A.C. Components Pty Ltd v Anthony Paul Mizzi

[1997] APO 58

official notice

decision of a delegate of the commissioner of patents

Patent:          No. 647157 in the name of A.C. COMPONENTS PTY LTD

Title:          Air Conditioning Outlet Director Improvements

Action:          Opposition by Anthony paul MIZZI under Section 104 of the Patents Act 1990

Decision:          Issued            .

Abstract

The amendments were filed in response to an adverse report following a request for re-examination of the complete specification of the granted patent made under Section 97(2).

As a procedural issue, the patentee argued that the right to oppose amendments arising from re-examination was excluded by reason of the wording of Regulation 5.1(a)(iii).  Found having regard to the legislation and its intent that the reference to Regulation 9.5 in Regulation 5.1(a)(iii) did not act to exclude the right of a third party to oppose amendments under the circumstances of the present case.

Opposition grounds set down by Sections 102(1) and (2) considered. Opposition dismissed. Amendments allowed and consequently, by virtue of Regulation 9.5(c)(ii), the re-examination is completed. That being the case, the amended specification cannot be re-examined without a fresh request under Section 97(2) being made.

Patentee’s conduct taken into consideration when awarding costs.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent No. 647157 by A.C. Components Pty Ltd and opposition by ANTHONY PAUL Mizzi under Section 104 of the Patents Act 1990

background

Patent 647157 in the name of A.C. Components Pty Ltd (the patentee) was granted on standard application 81472/91 on 30 June 1994.

On 10 May 1996 Mr Noel T Brett, patent attorney of Griffith Hack, requested re-examination of the complete specification of the granted patent under sec 97(2) of the Patents Act 1990 (the Act).  A copy of the report on re-examination was sent to Mr Brett and the patentee on 3 July 1996. 

The patentee pursued an option indicated in the re-examination report by filing a request under sec 104(1) of the Act for leave to amend the specification of the granted patent. Leave was granted and advertised on 3 October 1996. On 31 October 1996 Mr Anthony Paul Mizzi (the opponent), patent attorney of Griffith Hack, filed a notice of opposition under sec 104(4) to the allowance of the amendments. The opponent subsequently filed a statement of grounds and particulars and a statutory declaration accompanied by a number of exhibits as evidence in support of the opposition. The patentee did not serve any evidence in answer within the time allowed, that is, by 12 March 1997.

A hearing to determine the opposition was held in Canberra on 14 May 1997. The patentee was represented by Dr Paul Wyk, patent attorney of A.P.T. Patent and Trademark Attorneys, and the opponent was represented by Mr Brett and Mr David Clark of Griffith Hack.  Mr Victor Smith of the patentee was also in attendance as an observer.    

the specification

Subject matter

The specification commences by indicating that the invention relates to an air conditioning outlet director, and in particular to an adjustable louvre for an air conditioning outlet.

In conventional director arrangements a number of vanes are supported in a common frame so as to be separately and independently adjustable in position to control the passage of air through the director.  The vanes are made from a moulded plastics material and provided with an end fitting spigot which is frictionally engaged within an aperture in a plastic side bar.

These arrangements suffer from two main disadvantages.  Firstly, each of the vanes must be separately adjusted so that the overall appearance of the director is aesthetically pleasing which can be a time-consuming exercise.  Secondly, the plastics material from which the director is made may creep over a period of time thus decreasing the frictional grip between the vane end spigots and the side bar apertures and impairing the effectiveness of the director.

The invention addresses these problems by providing at least one control bar which engages with control means on the vanes so as to enable the vanes to be co-operatively adjusted while allowing relative movement between the vanes.

The claims before amendment

The specification of the granted patent contains thirteen claims of which claim 1 is the only independent claim and reads as follows:

“1. An outlet director part for use in an air conditioning outlet comprised of a frame, a plurality of vanes and one or more control bars, the frame holding the vanes in a spaced arrangement with respect to one another, the vanes being engaged at each end with the frame so as to allow rotation of each vane about a longitudinal axis thereof, and at either of both ends a control means engaging with a control bar such that movement of the control bar causes a corresponding movement in the vanes thereby allowing the vanes to be co-operatively adjusted, and means for allowing relative movement of the control means in a direction transverse to the longitudinal axis of the vanes.”

Claims 2 through 12 are either directly or indirectly appended to claim 1, and claim 13 is an omnibus claim.

