Aluminium Specialties Group Pty Ltd v Dezinal Pty Ltd - [2022] APO 28

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aluminium Specialties Group Pty Ltd v Dezinal Pty Ltd [2022] APO 28
Patent Application: 2016256750

Title:A Drain Grate Assembly

Patentee:Dezinal Pty Ltd

Opponent:Aluminium Specialties Group Pty Ltd

Delegate:R Subbarayan

Decision Date: 13 April 2022

Hearing Date: Written submissions filed on 2 March 2022

Catchwords: PATENTS - opposition under section 104 – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether as a result of the amendments, the claims are not supported or not clear – amendments allowable – costs awarded against the opponent

Representation: Patent attorney for the patentee: Spruson & Ferguson
Patent attorney for the opponent: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016256750

Title:A Drain Grate Assembly

Patentee:Dezinal Pty Ltd
Date of Decision: 13 April 2022
DECISION

The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed or lead to the claims lacking support or clarity.
I therefore allow the amendment request of 7 July 2021.
I award costs against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application AU 2016256750 in the name of Dezinal Pty Ltd (the patentee) was filed on 10 November 2016 and claims an earlier priority date of 14 April 2016. Following examination, the patent was granted on 5 October 2017.
On 21 April 2021, FPA Patent Attorneys Pty Ltd filed a request for re-examination of the patent together with new prior art information that they submitted rendered the claims of the granted patent lacking in novelty and/or inventive step.
On 18 June 2021, the Commissioner issued a re-examination report finding that all of the granted claims bar one lacked novelty and/or inventive step in light of the new prior art information.
On 7 July 2021, the patentee responded with proposed amendments to the claims which they submitted overcomes the objections raised in the re-examination report.
On 26 July 2021, the Commissioner issued another re-examination report advising that the proposed amendments when allowed would overcome the objections raised in the previous re-examination report.
On 13 August 2021, the Commissioner issued correspondence advising that the proposed amendments have been found to be allowable and will be advertised for opposition purposes in the Australian Official Journal of Patents dated 26 August 2021.
On 25 October 2021, Aluminium Specialties Group Pty Ltd (the opponent) filed a notice of opposition to the allowance of the amendments. This was followed up by a statement of grounds and particulars (SGP) that was filed on 25 November 2021. Neither party filed any evidence.
As the parties agreed for the opposition to be heard through written submissions, on 28 January 2022, the Commissioner made a direction setting timeframes for the filing of written submissions.
The written submissions comprising submissions in support, submissions in answer and submissions in reply were completed on 2 March 2022.
THE RELEVANT LAW
The application was filed on 10 November 2016, and the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB) therefore apply to the present application.
The requirements for the allowability of amendments are governed by subsections 102 (1) and (2) which state that:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)   the complete specification as filed;
(b)   other prescribed documents (if any).
(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), (3) or (3A).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment. If any of these matters was pre-existing then it will not result in an amendment being not allowable.[1]
[1] Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019.
SPECIFICATION
The patent pertains to a drain grate assembly for a building threshold that incorporates both a drain and a sill for mounting a door or window. The present invention is best understood with reference to figures 1 and 2 and the corresponding description in the specification of the granted patent that are reproduced below.

