerted the Appellant to the existence of an earlier patent (the "271 patent") which was said to anticipate the invention claimed. The Appellant accepted that claim 1 as originally filed lacked novelty in light of the 271 patent and sought to amend the claims to overcome this. The Hearing Officer decided the matter on the papers and refused the amendments on the basis that the amended claims were not novel over the 271 patent. The Appellant challenges this decision, asserting that the Hearing Officer erred in his construction of the claims and the prior art.

Legal Issues Presented

1. Whether the proposed amendments to claims 1 and 2 of the patent are novel over the prior art disclosed in the 271 patent.
2. Whether the Hearing Officer correctly construed the claims and the prior art in determining novelty.
3. Whether the question of inventive step should be considered following the determination of novelty.

Arguments of the Parties

Appellant's Arguments

• The Hearing Officer failed to correctly identify and apply the relevant questions of construction concerning the movement of the bolt relative to the operating member as required by the amended claims.
• The bolt means in the 271 patent does not move relative to the operating member in a direction substantially perpendicular to the operating member's movement, contrary to the Hearing Officer's conclusion.
• The Hearing Officer overlooked the importance of the phrase "being constrained to slide relative to the operating member" in the amended claim 1.
• The movement of the bolt relative to the operating member in the 271 patent follows an angled trajectory rather than a substantially perpendicular one, which is critical to the novelty analysis.
• The Hearing Officer erred in treating the overall movement of the bolt and operating member relative to the lock housing as determinative, rather than their relative movement to each other.
• The second phase of the bolt's movement in the 271 patent, which is parallel to the operating member, further distinguishes the prior art from the amended claims.

Respondent's Arguments

• The bolt means in the prior art (271 patent) moves in a direction substantially perpendicular to the movement of the operating member, satisfying the claim requirements.
• The Hearing Officer correctly applied the legal test for anticipation and properly construed the claims and prior art.
• The word "substantially" in the claim allows for some imprecision in the perpendicularity of the movement.
• The second phase of the bolt's movement in the 271 patent does not affect the novelty analysis because the patent in suit also allows for parallel movement of the bolt.

Table of Precedents Cited

No precedents were cited in the provided opinion.

Court's Reasoning and Analysis

The court carefully examined the Hearing Officer's interpretation of the relevant claim language and the prior art disclosure. The key issue was the relative movement of the bolt means to the operating member in the prior art patent. The Hearing Officer had posed the correct questions but ultimately concluded that the prior art anticipated the amended claims because the bolt moved perpendicular to the operating member.

The court found that the Hearing Officer's analysis did not sufficiently consider the relative movement between the bolt and operating member, focusing instead on their movements relative to the lock housing. The court accepted the Appellant's explanation that the bolt's movement in the prior art followed an angled trajectory rather than a strictly or substantially perpendicular path relative to the operating member. The court noted that the bolt's movement comprised two phases, with the first phase not being substantially perpendicular and the second phase being parallel to the operating member, both of which were significant.

The court acknowledged that the Hearing Officer's error was understandable given the complexity of the mechanism and the initial impression of the parties and the court itself. However, it concluded that the Hearing Officer was wrong to refuse the amendment on the ground of lack of novelty.

The court also noted that the issue of inventive step was not decided and was to be remitted to the Hearing Officer for further consideration.

Holding and Implications

The court ALLOWED THE APPEAL and set aside the Hearing Officer's decision refusing the proposed amendments on the basis of lack of novelty.

The direct effect of this decision is that the Appellant's amended claims are not anticipated by the prior art and therefore may proceed. The question of inventive step remains undecided and will be reconsidered by the Hearing Officer. No new legal precedent was established by this decision; it primarily corrects the application of claim construction principles and factual assessment of the prior art in this particular case.