AL-KO International Pty Ltd v Cruisemaster Australia Pty Ltd
[2020] APO 1
•9 January 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
AL-KO International Pty Ltd v Cruisemaster Australia Pty Ltd [2020] APO 1
Patent Application: 2006207859
Title:A coupling assembly
Patent Applicant: Cruisemaster Australia Pty Ltd
Opponent:AL-KO International Pty Ltd
Hearing Officer: Dr S.D. Barker – Deputy Commissioner of Patents
Decision Date: 9 January 2020
Hearing Date: Written submissions filed on 28 October 2019, 11 November 2019 and 18 November 2019
Catchwords: PATENTS – allowability of amendment after grant – none of the grounds of opposition are made out – costs awarded
Representation: Patent attorney for the applicant: Michael Buck IP
Patent attorney for the opponent: Phillips Ormonde Fitzpatrick
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2006207859
Title:A coupling assembly
Patent Applicant: Cruisemaster Australia Pty Ltd
Date of Decision: 9 January 2020
DECISION
The amendments are allowable. The opposition is unsuccessful.
I award costs in accordance with Schedule 8 against AL-KO International Pty Ltd.
REASONS FOR DECISION
Cruisemaster Australia Pty Ltd (Cruisemaster) is the patentee of patent number 2006207859. Cruisemaster filed amendments to the specification after grant of the patent. The Commissioner granted leave to amend, and the amendments were advertised. A notice of opposition to the amendments was filed by AL-KO International Pty Ltd (AL-KO). The opposition was heard by means of written submissions.
The specification
The specification relates to couplings that can be used to connect a vehicle to a trailer. The specification acknowledges that previously this has been achieved by a tow ball connecting to a shackle. However, it is not always easy to align the shackle of the trailer to the tow ball of the vehicle. The invention relates to the use of a pin in place of a ball.
The amendments
The proposed amendments introduce a considerable amount of new text to the description. This text particularly relates to a "further aspect of the present invention"[1], then "another aspect of the present invention"[2], then "a preferred embodiment of the invention"[3] and a "further aspect of the present invention".[4]
[1] Page 3 of the specification as proposed to be amended.
[2] Page 5 of the specification as proposed to be amended.
[3] Page 5 of the specification as proposed to be amended.
[4] Page 6 of the specification as proposed to be amended.
The proposed amendments also add 20 claims. There are three new independent claims: claims 12, 20 and 31. Claims 1 – 10 are not altered by the proposed amendments. Claim 11 is altered only to the extent that the word "and" is deleted at one instance (nothing flows from this amendment).
The legislation
The amendments to the specification are governed by section 102 and section 104 of the Patents Act 1990. Changes made to section 102 by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent.[5] The opposition is governed by Chapter 5 of the Patents Regulations 1991 as amended by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).[6]
[5] The request for examination was filed on 22 March 2010, prior to the commencement of Schedule 1 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
[6] The notice of opposition was filed on 14 January 2019, being after the commencement of Schedule 3 of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Section 104 states that the applicant is entitled to request amendments:
(1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a)removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b)correcting a clerical error or an obvious mistake.
Section 104(5) then sets out the criteria for allowability of an amendment:
(5) The Commissioner must not allow an amendment that is not allowable under section 102.
Section 102 as it applies to this opposition relevantly states:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2) or (3).
It is not in dispute that the present amendment was made after the relevant time (which is set out in section 102(2A)). The pertinent part of section 40 as it applies to the present case reads as follows:
(3) The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
The expression "as a result of the amendment" has been considered on many occasions. In RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd[7] Carr and Sundberg JJ discussed section 102(1) as it stood at that time:
"That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted (and as it stood at the hearing of the motion at first instance) on the one hand and, on the other hand, as the specification would read if amended in the manner sought. ... The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression 'matter not in substance disclosed in the specification as filed'. The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words 'as a result of the amendment' are not to be confused with the expression 'after the amendment'."
[7] [1998] FCA 1358, 42 IPR 353 at page 360.
Deficiencies that do not arise "as a result of the amendment" are not properly matters that can be considered under section 102.[8]
[8] [2009] FCA 1019, 83 IPR 42 at [28].
Section 104(4) provides for opposition to an amendment:
(4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment.
The grounds on which an amendment may be opposed are that the amendment is not allowable under section 102 or regulation 10.3.[9]
[9] Regulation 5.21.
The opposition
The statement of grounds and particulars identifies the grounds of opposition as section 102(1), section 102(2)(a), and section 102(2)(b). AL-KO continues to press each ground, but does not press each particular. I will not consider the matters that are no longer pressed.