The claims as proposed to be amended

The amendments proposed to the specification seek to replace the claims as granted with a new set of claims and to make corresponding changes to the description.  The only new claims which I need consider for the purposes of this decision are as follows, with the italicised text representing the substantive changes to claim 1 which have occurred as a result of the proposed amendments:

“1. A plastics outlet director part for use in an air conditioning outlet comprised of a director part frame, a plurality of vanes and one or more control bars, the director part frame holding the vanes in a spaced arrangement with respect to one another, and a perimeter of the outlet director part shaped to permit disengagement of the outlet director part from a common frame of the air conditioning outlet and rotation of the director part to reorient the direction of outlet of air within the common frame, the vanes each have a main spigot at each end thereof, each main spigot being engaged in a respective aperture in the director part frame so as to allow rotation of each vane about a longitudinal axis thereof the main spigot being press fitted into the respective aperture in the director part frame, said main spigot having expanded end portions to inhibit withdrawal of the fitted main spigots from the respective aperture, and at either or both ends of the vanes control means engaging with a control bar such that movement of the control bar causes a corresponding movement in the vanes thereby allowing the vanes to be cooperatively adjusted, and means for allowing relative movement of the control means in a direction transverse to the longitudinal axis of the vanes.
2. An outlet director according to claim 1, in which the control means comprises a control spigot interengaging with an aperture in the or each control bar.

5. An outlet director part as in claim 2, in which the control bar has a plurality of apertures, one per vane, in which at least one of the apertures is adapted to allow for relative movement of the control spigot in a direction transverse to the long [sic] axis of a respective vane.

6. An outlet director part as in claim 1, in which the control bar has a plurality of apertures, one per vane, adapted to allow relative movement of the vanes, such that in a first position all vanes are held in a closed arrangement and in a second position all vanes are held in an open position, and further characterised that in the open position the vanes are maintained in dispersed relation one to another such that air passing through the vanes is dispersed into a plurality of directions.

7. An outlet director part as in claim 5 or 6, in which the apertures of the control bar comprise elongate slots, the degree of elongation determining the degree of opening of a vane, and each slot having at one end an openable mouth adapted to allow the insertion under pressure of a control spigot.

9. An outlet director part as in any one of claims 1 to 8, in which there is provided an inwardly extending lip in an upper part of the frame, said lip extend [sic] inwardly sufficiently to shield the control bar and spigots from direct airflow.

10. An outlet director part as in either claim 8 or 9, in which the apertures in the director part frame are defined by two extending legs forming an openable mouth having a narrower gap at an open end and within which a main spigot engages with frictional fit.

13. An outlet director part according to any one of the preceding claims wherein more than two thirds of the vane is downstream in relation to airflow to the main spigot and the control spigot is upstream in relation to airflow to the main spigot.

18. An outlet director part according to any one of the preceding claims wherein rotation of the vanes is solely effected by manual manipulation within the outlet director part.” 

statement of grounds and particulars

The statement of grounds and particulars reads:

“GROUND 1

Subsection 102(1), Patents Act 1990

Amendment of the complete specification is not allowable since, as a result of the amendment, the specification claims matter not in substance disclosed in the specification as filed.
PARTICULARS

Claim 1

Claim 1 defines a plastics outlet director part comprising a director part frame:

... a perimeter of the outlet director part shaped to permit disengagement of the
  outlet director part from a common frame of the air conditioning outlet and
  rotation of the director part to reorient the direction of outlet of air within the
  common frame ...

The specification as originally filed does not include disclosure of this feature.

Claim 1 also defines a plastics outlet director part including a plurality of vanes having a main spigot at each end thereof:

... the main spigot being press fitted into the respective aperture in the director
  part frame, said main spigot having expanded end portions to inhibit withdrawal
  of the fitted main  spigots from the respective aperture ... (underlining added for
  emphasis).

This feature is not disclosed in the specification as filed.  As depicted and described in the original specification “the expanded end portions” or spigot portions 9 do not inhibit withdrawal of the spigots from the apertures.  Rather the extending legs 13, 14 defining the narrow gap 15 of the perimeter frame 11 inhibit withdrawal of the main spigots.

Claim 18

Claim 18 defines features of the outlet director part which are not disclosed in the specification as originally filed.  The specification as filed does not clearly disclose effecting movement of the vanes as defined in claim 18.

GROUND 2

Subsection 102(2), Patents Act 1990

Amendment of the complete specification is not allowable since, as a result of the amendment the specification does not comply with subsection 40(3).

Patents Act 1990, Subsection 40(3)

The claims are not clear and succinct and are not fairly based on the matter described in the specification.

PARTICULARS

Claim 1

The “director part”, at line 8, does not clearly relate to the “plastics outlet director part” or the “director part frame”.

Claim 1 as amended defines press fitting of the main spigot into the respective apertures in the director part frame.  This feature is not clear insofar as whether the main spigot is press fit into the aperture in a general direction axial or radial to the axis of the vane or main spigot.  The preferred embodiment represents radial rather than axial press fitting of the spigot into the aperture.

The claim then explains that the main spigot includes “expanded end portions to inhibit withdrawal of the fitted main spigots from the respective aperture”.  The phrase “expanded end portions” is unclear.  That is, the word “expanded” is indefinite insofar as it is not clearly related to any particular part of the outlet director.  For example, the end portion may be understood as being “expanded” relative to the rest of the main spigot or merely “expanded” relative to the aperture.  The end portions are said to “inhibit withdrawal of the main spigots from the aperture”.  The drawings show withdrawal of the main spigot 9 from the aperture 12 in a generally radial direction.  The flanged portion of the main spigot 9 does not inhibit this radial withdrawal of the main spigot 9.  Thus, this feature of claim 1 is unclear.