“[00028] According to an embodiment of the present invention, there is provided a
building threshold drain grate assembly 100 as shown in Figure 1. The assembly 100 includes a drain grate 102, and an adjacent sill 104 for mounting at least one door or window.
[00029] Furthermore, the assembly 100 includes a lower sump 106 for collecting water from the drain grate 102 and the sill 104. The portable sump 106 also functions as a holder for concurrently holding the drain grate 102 and the sill 104. Advantageously, the sump 106 can be readily installed in flooring 108 so as to effectively simultaneously install the held drain grate 102 and sill 104. The drain grate 102 and sill 104 can be simply sat in the sump 106 once it is in the flooring 108, in turn, including subflooring covered by a waterproof membrane. The flooring 108 also includes tiles or carpet (not shown) on the waterproof membrane.
[00030] Advantageously, the sump 106 collects more water than prior art sumps, which collect water from a drain grate only, thereby reducing the chance of sump overflow. The sump assembly 100 also includes a drain 110 beneath the sill 104, and not the grate 102 which is more prone to passing debris. Advantageously, more water can be effectively drained compared with prior art sumps, and with less chance of blockage issues owing to the increased water volume thereby further reducing the chance of sump overflow”.
The patent ends with 20 claims that are reproduced below.
1. A drain grate assembly for a building threshold, the assembly including: a drain grate including drainage holes arranged in two-dimensions; a sill for receiving and mounting at least one door or window; and a portable extruded holder for holding the drain grate and the sill, the drain grate and the sill being separate parts.
2. A drain grate assembly as claimed in claim 1, wherein the drain grate and sill can be simply sat in the holder separately.
3. A drain grate assembly as claimed in claim 1 or claim 2, wherein the holder includes a sump for collecting water from the drain grate and the sill.
4. A drain grate assembly as claimed in any one of the preceding claims, wherein the assembly includes a drain beneath the sill, and not the grate which is more prone to passing debris.
5. A drain grate assembly as claimed in claim 3, wherein the collected water passes through the sill.
6. A drain grate assembly as claimed in claim 3, wherein the collected water passes through the grate.
7. A drain grate assembly as claimed in any one of the preceding claims, wherein the sill is wider than the drain grate.
8. A drain grate assembly as claimed in any one of the preceding claims, wherein the holder defines a partition for partitioning the drain grate and sill.
9. A drain grate assembly as claimed in claim 8, wherein the partition defines at least one water flow aperture through which water can flow.
10. A drain grate assembly as claimed in any one of the preceding claims, wherein the holder defines a drain grate receptacle for receiving the drain grate.
11. A drain grate assembly as claimed in claim 10, wherein the drain grate receptacle includes a pair of shelves upon which the drain grate rests.
12. A drain grate assembly as claimed in claim 10 or claim 11, wherein the holder defines a drain grate collection chamber beneath the drain grate receptacle.
13. A drain grate assembly as claimed in any one of the preceding claims, wherein the holder defines a sill receptacle for receiving the sill.
14. A drain grate assembly as claimed in claim 13, wherein the sill receptacle includes a pair of shelves upon which the sill rests.
15. A drain grate assembly as claimed in claim 13 or claim 14, wherein the holder defines a sill collection chamber beneath the sill receptacle.
16. A drain grate assembly as claimed in any one of the preceding claims, wherein the holder defines a pair of fur seal holders for holding fur seals to locate the sill.
17. A drain grate assembly as claimed in any one of the preceding claims, wherein the grate and sill sit flush in the holder.
18. A drain grate assembly as claimed in any one of the preceding claims, wherein the sill and/or drain grate are extruded; or the assembly is portable.
19. A drain grate assembly as claimed in any one of the preceding claims, wherein the grate include protruding members to facilitate removal of debris from footwear.
20. A drain grate assembly as claimed in any one of the preceding claims, wherein the drainage holes are arranged in rows and are offset slots.
The proposed amended claims read as follows with strikethroughs indicating deletions to the granted claim set and underlining indicating new features added to the granted claim set.
1.       A drain grate assembly for a building threshold, the assembly including: a drain grate including drainage holes arranged in two-dimensions;
a sill for receiving and mounting at least one door or window; and
a portable extruded holder for holding the drain grate and the sill, the drain grate and the sill being separate parts;
wherein the holder has a substantially planar base extending beneath the drain grate and sill.
2.A drain grate assembly for a building threshold, the assembly including:
a drain grate including drainage holes arranged in two-dimensions;
a sill for receiving and mounting at least one door or window; and
a portable extruded holder for holding the drain grate and the sill, the drain grate and the sill being separate parts; ~~A drain grate assembly as claimed in claim 1,~~
wherein the holder has outermost opposed arms between which the drain grate and sill are located, the arms being of substantially the same length.
3.A drain grate assembly for a building threshold, the assembly including:
a drain grate including drainage holes arranged in two-dimensions;
a sill for receiving and mounting at least one door or window; and
a portable extruded holder for holding the drain grate and the sill, the drain grate and the sill being separate parts;
wherein the perimeter of the holder is substantially U-shaped.
~~drain grate and sill can be simply sat in the holder separately.~~
~~3.A drain grate assembly as claimed in claim 1 or claim 2, wherein the holder includes a sump for collecting water from the drain grate and the sill.~~
4.A drain grate assembly for a building threshold, the assembly including:
a drain grate including drainage holes arranged in two-dimensions;