The evidence filed in the opposition is as follows.
Evidence Declarant Date Reference Exhibits In Support Colin Young 10 May 2019 Young 1 CY-1 to CY-2 In Answer Christopher John Goddard 13 July 2019 Goddard CG-1 to CG-4 Duncan Bartlett Gilmore 16 July 2019 Gilmore DBG-1 to DBG-3 In Reply Colin Young 28 August 2019 Young 2 -
Exhibit CG-5 to the Goddard declaration was included in the opposition by a direction under regulation 5.23.
Consideration
The patent relates to a coupling which has two basic elements:
(i)a first coupling attached to the towing vehicle, having an upright towing pin; and
(ii)a second coupling attached to the towed vehicle, having a hole that receives the towing pin.
The way in which these integers are described in the specification and defined in each claim is quite different. I will briefly discuss these integers as they are defined in the claims that are relevant to the opposition. I will then consider each of the grounds of opposition and the claims to which they relate. Claim 1 was the broadest claim in the specification as accepted. Consequently claim 1 is the reference point for most of the considerations in this opposition
The coupling as described
The invention as described relates to the use of a pin in place of the ball that is normally used in towing. The pin matches an opening having at least one internal surface converging inwardly, and the pin cooperates with the internal surface of the opening to move the socket into alignment with the pin. This concept can be better appreciated by considering the Figures 2 to 6 of the specification.
The coupling defined by claim 1
Claim 1 is not altered by the amendment. I will refer to claim 1 as "claim 1 before amendment" to make it clear that this is the reference point for consideration. Claim 1 before amendment is short, and reads:
A coupling assembly for coupling a towing vehicle to a towed vehicle, comprising:
a bracket for fastening to the towed vehicle;
a socket coupled to the bracket for relative movement therebetween and having an opening for receiving a substantially upright towing pin for fastening to the towing vehicle
the opening having an entrance and at least one internal surface converging inwardly therefrom;
wherein as the pin is received into the opening, the pin cooperates with said surface to thereby move the socket for alignment with the pin.The first coupling is a substantially upright towing pin, which is received into the opening of the second coupling and cooperates with the second coupling to achieve alignment. The second coupling is a socket, having an opening with an entrance and an internal surface of a particular shape.
The coupling defined by claim 12 as proposed to be amended
Claim 12 as proposed to be amended reads:
A coupling assembly for coupling a towing vehicle to a towed vehicle, comprising:
a first coupling comprising a substantially upright towing pin for fastening to the towing vehicle;
a bracket for fastening to the towed vehicle and a second coupling comprising a link coupled to the bracket for relative movement therebetween, the link having a coupling hole configured to receive the towing pin, the coupling hole having an opening having an entrance and at least one internal surface converging inwardly therefrom;
the substantially upright towing pin having an upper portion with a first sloping peripheral surface and a lower portion with a second sloping peripheral surface, wherein the width of a lower end of the lower portion is greater than the width of a lower end of the upper portion of the towing pin; and
wherein as the towing pin is received into the opening, at least one of the said sloping peripheral surfaces of the pin cooperates with said at least one converging internal surface of the opening to thereby move the link for alignment with the towing pin.The first coupling is a substantially upright towing pin which is received into the opening of the second coupling and cooperates with the second coupling to achieve alignment. The second coupling is a link, having a hole which has an entrance and an internal surface of a particular shape.
The coupling defined by claim 20 as proposed to be amended
Claim 20 as proposed to be amended reads:
A coupling assembly for coupling a towing vehicle to a towed vehicle, comprising:
a first coupling comprising a substantially upright towing pin for fastening to the towing vehicle and having an upper portion with a first sloping peripheral surface and a lower portion with a second sloping peripheral surface, the width of the lower end of the lower portion being greater than the width of the lower end of the upper portion;
a second coupling including a socket for receiving the towing pin formed by a first portion of the second coupling which has a coupling hole;
the coupling hole comprising an opening of the socket the opening having an entrance and at least one internal surface converging inwardly therefrom;
a third coupling including a bracket for fastening to the towed vehicle, the second coupling being coupled to the bracket for relative movement therebetween;
wherein as the towing pin is received into the opening, at least one of the said sloping peripheral surfaces of the towing pin cooperates with said at least one inwardly converging internal surface to thereby move the socket for alignment with the towing pin.The first coupling is a substantially upright towing pin which is received into a socket of a second coupling and cooperates with the second coupling to achieve alignment. The second coupling includes a socket, having an entrance and an internal surface of a particular shape. There is also a third coupling that links the towed vehicle to the second coupling and allowing relative movement between the vehicle and the second coupling.