From a fair reading of the specification as a whole, the essence of the invention appears to reside in an outlet director part having a plurality of vanes pivotally mounted within a frame, the vanes being coupled to and cooperatively moved by a control bar.  The specification, in the discussion of prior art, identifies two main problems namely:
(i)  each of the vanes in an outlet director are independently adjustable; and
(ii) each of the vanes relies upon its frictional grip with the outlet frame to maintain
     its position.
Thus each of the vanes in prior art outlet directors can independently loosen and pivot different amounts so that the outlet director is less aesthetically pleasing and its effectiveness will also be impaired (page 3 lines 16 to 20).

Furthermore, at page 4 between lines 21 to 25 cooperative movement of the vanes is stressed as being significant:

... there is no longer the problem that each of the vanes can be independently
   directed from others.  Thus if all of the spigots ease off their frictional grip,
   these may collectively be caused to divert in a different direction, but because
   these are joined together if they do move, they will move together and will
   therefore not look out of place ...

Claim 1 as amended additionally defines:

... a perimeter of the outlet director part shaped to permit disengagement of the
   outlet director part from a common frame of the air conditioning outlet and
   rotation of the director part to reorient the direction of outlet of air within the
   common frame ...
   ... the main spigot being press fitted into the respective aperture in the director
   part frame, said main spigot having expanded end portions to inhibit withdrawal
   of the fitted main spigots from the respective aperture ...

Thus, claim 1 is not fairly based on the matter described in the specification.  The invention as defined in claim 1 is inconsistent with the invention as broadly described.  Claim 1 as amended is somewhat narrower in scope than the invention as broadly described and includes features which are not illustrated and described as preferred embodiments of the invention.

Claims 5, 6 and 7

Claims 5, 6 and 7 refer to “apertures”.  It is not clear whether these “apertures” are the same as or different to the apertures defined in claim 2.

Claim 7 is dependent on either of claims 5 or 6 and refers to “a control spigot”.  However, claim 5 depends on claim 2 which defines “a control spigot interengaging with an aperture”.  It is unclear as to whether these control spigots are the same.

Claims 9, 10 and 13

Claim 9 defines “spigots” and is appended to any one of claims 1 to 8.  Thus, it is not clear whether “spigots” refers to the main spigot and/or the control spigot.

Claim 10 describes [sic] “a main spigot” although it indirectly depends on claim 1 which also refers to “a main spigot”.  It is unclear whether these spigots are the same.

Claim 13 defines an outlet director part according to “any one of the preceding claims”.  Claim 13 includes reference to “the control spigot”.  However, when claim 13 depends on claim 1 there is no antecedent for “the control spigot”.”  

evidence

The evidence filed in support of the opposition consists of a statutory declaration by David Gerard Clark, one of the patent attorneys representing the opponent, together with exhibts DGC1 to DGC3.

I will refer to this evidence together with the submissions made by both parties at the hearing where necessary in my decision, however, I note in passing that Mr Clark’s evidence in effect simply repeats some of the particularised grounds of opposition identified above.

As already mentioned, the patentee did not file any evidence in answer to the material relied on by the opponent.

Procedural issue

At the time of filing the notice of opposition the opponent expressed concern that as the request for leave to amend was made pursuant to reg 9.5, his right to oppose appeared to be excluded by reason of reg 5.1(a)(iii).  The Commissioner was accordingly requested to provide directions or advice regarding the manner in which the opposition was to proceed.  In a letter from the Patent Office dated 7 November 1996 the opponent was advised as follows:

“... The Commissioner has considered this matter.  He notes that Reg 9.5 is a provision that defines when re-examination is taken to be completed (which is necessary for the operation of Reg 5.8(a)(ii), Reg 5.6(1) and Reg 5.5(1)(b)).  To this end Reg 9.5 necessarily refers to situations where leave to amend has been sought.  It does not, of itself, provide a mechanism that enables amendment.

Accordingly, the Commissioner considers that the reference to “leave to amend is made under Regulation 9.5” in Reg 5.1(a)(ii), [sic] in fact, does not exclude the present opposition.

On this basis, the Commissioner considers it appropriate for the present opposition to the S.104 amendments to proceed in the usual manner. Of course, if either party wishes to dispute the Commissioners interpretation of Reg 5.1(a)(iii), they may request to be heard in the matter.”

Neither party requested to be heard.  However, at the hearing Dr Wyk took issue with this interpretation of reg 5.1(a)(iii) thereby again raising the question of the opponent’s right to oppose in the present case.  As a corollary to this, Dr Wyk questioned the entitlement of the attorneys representing the opponent to appear at the hearing.  Mr Brett responded by raising a point of procedural fairness in that as the patentee had not foreshadowed its intention to challenge the opponent’s “capacity to oppose amendments made during re-examination”, the opponent was not suitably prepared to mount a defence.  Mr Brett also noted that the opponent had proceeded with the opposition on the basis of the advice received from the Commissioner and as a consequence would be seeking full costs in the matter should I find, contrary to this advice, that the opponent is excluded from opposing the allowance of the amendments.

