Archibald Kenrick & Sons Ltd v Laird Security Hardware Ltd

For novelty, the relationship between a claimed component and the operating member must be assessed as the claim requires. It is insufficient to compare each component’s movement with the movement of the mechanism’s housing. Where a claim requires a bolt to slide relative to an operating member in a substantially perpendicular direction, the prior art must disclose that relative movement. A trajectory that is angled relative to the operating member does not satisfy the requirement merely because the bolt’s overall movement relative to the housing is perpendicular. A later phase of movement cannot be ignored where it is necessary for the prior-art mechanism to operate. Questions about whether the prior art could be modified to achieve the claimed geometry concern inventive step, not anticipation.

Archibald Kenrick & Sons Limited appealed against a decision of the Comptroller of Patents, acting through the Deputy Director, Mr Barford. The Hearing Officer had refused proposed amendments to claims 1 and 2 of patent GB 2,297,796, holding that the amended claims lacked novelty over EP 0,411,271. The general legal test for anticipation was not challenged. The appeal concerned the proper construction of the amended claims, particularly the requirement that the bolt means be constrained to slide relative to the operating member in a substantially perpendicular direction.

1. Appeal allowed. The Hearing Officer’s decision was set aside. The amended claims were not shown to be anticipated by EP 0,411,271.
2. The relevant comparison was between the movement of the bolt and the movement of the operating member, not between their respective movements relative to the lock housing. The first phase of movement disclosed by EP 0,411,271 followed an angled trajectory relative to the connecting piece, which was the operating member for the purposes of the patent in suit. It therefore did not disclose sliding relative to the operating member in a substantially perpendicular direction.
3. The word “substantially” allowed some imprecision, but did not extend to the angled trajectory shown in the prior art. A possible alteration of the prior-art dimensions to produce a shallower trajectory was an obviousness argument, not an answer to lack of novelty.
4. The second phase of movement could not be disregarded. The latch moved parallel to the operating member during that phase, and that movement was necessary for the prior-art lock to engage and operate. The fact that the patent in suit permitted a parallel phase of movement did not remove the requirement governing movement relative to the operating member.
5. The issue of lack of inventive step, which had not been determined by the Hearing Officer, was remitted to him for further consideration.

• Comptroller of Patents, acting through the Deputy Director: on 15 March 2006, refused the proposed amendments to claims 1 and 2 because the amended claims lacked novelty over EP 0,411,271. The inventive-step objection was left undetermined.
• High Court (Patents Court): allowed the appeal, set aside the Hearing Officer’s decision and remitted the inventive-step issue for further consideration.