The coupling defined by claim 31 as proposed to be amended
Claim 31 as proposed to be amended reads:
A coupling for coupling a towing vehicle to a towed vehicle, comprising:
a bracket for fastening to the towed vehicle;
a link coupled to the bracket by a rotatable shaft for relative movement therebetween, the link having a rear wall, side walls and a base wall with a hole therebetween for receiving a substantially upright towing pin for fastening to the towing vehicle;
the through hole having an entrance, an upper opening of smaller width than the entrance, and at least one sloping internal surface between the upper opening and the entrance converging inwardly therefrom; and
wherein the towing pin is received into the hole, the pin cooperates with said at least one internal surface to thereby move the coupling link for alignment with the pin.The coupling involves a substantially upright towing pin which is received into a hole of a link and cooperates with the link to achieve alignment. The hole has an internal surface of a particular shape.
Section 102(1)
The statement of grounds and particulars lists 11 particulars for this ground.[10] In general these particulars assert that there is an inconsistency between the claims as proposed to be amended and the description. This is only a ground of opposition if the inconsistency arises "as a result of the amendment". Where any alleged inconsistency was present in the specification before amendment the ground of opposition is not made out. I will deal with each of the particulars in turn.
(i)The coupling hole
[10] Some of the particulars are no longer pressed, and they will not be considered in this decision.
The particulars assert that claims 12, 20 and 31 as proposed to be amended do not require the upper and lower portions of the towing pin to be received in the coupling hole. Claim 12, for instance, refers to this aspect as follows:
"a coupling hole configured to receive the towing pin"
and
"as the towing pin is received into the opening, at least one of the said sloping peripheral surfaces of the pin cooperates with said at least one converging internal surface of the opening"
I agree that interpreted literally this could mean that only part of the towing pin is received into the coupling hole. However, this does not arise as a result of the amendment. While claim 12 is introduced as a result of the amendment, the claims as a whole do not claim this subject matter "as a result of the amendment". Claim 1 before amendment relevantly says "receiving a substantially upright towing pin for fastening to the towing vehicle". There is no explicit requirement that the upper and lower portions of the towing pin are received into the coupling hole. As this feature was part of the invention as claimed before amendment, it has not been established that the claims include this aspect of the invention "as a result of the amendment".
(ii)Movement between the bracket and the second coupling
The particulars assert that claims 12 and 20 as proposed to be amended permit any form of movement between the bracket and the second coupling, rather than merely pivotal or rotational movement. I agree that claim 12 as proposed to be amended refers to "relative movement therebetween". However, claim 1 before amendment used identical language. As this feature was part of the invention as claimed before amendment, it has not been established that the claims include this aspect of the invention "as a result of the amendment".
(iii)Connection of the second coupling to the bracket
The particulars assert that claims 12, 20 and 31 as proposed to be amended do not require that the second coupling is connected to the bracket via a cylindrical shaft. Claim 1 before amendment also does not contain a requirement for a cylindrical shaft. As this feature was not part of the invention as claimed before amendment, it has not been established that the alleged inconsistency arises "as a result of the amendment".
(iv)Shape of the coupling hole
The particulars assert that claims 12, 20 and 31 as proposed to be amended do not limit the shape of the coupling hole other than that it has a constant tapering shape or a substantially frusto conical shape. AL-KO assert that the hole should have an intermediate section which is located between the first and third sections and is either a constant tapering gradient or a substantially frusto conical shape. However, reference to claim 1 before amendment shows that it refers to the coupling hole as having "at least one internal surface converging inwardly therefrom". In other words, a substantially frusto conical shape. It appears that the claims as proposed to be amended define this feature in the same way as claim 1 before amendment. As the limitations in question were not a feature of the invention as claimed before amendment, it has not been established that the claims exclude these aspects "as a result of the amendment".
(v)The upper and lower sloping portions of the pin and socket take part in the self-centring action
The particulars assert that claims 12, 20 and 31 as proposed to be amended do not require the upper and lower sloping portions of the socket to cooperate with the upper and lower sloping portions of the pin to achieve self-centring. It seems to me that claim 1 before amendment is in similar, if not broader, terms:
"the opening having an entrance and at least one internal surface converging inwardly therefrom;
wherein as the pin is received into the opening, the pin cooperates with said surface to thereby move the socket for alignment with the pin."[11][11] Claim 1 before amendment.