a sill for receiving and mounting at least one door or window; and
a portable extruded holder for holding the drain grate and the sill, the drain grate and the sill being separate parts ~~A drain grate assembly as claimed in any one of the preceding claims~~,
wherein the assembly includes a drain beneath the sill, and not the grate which
is more prone to passing debris.
5.A drain grate assembly for a building threshold, the assembly including:
a drain grate including drainage holes arranged in two-dimensions;
a sill for receiving and mounting at least one door or window; and
a portable extruded holder for holding the drain grate and the sill, the drain grate and the sill being separate parts;
wherein the height of the holder is no greater than a diameter of a drainage hole in the holder.
56.     A drain grate assembly as claimed in as claimed in any one of the preceding claims ~~claim 3~~, the holder including a sump for collecting water from the drain grate and the sill, wherein the collected water passes through the sill.
6.~~A drain grate assembly as claimed in claim 3, wherein the collected water passes through~~ and the grate.
7.A drain grate assembly as claimed in any one of the preceding claims, wherein the sill is wider than the drain grate.
8.A drain grate assembly as claimed in any one of the preceding claims, wherein the holder defines a partition for partitioning the drain grate and sill.
9.A drain grate assembly as claimed in claim 8, wherein the partition defines at least one water flow aperture through which water can flow.
10.A drain grate assembly as claimed in any one of the preceding claims, wherein the holder defines a drain grate receptacle for receiving the drain grate.
11.A drain grate assembly as claimed in claim 10, wherein the drain grate receptacle includes a pair of shelves upon which the drain grate rests.
12.A drain grate assembly as claimed in claim 10 or claim 11, wherein the holder defines a drain grate collection chamber beneath the drain grate receptacle.
13.      A drain grate assembly as claimed in any one of the preceding claims, wherein
the holder defines a sill receptacle for receiving the sill.
14.      A drain grate assembly as claimed in claim 13, wherein the sill receptacle
includes a pair of shelves upon which the sill rests.
15.      A drain grate assembly as claimed in claim 13 or claim 14, wherein the holder
defines a sill collection chamber beneath the sill receptacle.
16.      A drain grate assembly as claimed in any one of the preceding claims, wherein
the holder defines a pair of fur seal holders for holding fur seals to locate the sill.
17.      A drain grate assembly as claimed in any one of the preceding claims, wherein
the grate and sill sit flush in the holder.
18.      A drain grate assembly as claimed in any one of the preceding claims, wherein
the sill and/or drain grate are extruded; or the assembly is portable.
19.      A drain grate assembly as claimed in any one of the preceding claims, wherein
the grate include protruding members to facilitate removal of debris from footwear.
20. A drain grate assembly as claimed in any one of the preceding claims, wherein the drainage holes are arranged in rows and are offset slots.
GROUNDS OF OPPOSITION
The opponent has submitted that the proposed amendments are not allowable because, as a result of the amendment, the specification would claim matter that extends beyond matter disclosed in the complete specification as filed (section 102(1)) and because, as a result of the amendment, the specification would not comply with subsection 40(3) as the amended claims lack support and are not clear (section 102(2)(b)).
LEGAL PRINCIPLES
Before I discuss the actual issues raised by the opponent, I will briefly set out the legal principles that apply in the present opposition.
Section 102(1) - Claim or disclose matter that extends beyond that disclosed at filing
Subsection 102(1) was considered by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328, who noted as follows:
“215. First, as has been pointed out, the test is a strict one.
216. Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.
217. Third, the required disclosure may be express or implied, but on any view must be clearly and unambiguously so. In this regard, a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.
218. Fourth, context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application”.
Section 40 (3) - The claim(s) must be supported by matter disclosed in the specification.
The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 at [546]- [547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
Section 40 (3) - The claim(s) must be clear
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“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”
The requirement for clarity will be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Further, “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use” (Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81])
CONSIDERATION
Although the opponent has submitted that the amendments are not allowable under both section 102(1) and 102(2)(b), it is clear from the opponent’s submissions that the issues under both these grounds are very similar. Hence, I will consider these grounds together.
Claim 1 - “the holder has a substantially planar base extending beneath the drain grate and sill”.
The opponent’s submissions regarding amended claim 1 can be summarised as follows:
·There is no specific reference in the description to the base of the holder having a base that is substantially planar.
·This feature can only be deduced from the figures, as can be seen in figure 2 where the base has been highlighted.
·It is clear from the figures that the base is flat and there is no disclosure that the base can be anything other than perfectly flat.
·However the words ‘substantially planar’ in the amended claim includes within its scope a base that can deviate from being flat by a certain amount.
·Hence the amendment to claim 1 results in the specification claiming matter that extends beyond that disclosed in the complete specification as filed.
·For the same reasons, amended claim 1 also lacks support.
·Amended claim 1 also lacks clarity as it is unclear whether the definition of the ‘base’ being ‘substantially planar’ is intended to apply to the entire base or its upper surface, or its lower surface.