In the event, I afforded the opponent an opportunity to make written submissions to counter the argument put forward by Dr Wyk.  Written submissions were duly filed within the time allowed.  The patentee, however, offered no comment on those submissions.

The relevant law

Section 104(4) of the Act allows the Minister or any other person to oppose the allowance of an amendment to a complete specification. The procedures for oppositions in general under the Act are governed by Chapter 5 of the Patents Regulations 1991. Regulation 5.1(a)(iii) qualifies the circumstances under which Chapter 5 applies in the instance where the allowance of an amendment has been opposed as follows:

“5.1 This Chapter applies if a notice of opposition has been filed for the purposes
      of:

(a) the following provisions of the Act:
            ......
           (iii) subsection 104(4) (“amendments by applicants or patentees”), unless
                 the request for leave to amend is made under regulation 9.5
                 (“completion of re-examination”) ...”

Regulation 9.5 in turn specifies various circumstances under which the re-examination process is completed.  Of these, only the circumstances specified by reg 9.5(c)(ii) are pertinent to the present opposition:

“9.5 If the Commissioner makes an adverse report on a re-examination under
      subsection 97 (1) or (2) of the Act (“re-examination of complete

      specifications”) and:

......

(c) a statement is not filed under section 99 of the Act and:
           ......
           (ii) the applicant or patentee asks for leave to amend the complete
                specification to remove any lawful grounds of objection specified in a
                report on re-examination within 2 months from the day when the
                Commissioner reports under section 98 of the Act;

the re-examination is completed when the decision is made whether or not the
     amendment is allowed ...”

The basis of the patentee’s objection

By way of introduction Dr Wyk pointed to the fact that sec 104(4) provides for opposition to amendments “subject to and in accordance with the regulations”. He then submitted that as the present request for leave to amend has occurred in circumstances embraced by reg 9.5(c)(ii), ie. in response to an adverse report on re-examination under sec 97(2), Chapter 5 of the regulations does not apply due to the exclusion “unless the request for leave to amend is made under regulation 9.5 ...” set down by reg 5.1(a)(iii).

As a secondary issue Dr Wyk argued that as re-examination was an ex parte proceeding it was not open to a third party to oppose any amendments made during re-examination.

The legislation and its background

Before considering the procedural requirements to which Dr Wyk has drawn attention, I think it is desirable to firstly discuss his submission in principle.

The 1990 Act is based on the government response to the recommendations of the Industrial Property Advisory Committee (IPAC) in its 1984 report, Patents, Innovation and Competition in Australia.
Of particular relevance to the point at issue is the recognition in the IPAC report that there remained a substantial body of complex procedural matters in the patents legislation which was in need of revision.  IPAC accordingly recommended

“that the patents legislation be reviewed and completely redrafted to streamline procedures, particularly with a view to eliminating unnecessary steps and procedures, avoiding special categories, and establishing appropriate sanctions for non-compliance.”

In accordance with the government’s acceptance of this recommendation, the Commissioner convened a working party which reviewed the legislation for the purpose of streamlining procedures.  Two instances of where this drafting objective took effect are of note here.

Firstly, IPAC recommended that re-examination be introduced as an alternative to pre-grant opposition.  The government rejected this recommendation observing that pre-grant opposition provides a relatively inexpensive mechanism for determining issues as to validity.  Nevertheless, and in accordance with the government response to the IPAC report, a new opposition procedure recommended by the working party on streamlining was adopted to ensure the process was less open to abuse.  Secondly, IPAC’s proposal regarding the introduction of a procedure for ex parte re-examination was taken up by the government in the hope that such a procedure may reduce the cost of, or in some cases avoid the need for, instituting a revocation proceeding in a court.  In a further attempt to streamline the legislation, re-examination was (due to the retention of the pre-grant opposition procedure) made available to a third party only after the grant of a patent.

Although the effectiveness of re-examination has not yet been fully tested (cf the government response to recommendation 31 of the IPAC report), the legislative intent in the present context clearly was to provide a mechanism by which post-grant disputes involving a third party could be dealt with expeditiously.  Dr Wyk submitted that this intent was reflected by the fact that re-examination is an ex parte action, and in that only the patentee had an express right of appeal from a decision of the Commissioner.  He also noted as a matter of public interest that where re-examination is requested by a person other than the patentee, that person has recourse to the courts by way of revocation proceedings.

Section 101 gives the Commissioner power to revoke a patent either wholly or in part as a result of re-examination.  The Commissioner must not however revoke a patent without giving the patentee a reasonable opportunity to be heard.  Furthermore, the patentee may appeal to the Federal court against a decision to revoke the patent, but if a decision is made not to revoke the patent the only course of action against such a decision that is available to a third party are revocation proceedings under sec 138.

Thus although a third party does not have a right to be heard by the Commissioner in respect of the fate of the patent being re-examined - and it is in this respect alone that re-examination is ex parte - there is nothing in the legislation or its background of which I am aware to suggest that this exclusion was intended to also apply to the prosecution of any amendments made under sec 104 during re-examination as intimated by Dr Wyk. Dr Wyk also suggested that, contrary to the thrust of the recommendations of the working party on streamlining, the re-examination procedure would be protracted if amendments which arise from re-examination were open to opposition under sec 104(4).

A closely analogous situation may be found in the new opposition procedure to which I have previously referred which was put forward by the working party on streamlining and subsequently implemented in the 1990 Act.  In many typical oppositions to the grant of a patent, the applicant is provided with an opportunity to propose amendments.  Under the 1952 Act, the opponent was not in a position to assess the suitability of the amendments until their advertisement.  The working party recognised that there “is currently no mechanism for ensuring expeditious prosecution of the amendment by the applicant or patentee who may, either inadvertently or deliberately, casue [sic] major commercial difficulties for the other party by delaying the resolution of all issues”, and recommended that the opponent be allowed to comment on any amendments filed after the hearing and before they were advertised.  This recommendation is reflected in reg 10.2(7).  However, an opponent who elects to comment under this regulation is not precluded from opposing the allowance of the amendments and thus there may arise “an opposition within an opposition” which clearly would prolong the final determination of the substantive opposition.

From this it can be seen that despite the changes made to streamline its operation, the opposition procedure continued to enable a third party to oppose both the grant of a patent and the allowance of any amendments proposed during the main opposition which would delay a final decision to dispose of the opposition.  In my opinion, there is no indication that the Act intends an alteration of the rights of a third party to oppose amendments once a patent has been granted, notwithstanding that such action may draw out proceedings, and I note here that this avenue is in fact open to a person who “opposes” the grant of an extension of the term of a petty patent.

On the basis of the above, I do not agree that the right of a person to oppose amendments arising from re-examination is not in keeping with the spirit of the streamlined legislative provisions of the 1990 Act.  Dr Wyk also suggested that the alleged absence of a right to oppose in the present circumstances was somehow redressed by the availability of sec 138.  This argument is in my view logically flawed since the allowability of amendments is not a ground of revocation; the only instance where a patent may be revoked due to an amendment to the complete specification is if the amendment “was made or obtained by fraud, false suggestion or misrepresentation” (see sec 138(3)(e)).  Furthermore, and given the difficulty and cost of court action to make out this ground (and the consequential delays in determining the fate of the patent), I think it would be perverse to suggest that this was an intended outcome of the streamlined legislation.

I will now return to the specific procedural requirements to which the parties have referred. The main basis for Dr Wyk’s argument regarding these requirements is that Chapter 5 does not apply to an opposition under sec 104(4) if “the request for leave to amend is made under reg 9.5”. Mr Brett submitted that the purpose of reg 9.5 was to identify when re-examination was complete, and for this reason was not itself a provision that enables amendment of a complete specification. I agree. Dr Wyk himself conceded this point but maintained that reg 5.1(a)(iii) prohibited the operation of sec 104(4) in the circumstances prescribed by reg 9.5 which parallel those under which the present request for leave to amend was made.

However, if reg 5.1(a)(iii) was to interpreted in the manner pressed by Dr Wyk, it would have the effect of providing a procedure for amending a specification without the third party review mechanism which is available for all other amendments (see reg 10.5(3)), and thus possibly seriously encroach upon the interests of the public which the Act otherwise seeks to secure.  Given this anomaly, the reference to reg 9.5 in reg 5.1(a)(iii) is in my view clearly in error.

Entitlement to oppose

Taking acount of the various issues considered above, I can not agree with the result contended for by Dr Wyk and, consequentlty, I find that the opponent’s right to oppose under sec 104(4) is not excluded in the present circumstances by reason of reg 5.1(a)(iii). I therefore propose to consider the allowability of the amendments against the particularised grounds which the opponent has raised.

allowability of amendments

Section 102(1)

General Comments

As indicated in Merck & Co, Inc v Sankyo Co Ltd 23 IPR 415, when detemining whether a matter is in subtance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus, for an amended claim to claim matter in substance disclosed in the specification as filed, then in effect that claim must also be fairly based on the specification as filed.

The decision of the full Federal Court in Nicola Leonadis v Sartas No. 1 Pty Limited (1996) AIPC 91-239 includes a review of the law of fair basis and confirms the decision in CCOM Pty Ltd v Jeijing PtyLtd 28 IPR 48 where it was found that:

"In Rhone-Poulenc (at 11) Fullagar J. emphasised that disclosure without claim is enough. Hence, it is wrong to proceed as if testing for infringement and to seek to isolate in the body of the complete specification, or in the provisional specification, 'essential integers' or 'essential features' of an invention disclosed therein and to ask whether they correspond with the essential integers in the claim in question; cf. Coopers Animal Health Australia Limited v Western Stock Distributors Limited (1986) 67 A.L.R. 390 at 406, the decision at first instance. Nor would it be applying the statute to ask whether the earlier specifications fairly described the essential features of the invention disclosed in the later specification; cf. Yamazaki at 93, 97. Fullagar J. also pointed out that the requirement of `fair basing' on matter disclosed in an earlier specification would be senseless if what was required was that the subject matter of the claim must have been actually claimed in the earlier specification; rather, there must be `a real and reasonably clear disclosure'."

The court however did not support the proposition suggested in the CCOM decision that there was a requirement that the claim should be "plainly foreshadowed" and noted:

"If the matter is tested according to these principles, the only conclusion that can be reached is ... that the claims as expressed do not travel beyond the matter disclosed"

Furthermore, in Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 it was said at page 38,201:

“... s. 102(1) asks whether, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.  The primary issue, therefore, is not one of construction of a claim, but of construction of the specification as filed to determine what matter is in substance disclosed in it.  From that point of view, there can be no ground for excluding the assistance of context from the task of ascertaining what in substance the specification discloses.  But, of course, any special problem that there may be in relation to the construction of a claim will be relevant to the ascertainment of what the specification would claim if amended as proposed.”

In the present case I will decide the issues on the basis of the submissions made by the parties but with these general principles in mind.

Claim 1

In addressing the allowability of the amendments under sec 102(1) in terms of proposed claim 1, it was submitted that the specification as filed does not in substance disclose an outlet director part having a perimeter which is “shaped to permit disengagement of the outlet director part from a common frame of the airconditioning outlet and rotation of the director part to reorient the direction of outlet of air within the common frame” as now specified by that claim.  In taking this argument further, the opponent had two lines of attack.  Firstly, it was said with reference to the body of the specification that:

“Figure 1 shows a director part 1 raised from a common perimeter 2 with an arrow indicating that the director part 1 can be rotated and then lowered back into the common perimeter 2.  However, the director part 1 is not “shaped to permit disengagement of the outlet director part from a common frame” (underlining added for emphasis) as defined in claim 1.  Rather, the director part 1 merely rests within the common perimeter 2.”

The opponent secondly contended that:

“The director part 1 is not shaped to permit rotation within the perimeter frame.  A square or rectangular shaped director part is clearly not able to rotate within a complementary shaped portion of the common frame 2.  If the director part was circular in shape then it may be argued that this is the case.”

I must admit that I have experienced some difficulty in ascertaining what in substance the specification discloses due to the rather minimalist approach taken by the specifcation in the way it is drafted.

However, what emerges from the specification is that the outlet director part the subject of claim 1 is in use supported with a number of like director parts by a common frame to form an air conditioning outlet assembly through which the passage of air may be controlled.  In referring to the outlet assembly shown by Fig 1 of the accompanying drawings, the specification describes each director part 1 as being adapted to be held in a common perimeter 2 having support shelves 4 on which the director parts can rest.  Although there is no specific reference to the director parts “engaging” with the common perimeter, I note that this term is broadly defined by Webster’s Third New International Dictionary as “2e. to come into contact with” which clearly embraces the arrangement described above in which the director parts are “held” in the common perimeter.
It further appears from the specification that in conventional air conditioning outlet assemblies the director parts are supported by the common perimeter in such a manner that each part can be lifted from the common perimeter, rotated and then reinserted to thereby re-direct the passage of air.  Given my comments above regarding the relationship between the director parts and the common perimeter, I take this to mean that each director part is able to be “disengaged” from the common perimeter.   There is, however, no verbal indication by the specification that the conventional manner of adjusting the director parts is contemplated by the invention in its originally disclosed form.  Nevertheless, in ascertaining what in substance the specification discloses in this regard, I note from the Leonardis decision that a drawing alone can provide fair basis for an integer of a claim.  To my mind it is clear even at first glance that Fig 1 is intended to represent an outlet assembly in which the component director parts may be lifted from the common perimeter, rotated and subsequently reinserted into the common perimeter, and this much was conceded by the opponent. 

I note here for the sake of completness that a claim is not to be read in isolation from the body of the specification; it must be read in the context of the specification as a whole, and given a purposive construction (see Decor Corp v Dart Industries 13 IPR 385 at page 400). In the context of the present specification I have no doubt that in order to fulfil its stated purpose the director part could not simply be loosely supported by the common perimeter as the opponent has suggested, and there is nothing in the body of the specification to indicate anything other than that the director parts are re-oriented after being removed from the common perimeter.

On the basis of the above, I am satisfied that there is a “real and reasonably clear disclosure” in the specification as filed of the feature in question and, consequently, I do not agree that the proposed introduction of this feature into claim 1 contravenes sec 102(1).

The opponent next raised concerns about the proposed recitation in claim 1 of main spigots on the vanes which include “expanded end portions to inhibit withdrawal of the fitted main spigots from the respective aperture” in the director part frame.  As put by Mr Clark:

“As depicted in Figure 8, the specification as filed discloses press fitting of the main spigot 9 within the aperture 12 in a radial direction relative to a longitudinal axis of the vane 8.  There is no disclosure in the specification as filed of press fitting in an axial direction.  As illustrated in Figures 7 and 8, the main spigot 9 includes a reduced diameter portion formed adjacent an end thereof.  The reduced diameter portion of the main spigot 9 is press fitted in the radial direction within the open ended aperture 12.  Withdrawal of the fitted main spigot 9 from the aperture 12 is effected by radially pulling the spigot from the aperture 12 whereby the legs 13 and 14 are separated and the main spigot is pulled through the narrower gap.  Thus, the extending legs 13, 14 inhibit withdrawal of the main spigot 9 from the aperture 12.  The flanged section of the main spigot 9 being formed on the main spigot 9 adjacent the reduced diameter portion does not inhibit withdrawal of the main spigot 9 from the aperture 12 in the radial direction.  Rather, the flanged section which may arguably be construed as an expanded end portion inhibits axial movement of the main spigot 9 relative to the aperture 12.  The fitted main spigot 9 is not withdrawn from the aperture 12 axially but rather in a radial direction relative to the longitudinal axis of the vane 8.”  

Mr Brett added that the term “withdrawal” as it appeared in claim 1 had to be read in the context of the direction in which the main spigots were press fitted into the apetures of the director part frame.  When construed in this way, so the argument runs, the expanded end portions were required to inhibit withdrawal of the fitted main spigots in a radial direction for which there was no basis in the specification as filed.

In response Dr Wyk submitted that in the context of the present specification, the ambit of the word “inhibit” extended beyond the meaning pressed by the opponent and, as a consequence, there was no basis for reading “withdrawal” in a limited sense.

I agree with Dr Wyk that “inhibit” can have a number of meanings, and that in those circumstances it is permissible to look to the body of the specification (as per Decor v Dart).

As submitted for the opponent, the specification as filed is limited in its disclosure to an arrangement in which the main spigots of each vane are press fitted in a radial direction relative to a longitudinal axis of the vane.  The opening to each aperture is defined by a pair of resilient legs which are shaped to “inhibit” (viz. retard) withdrawal of the main spigot in a radial direction, and there is no suggestion that the “expanded end portions” of the main spigots play any role in such inhibition.  However, it is clear from the drawings (see Figs 7 and 8 in particular) that the expanded end portions of the main spigots are operative to “inhibit” (viz. prevent in this context) withdrawal or removal of the fitted spigots from the apertures in an axial direction.  Indeed there seems no other logical explanation for providing the main spigots with expanded end portions in the first instance.

I conclude on the basis of the foregoing that there is a “real and reasonably clear disclosure” in the specification as filed of the feature under discussion, and I therefore do not agree that the proposed introduction of this feature into claim 1 contravenes sec 102(1).

Claim 18

This claim specifies that rotation of the vanes is “solely effected by manual manipulation within the outlet director part” and thus in effect merely promotes to the statement of claims, by way of explicit reference, something which would have been implicitly understood as optional from the originally filed specification.  The level of such tacit understanding is in my opinion accurately reflected by the following passage from page 3 of the opponent’s written submissions:

“From Figures 1 to 10 accompanying the specification it seems that rotation of the vanes may be effected by any means that would not necessarily be limited to manual manipulation.  Furthermore, rotation of the vanes by manual manipulation may occur either within the outlet director part or outside the director part.”

For this reason I do not consider that claim 18 is inconsistent with the disclosure of the specification as filed and, accordingly, I find that the amendment seeking to introduce this claim is allowable under sec 102(1).

Summary

I have found that the opponent has not made out its case concerning the allowability of the amendments under sec 102(1).
Section 102(2)

Claim 1

The main contention put forward by the opponent regarding the non-compliance of claim 1 with sec 40 is that it is not clear as to what general direction the main spigots are press fitted into the apertures in the director part frame.  As argued by the opponent, if it is assumed that the main spigots are press fitted into the apertures in a radial direction relative to a longitudinal axis of the vanes, it is not clear how the expanded end portions of the main spigots “inhibit withdrawal of the fitted main spigots from the respective aperture” as stipulated by claim 1.

This point has to a certain extent been dealt with under the previously considered ground of opposition.  The conclusion drawn there was that when the context in which claim 1 is set is taken into account, the broad disclosure of the specification as filed establishes that the words “inhibit withdrawal’ are used to characterise the intended utility of the expanded end portions of preventing removal of the fitted main spigots in an axial direction.  Given that the specification as filed has not been so varied by amendment that it should receive a different construction, I do not agree that claim 1 lacks certainty as alleged and it is well to remember here that a claim is not to be construed “as a matter of abstract uninformed construction” (Allsop Inc v Bintang Ltd (1989) AIPC 90-615). By the same reasoning, claim 1 is in my view fairly based on the matter described in the specification.