As the requirement for the upper and lower sloping portions of the socket to cooperate with the upper and lower sloping portions of the pin to achieve self-centring was not a feature of the invention as claimed before amendment, it has not been established that the claims exclude this aspect "as a result of the amendment".
(vi)A socket
The particulars assert that claim 20 as proposed to be amended refers to the second coupling as a socket, but there is no disclosure in the specification of a socket for receiving the pin. Claim 1 before amendment refers to a socket. As this feature was part of the invention as claimed before amendment, it has not been established that the claims include this aspect of the invention "as a result of the amendment".
(vii)Rotation of the socket
The particulars assert that claim 22 as proposed to be amended recites a rotatable movement not limited to pivotal rotation about an axis perpendicular to the longitudinal axis of the cylindrical element. Claim 1 before amendment refers to "relative movement" between the socket and the pin, with no limitation of the nature of the movement. As this feature was part of the invention as claimed before amendment, it has not been established that the claims include this aspect of the invention "as a result of the amendment".
(viii)Peripheral surfaces converging toward the head
The particulars assert that claim 26 as proposed to be amended recites that both peripheral surfaces of the towing pin converge toward the head of the pin, and that this feature is not in substance disclosed in the specification as filed. Claim 1 before amendment has no limitation in relation to this feature. Claim 7 before amendment (which is appended to claim 1) refers to "at least one surface converging toward the head". As this feature was part of the invention as claimed before amendment, it has not been established that the claims include this aspect of the invention "as a result of the amendment".
(ix)Conclusion
It has not been established that the claims include any of the aspects of the invention asserted in the particulars "as a result of the amendment". It follows that no ground of opposition arises under section 102(1).
Section 102(2)(a)
The question posed by section 102(2)(a) may be thought of as whether the amendment "makes anything an infringement which would not have been an infringement before the amendment".[12] The particulars of this ground state:
"In the specification before amendment, claim 1 recited that a component of the coupling assembly is a socket, having an opening which receives a towing pin. Proposed claim 12 recites that the coupling assembly has a link having a hole configured to receive a towing pin. The term 'socket' is narrower in scope than what is described by 'a link having a hole configured to receive a towing pin'. Accordingly, proposed claim 12, and claims dependent therefrom, do not fall within the scope of claim 1 of the specification before amendment. Similarly, claim 31 does not fall within the scope of claim 1 of the specification before amendment as it also recites that the towing pin is received into the hole of the link but does not recite that the arrangement is a socket."
[12] Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814, 87 IPR 516 at [40].
The essence of this matter is that the arrangement in claim 1 uses a socket, whereas claim 12 as proposed to be amended has a link. AL-KO alleges that the link is a broader concept that the socket, so that certain arrangements will infringe claim 12 as proposed to be amended that would not have infringed claim 1 before amendment.
(i)What is a socket as used in claim 1
The relevant part of claim 1 before amendment states:
"a socket … having an opening for receiving a substantially upright towing pin … the opening having an entrance and at least one internal surface converging inwardly therefrom; wherein as the pin is received into the opening, the pin cooperates with said surface to thereby move the socket for alignment with the pin"
Mr Young declared that he understands a socket to be:
"a hollow part or piece that is shaped to receive and hold another element"[13]
"I understand that the socket must be shaped so that there is a very close fit between the socket and the component and this is a feature of all sockets."[14]
[13] Young 1 at [35(a)].
[14] Young 2 at [19].
Mr Goddard has similar views derived from the Oxford Dictionary of Mechanical Engineering:
"a recess (often cylindrical) into which a component is intended to fit, for purposes of location or gripping"[15]
[15] Goddard at [43].
Mr Gilmore refers to the Macquarie Dictionary to similar effect:
"The Macquarie Dictionary (2005) defines socket as 'a hollow part or piece for receiving and holding some part or thing'."[16]
[16] Gilmore Annexure DBG-3 at point 11.
Mr Goddard has a similar understanding:
"it describes a recess into which a component is intended to fit for the purpose of being located in the recess"[17]
[17] Goddard at [46].
However, Mr Gilmore states that the socket does not have to hold the pin tightly:
"The socket in this case does not have to hold tightly – nothing is said about tightness, and for the coupling assembly to work effectively, there must be a degree of clearance and ability to move."[18]
[18] Gilmore Annexure DBG-3 at point 11.
I think Mr Gilmore sees the socket as fitting the pin rather than gripping the pin. This seems to be a sensible understanding of the claim. The device is a coupling for towing a vehicle. The socket needs to hold the pin in such a way that it is secure but there can be rotational movement about the axis of the pin, otherwise the coupling will be of limited utility for towing vehicles. The views of Mr Gilmore seem to take this into account more than the views of the other declarants.
Mr Young considers that an arrangement in which the pin extends beyond the recess is more correctly described as a 'through hole' rather than a socket.[19] I accept that as an abstract concept there is a distinction between these terms. Mr Young does not indicate whether he would understand a socket, in the context of the device claimed in claim 1, to include a through hole.
[19] Young 2 at [8].
In the context of the specification where the Figures reproduced above demonstrate that the second coupling is a hole, the socket in claim 1 before amendment must be understood as including a through hole.
(ii)What is a link as used in claim 12 as proposed to be amended
AL-KO asserted that the link is configured to "receive" the towing pin, but not necessarily to hold it in a close fit. The link is defined in claim 12 as proposed to be amended as:
"the link having a coupling hole configured to receive the towing pin, the coupling hole having an opening having an entrance and at least one internal surface converging inwardly therefrom … wherein as the towing pin is received into the opening, at least one of the said sloping peripheral surfaces of the pin cooperates with said at least one converging internal surface of the opening to thereby move the link for alignment with the towing pin"
The link is characterised by a coupling hole. The coupling hole has an opening which itself has an entrance to receive the towing pin. Mr Young declared:
"Proposed claim 12 states that the link is coupled to the bracket for relative movement there between. I understand 'coupled' to mean connected or joined. Ordinarily, I understand this to describe the link being directly connected or joined to the bracket."[20]
[20] Young 1 at [37(c)(i)].
Mr Young notes that it is not necessary for all of the towing pin to be located in the coupling hole:
"The towing pin can be 'received' in the coupling hole as required in claim 12 without the entirety of the towing pin being located in the coupling hole."[21]
[21] Young 1 at [37(a)(i)].
Mr Gilmore considers that the terms "socket", "link" and "hollow part or piece" are synonymous:
"The 'link' in Proposed Claim 12 is the same item as the 'socket' or 'hollow part or piece' in proposed Claim 20."[22]
[22] Gilmore Annexure DBG-3 at point 11.
There is a general presumption that the use of different terminology implies a different meaning. However, that presumption must yield to the facts of the case. In the present case the link receives the towing pin, and has at least one internal surface converging inwardly to cooperate with a sloping surface of the pin to achieve alignment. I would describe this as the pin "fits" the link.
(iii)Is a "link" broader than a "socket"
It follows from the above that I consider that a link and a socket, in the context of the present claims, are different words for the same thing. The change in language does not lead to anything becoming an infringement of claim 12 as proposed to be amended that would not have been an infringement of claim 1 before amendment. No ground of opposition arises under section 102(2)(a).
Section 102(2)(b)
AL-KO alleges that as a result of the amendment there would be a lack of clarity in claim 20 with respect to the coupling hole. Claim 20 as proposed to be amended has the following passage of text in relation to the coupling hole:
"a second coupling including a socket for receiving the towing pin, formed by a first portion of the second coupling which has a coupling hole;
the coupling hole comprising an opening of the socket the opening having an entrance and at least one internal surface converging inwardly therefrom;"AL-KO submitted:
"When interpreting a claim, it is reasonable to assume that different words within the same claim define different features. Thus it would be assumed that the 'entrance' referred to in amended claim 20 identifies a different feature to the 'opening'."[23]
[23] AL-KO submissions filed 28 October 2019 at [53].
They argue that it follows that the opening and entrance are different, and thus that the socket has an entrance in addition to an opening. Since an opening is itself an entrance, there must be two entrances. I do not agree with this construction. I consider that the plain meaning of the words quoted above is that the opening has both an entrance and an internal surface. The socket, opening and the coupling hole seem to be roughly synonymous, but this does not necessarily equate to a lack of clarity. The meaning of the words is plain, so the cumbersome way of saying it does not lead to a lack of clarity.
AL-KO's submissions also make reference to claim 12. For similar reasons there is no lack of clarity in relation to claim 12. No ground of opposition arises under section 102(2)(b).
Conclusion
None of the grounds of opposition are made out. The amendments are allowable.
Costs
Both parties made simple submissions seeking costs. Cruisemaster has been successful, and I can see no reason why costs should not follow the event. I will award costs against AL-KO.
Dr S.D. Barker
Deputy Commissioner of Patents
0
3
0