While it is true that the description does not describe in words that the base of the holder is planar, it is evident from the figures that it is planar or flat. Hence, there is clear disclosure of this feature in the specification as filed. The opponent’s argument is that the phrase ‘substantially planar’ encompasses configurations in which the base need not be perfectly flat and there is no support for this in the description or figures.
I do not find this argument persuasive. All that the inclusion of the word ‘substantially’ does is to cover those situations where the base may not be perfectly planar or flat due to manufacturing tolerances and minor imperfections but would still provide the same benefits as a perfectly planar base. The use of the term ‘substantially’ to qualify the shape, orientation or configuration of a feature of an apparatus is very much commonplace in claim drafting. Furthermore, there is nothing in the specification as filed to suggest that the base of the holder must be perfectly planar. I am satisfied that there is a clear and unambiguous disclosure of this feature in the specification as filed. Claim 1, as a result of the amendment, does not extend beyond the disclosure of the specification as filed and nor does it lack support.
In relation to the lack of clarity argument, it is clear from the figures that it is the entire web forming the base that is substantially planar. Any ambiguity, if it exists, may be readily resolved by referring to the figures. Claim 1, as a result of the amendment, does not lack clarity.
Claim 2 - “the holder has outermost opposed arms between which the drain grate and sill are located, the arms being of substantially the same length”.
The opponent’s submissions regarding amended claim 2 can be summarised as follows:
·There is no explicit reference in the description to the sump/holder having two opposed arms of substantially the same length between which the grate and sill are located.
·If the left and right hand flanges depicted in figure 2 are to be considered as the two opposed arms, they are clearly of the same length.
·However as claim 2 defines that the arms are of substantially the same length, it includes within its scope arms that can deviate from having the same length by a certain amount.
·Hence the defined feature of the arms being of substantially the same length extends beyond the disclosure of the specification as filed and also lacks support.
·This feature also lacks clarity as the person skilled in the art would not be able to ascertain what level of precision is required for the opposed arms to fall within the feature of being of “substantially the same length”.
While it is true that the description does not describe in words that the holder has outermost opposed arms between which the drain and sill are located, it is very evident from figure 2 that the holder has opposed outer arms or flanges (highlighted in figure 2 reproduced earlier under the heading “Specification”) between which the drain grate and sill are located and that they are of similar length. There is nothing in the specification to suggest that these arms need to be exactly the same length. The use of the term ‘substantially’ serves no more than cover those situations where there may be slight variations in the length of the arm, due to manufacturing tolerances for example, without departing from the scope of the invention. I am not satisfied that claim 2, as a result of the amendment, extends beyond the disclosure of the specification as filed or lacks support.
In relation to the clarity argument regarding the level of precision required, in my view, the person skilled in the art would understand that the length of the arms can have minor variations in length to take into account manufacturing tolerances. The claim provides a workable standard. Claim 2, as a result of the amendment, does not lack clarity.
Claim 3 - “the perimeter of the holder is substantially U-shaped”
The opponent’s submissions regarding amended claim 3 can be summarised as follows:
·There is no reference to a perimeter of the holder or that it is substantially U-shaped in either the description or the claims as filed.
·Perimeter is defined as “the outer edge of an area of land or the border around it” (Cambridge Dictionary online), but the claim does not specify the features that define the relevant outer edge or border of the holder.
·The perimeter or border of the holder “is defined by the outlines of the left hand flange, the right hand flange, the connecting web and the wall partition 200 in cross-section (as highlighted in the annotated version of Figure 2 reproduced below)” and this cannot be considered to substantially ‘U-shaped’.
·The person skilled in the art would not be able to ascertain what level of precision is required for the perimeter of the holder to fall within the feature “substantially U-shaped”.
The applicant has submitted that adopting a purposive construction it is clear that the side walls and bottom of the holder form a substantial U-shape.