The opponent also questioned the meaning of “expanded end portions”.  However, from the material before me the opponent has in my view gone out of his way to find difficulties with the wording of claim 1 which, when the specification is purposively construed, do not exist.  I am of a similar view with regard to the reference to “the director part” at line 8.

At the hearing the opponent submitted that the reference in claim 1 to “means for allowing relative movement of the control means in a direction transverse to the longitudinal axis of the vanes” was unclear.  Aside from the fact that this issue was not foreshadowed by the statement of grounds and particulars, it is clear that the test provided by sec 102(2) is confined to sec 40 matters which arise as a result of the amendment (see also the Kornelis’ Kunsthars decision).  Furthermore, and in accordance with reg 5.3(4), the only grounds for opposition to allowance of a proposed amendment of a complete specification is that the amendment does not comply with sec 102.  It therefore follows from the combined operation of these provisions that the presence of pre-existing sec 40 deficiencies which are unaffected by amendment is irrelevant to proceedings such as these.

With this in mind I note that the feature objected to by the opponent was present in claim 1 as it stood prior to amendment (ie. as accepted) and, consequently, any lack of clarity arising from this feature is not a matter which has occurred as a result of the amendments now proposed.

Other Claims

The statement of grounds and particulars has raised a number of sec 40 issues alleged to stem from the respective appendancies of claims 5, 6, 7, 9, 10 and 13.  However, and bearing in mind that a claim construction that would lead to an absurd result should be avoided wherever possible (see Henriksen v Tallon [1965] RPC 434), I do not consider that any of the claim appendancies identified in the statement lead to ambiguity.

Summary

I have found that the opponent has not made out its case concerning the allowability of the amendments under sec 102(2).

conclusion

I have found that the proposed amendments do not contravene sec 102(1) or sec 102(2) and, as a consequence, the opposition fails on all grounds relied on.  I therefore dismiss the opposition and allow the amendments. 

In accordance with reg 9.5(c)(ii), this now completes the re-examination. That being the case, it would seem from the relevant provisions that the amended specification cannot be re-examined without a fresh request being made under sec 97(2).

costs

The power of the Commissioner to award costs is discretionary, so I must take into account all elevant considerations (see American National Can Co v WR Grace & Co-Conn 29 IPR 292).

In actions before the Commissioner, costs usually follow the event.  In this case I have found in favour of the patentee.  However, I am somewhat sympathetic to the concerns expressed by Mr Brett that although invited to be heard on the reasons given in the office letter dated 7 November 1996 for directing the present opposition to proceed in the usual way, the patentee elected not to be heard at that time yet some six months later objected to “... the capacity of the opponent to oppose amendments made during re-examination”.

In written submissions filed on 18 June 1997 Dr Wyk states as follows:

“3. That the opponent was fully aware of the uncertainties of its right to oppose ever since the time that it sought the Commissioner’s direction which resulted in the written opinion contained in a letter dated 7th November 1996 to both the patentee and the opponent.  During the hearing the opponent admitted that it had its own doubt’s [sic] about whether it could properly oppose the amendments and that being the case the question begs as to why it continued the opposition process.  It is unreasonable to conclude that the patentee is at fault for actions that the opponent  undertook which action the opponent itself admitted it had doubts about.

4. The opponent points to a delay of some six months from the date that the patentee was made aware that the Commissioner had decided that an opposition could be made to the date of the hearing.  The patentee was informed of the decision in the letter dated 7th November 1996 and was advised that it could be heard on the matter but no time limit was given to be heard.  On the 5th of February 1997 the patentee sought a hearing and forwarded a fee to be heard - approximately three months from the date of first being advised.  The patentee heard back from the Commissioner on the 24th March 1997 giving the patentee two months to advise the Commissioner of an agreed date for the hearing.  The hearing was set down by agreement of the patentee and opponent ... The patentee submits that there has been no substantial delay in requesting a hearing on either the question of whether the opposition is proper or on the substance of the opposition”.

I am not entirely convinced by this line of argument since, given the nature of the Commissioner’s decision of 7 November 1996, it seems reasonable to assume that the right to oppose was no longer a matter of concern for the opponent when the matter came to hearing.  Certainly, the patentee had not indicated its dissatisfaction with the Commissioner’s decision.  Furthermore, the patentee did not at any time specifically advise the Commissioner that it wished to be heard on the question of the right to oppose amendments made during re-examination, and only made its intentions known to the opponent just prior to the hearing.  In the event I found in favour of the opponent on this point, thus affirming the direction originally given by the Commissioner to both parties.  It is also relevant to note here that the conduct of the patentee has in my opinion proven prejudicial to the opponent as well as unnecessarily protracting the opposition proceedings.

Having regard to all the circumstances, I do not believe the patentee is entitled to full costs and I therefore award four-fifths of the patentee’s costs against the opponent.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the patentee:  A.P.T.Patent and Trademark Attorneys, Adelaide

Patent attorneys for the opponent: Griffith Hack, Perth