I agree that the description does not define what constitutes the periphery of the holder or that the holder is substantially U-shaped. However, it is clear from the drawings that the holder (sump 106) comprises a bottom wall and two opposed outer side walls that together define a shape in cross-section that can generally be considered as U-shaped. As noted by the opponent, it also includes an internal partition 202 to form two separate compartments for receiving the drain grate and sill respectively. Each of these two compartments also define a shape in cross-section that can be considered as U-shaped.
Whilst, in my view, the term ‘cross-section’ rather than ‘periphery’ to define the outer shape of the holder may have been more appropriate, I am satisfied that the person skilled in the art, adopting a commonsense approach to construction, would have interpreted the term ‘periphery’ to refer to this outer cross-sectional shape of the holder in line with the accepted meaning of this term as an outer edge or border of an area. They would not have taken the internal partition to also be part of the periphery of the holder.
In relation to the clarity argument regarding the level of precision required, in my view, the person skilled in the art would understand that the orientation of the side walls and the bottom wall can have minor variations as long as the cross-section generally resembles a ‘U’. Claim 3, as a result of the amendment, does not extend beyond the disclosure of the specification as filed or lack support or lack clarity.
Claim 5 - “the height of the holder [being] no greater than a diameter of a drainage hole in the holder”.
The opponent’s submissions regarding amended claim 5 can be summarised as follows:
·It is unclear whether the feature “a drainage hole in the holder” refers to the drainage holes in the grate or to a separate drainage hole in the holder.
·If it refers to the hole 300 in the bottom wall of the holder there is no explicit disclosure in the description that the height of the holder is no greater than the diameter of this hole.
·It is not possible to accurately derive any absolute or relative dimensional information of the hole 300 from the perspective view of figure 3 and hence it is not possible to also make any definite conclusions as to whether the overall height of the holder is no greater than the diameter of the hole.
·Furthermore, as the claim does not define any specific shape of the holder, it can include a configuration in which the side walls of the holder are stepped and with such a stepped shape, it is unclear whether the reference to the height of the holder refers to the overall height or the height of the stepped portions.
The applicant has submitted that “It is immediately apparent from Figure 2 (when viewed in conjunction with Figure 1 on the same drawing page) that the height of the holder 106 is no greater than the diameter of the drainage hole 110” (paragraph 25).
It is clear that the definition “a drainage hole in the holder” refers to the separate drainage hole 300 in the sump that opens into the drain 110 and not to the holes in the drain grate. Adopting a commonsense approach, it is also clear that the height refers to the overall height of the holder irrespective of whether it has straight or stepped outer walls.
While the description of the specification as filed is totally silent on the dimensions of the height of the holder or the diameter of the hole 300 or to any dimensional relationship between the holder height and the drain hole diameter, when one looks at figure 2 it is very evident that the overall height of the holder is less than the diameter of the drain 110 and the corresponding hole 300 in the bottom wall of the holder. Even the perspective end view of figure 3 that is relied on by the opponent, in my view, suggests that the height of the holder may well be less than the diameter of the hole 300. As noted by Aldous J in Vax Appliances Ltd v Hoover Plc [1991] FSR 307 at 313 and quoted with approval by the Full Federal Court in Leonardis v Sartas No 1 Pty Ltd and Another [1996] FCA 449; (1996) 35 IPR 23, while patent drawings are not designed to denote precise measurements unless so stated, they can be certainly relied on to illustrate the concept and overall relationship of the parts. In the present case, where the drawings appear to be engineering drawings rather than just schematic drawings, the overall relationship of the different parts of the assembly as shown in figures 1 and 2 certainly indicate that the height of the holder is less than the diameter of the hole 300. I am satisfied that the drawings provide a clear and unambiguous disclosure of this feature of claim 5. Claim 5 does not claim matter that extends beyond the disclosure of the specification as filed or lack support. The amendment is therefore allowable.
CONCLUSION
The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed or lead to the claims lacking support or clarity.
I therefore allow the amendment request of 7 July 2021.
COSTS
The opposition to the s104 amendments is unsuccessful. I see no reason to depart from the normal practice of awarding costs to the successful party. I therefore award costs according to schedule 8 against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents