ASSA ABLOY Australia Pty Limited v Pacific Enterprises (Aust.) Pty Ltd - [2015] APO 49

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
ASSA ABLOY Australia Pty Limited v Pacific Enterprises (Aust.) Pty Ltd [2015] APO 49

Patent Application: 2008200245
Title:Window Winder

Patent Applicant:                   Pacific Enterprises (Aust.) Pty Ltd
Opponent:  ASSA ABLOY Australia Pty Limited
Delegate:  Dr N. R. Madsen
Decision Date:  17 August 2015
Hearing Date:  Written submissions completed on 16 July 2015
Catchwords:  PATENTS – opposition to the allowance of amendments under subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990 – amended claims not in substance disclosed in the specification as filed – amended claims comply with subsection 40(3), fair basis, clarity – amendment not allowed – costs awarded against applicant.

Representation: Applicant: Minter Ellison, Melbourne, Victoria
Opponent:Phillips Ormonde Fitzpatrick, Melbourne, Victoria

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008200245

Title:Window Winder

Patent Applicant: Pacific Enterprises (Aust.) Pty Ltd
Date of Decision: 17 August 2015
DECISION
I have found that the proposed amendments do not satisfy the requirements of subsection 102(1) of the Patents Act 1990, and consequently the opposition succeeds. Subject to appeal I refuse the amendments.
The applicant is allowed a further 60 days from the date of this decision in which to propose suitable amendments.
I award costs against Pacific Enterprises (Aust.) Pty Ltd.
REASONS FOR DECISION
Background

Patent application 2008200245 was filed on 17 January 2008 by Pacific Enterprises (Aust.) Pty Ltd (the applicant). Examination was requested on 21 August 2008 after which time the application proceeded to acceptance and was advertised as accepted.
The application was opposed under section 59 by ASSA ABLOY Australia Pty Limited (the opponent) and the opposition process was conducted resulting in a decision issuing on 14 November 2013 regarding the validity of the accepted application. In that decision, the delegate of the Commissioner of Patents found certain claims not clear, not novel and/or not inventive and provided 60 days for the applicant to propose amendments (see ASSA ABLOY Australia Pty Ltd v Pacific Enterprises (Aust.) Pty Ltd [2013] APO 58).
On 13 January 2014 the applicant proposed a first set of amendments that was subject to two adverse examination reports. The applicant then proposed a second set of amendments superseding the first on 4 August 2014. A delegate of the Commissioner found these claims allowable and the request was advertised on 27 November 2014. A notice of opposition to the allowance of amendments was filed by the opponent on 27 January 2015. The grounds of opposition specified in the statement of grounds and particulars are that the amendments do not comply with subsection 102(1) and paragraph 102(2)(b). The request to amend the patent specification dated 4 August 2014 is the subject of this decision.
No evidence was filed by either of the parties. A delegate of the Commissioner directed the parties on 5 June 2015 that they will be heard on the basis of written submissions. The opponent filed written submissions on 19 June 2015 while the applicant filed responding written submissions on 3 July 2015. The opponent filed written submissions in reply on 10 July 2015 with the applicant filing further submissions on 16 July 2015. I will provide the details of written submissions filed by the parties as necessary in the later paragraphs.
The invention described in the specification
The present invention (see page 1 of the specification) relates to a window winder that uses a chain connected to a hinged window such that varying the length of the chain varies the degree of openness of the window. According to the specification, such mechanisms are used on windows which are pivotally hinged at a top portion with the window winder being attached to the windowsill and a chain extending from and attached to a bottom portion of the window so that it is able to pivot outwards around the top hinge. Particular problems with such winders relate to difficulty in securing a window and their often complex construction. The present invention seeks to address such problems by way of providing a lockable window winder that is cost effective and readily usable.
The Amendments
The specification before amendment, which was the subject of the decision under section 59, contained 20 claims. The statement of proposed amendments filed on 4 August 2014 amends a number of claims (to now leave 15). Relevant to the present opposition are new claims 1, 5, 14 and 15 which are reproduced below whereby added text is underlined and removed text is struck out.
1. A window winder having a housing with an open bottom cavity and a closing plate to close the cavity;
wherein the housing is mould constructed or cast as a single outerbody with the open bottom cavity for receiving a chain ~~or linear cord~~, a side opening allowing the chain ~~or cord~~ to extend out of the housing when attachable to a window such that the amount of chain ~~or cord~~ extending out of the housing varies the openness of the attached window,;
and the window winder including a drive means including a worm gear on a spindle axle connectable to a handle at one ~~side~~ end and at the other end to a cog means ~~for~~ engaging and driving the chain ~~or cord at the other~~;
and able to be received substantially within the cavity of the housing with the handle connected on an outer side for selectively driving the chain ~~or cord~~ in or out of the housing;
the window winder further including a locking means including a detent means for preventing the chain from being further extended from the housing and including an activation means, which is ~~such as~~ a key lock, ~~which activates the detent means,~~ the activation means further including a separate rigid sliding member extending along the housing substantially between the keylock and the drive means wherein the keylock directly activates the detent means, including directly moving the sliding member to selectively allow and prevent the chain from being further extended from the housing;
and the closing plate being substantially planar to provide a substantially closed window winder structure.
…
6. 5. A window winder in accordance with any of the preceding claims wherein the locking means includes an activation means, which activates the detent means, the activation means including a further sliding member slidable at an angle to the operation of the first sliding member ~~detent means~~.
…
~~15.~~14. A window winder in accordance with claim 14 wherein the housing includes a plurality of depths of the cavity such that from the outer side of the housing there is a raised portion able to house at least part of the driving means.
~~16.~~15. A window winder in accordance with claim 145 wherein the raised portion of the housing includes at least part of the locking means.
Law Relating to Amendments
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure.
The relevant sections of the Patents Act in the current case are sections 102(1) and (2) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(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).
(2A) For the purpose of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted.
(3)This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
Subsection 102(1): In-substance disclosed in the specification as filed
When determining whether a matter is in substance 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, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood (supra).
The sliding member
The opponent alleges that the following aspect of amended claim 1 fails to comply with subsection 102(1):
…a detent means for preventing the chain from being further extended from the housing and … a separate rigid sliding member extending along the housing substantially between the keylock and the drive means wherein the keylock directly activates the detent means.
Figures 3, 4 and 5 of the specification as filed and as proposed to be amended are useful in depicting the relevant features.
The figures show views inside the window winder whereby a chain 26 is extended or retracted by movement of a gear which can be seen at the left hand end of figure 3 in the shape of a toothed cog. The figures show a slide bar 33 and a detent member 32, the detent member 32 in the form of a wedge 34. The description describes a detent means 31 (not identified in the drawings) as comprising both the detent member 32 and slide bar 33.
In operation, a key lock accessible from outside the housing interacts with the detent means 31 via the slide bar 33 by way of rotation of the key lock. The slide bar includes an engagement recess engaging a protrusion on the key lock. The rotation provides movement of the slide bar in a longitudinal direction relative to the length of the housing (this movement is shown in figures 4 and 5). The wedge 34 of the detent member 32 includes an upper cam surface 38. The slide bar has a complementary cam surface 39. The two cam surfaces engage such that longitudinal movement of the slide bar enables engagement and disengagement of the detent member 32 and its wedge 34 from the chain 26 via the force of spring means 35 (as per figures 4 and 5).
The opponent submits that:
“The only disclosure AU2008200245 as filed of a separate rigid sliding member extending along the housing substantially between the keylock and the drive means is in the context of the specific embodiment of the invention described by reference to the figures. There is no disclosure of an activation means having “a separate rigid sliding member extending along the housing substantially between the keylock and the drive means wherein the keylock directly activates the detent means” other than one in which the detent means directly engages the chain. There is no teaching in the AU2008200245 as filed of how a detent means having “a separate rigid sliding member extending along the housing substantially between the keylock and the drive means wherein the keylock directly activates the detent means” can selectively allow and prevent the chain from being further extended from the housing other than by directly engaging the chain.”
The opponent also pointed to the decision in Rose Bros. (Gainsborough) Ltd's Application (1960) RPC 247 to identify an example of a situation whereby an application to amend was found not allowable in so much as the disclosure of two specific features in combination (but not otherwise) did not constitute disclosure of one of those specific features in combination with a more generalised description of the other feature.
Responding the applicant submitted that the relevant part of the specification that I have discussed above provides a real and reasonably clear disclosure of this feature and that the opponent is engaging in “an over meticulous verbal analysis”. In respect to Rose Bros. (supra) the applicant submitted that the present circumstances can be contrasted because in that case:
“…the amendment was not allowed because the amendment added an integer not previously included in the claim (a ‘vibrating feed device’) in a more generalised form than the vibrating device of the electromagnetic type disclosed in the specification. In contrast, the claim of this application already included the integer of the sliding member, prior to the Proposed Amendments. Furthermore the specification does not tie the operation of the sliding member to direct engagement of the chain, and it is notable that the slide bar 33 itself does not directly engage the chain. The amended claim is consistent with both the text of the specification and the depiction of slide bar 33 in the drawings.”
I am inclined to agree with the submissions of the opponent. Importantly the specification as filed contains no reference to anything other than direct engagement. This specification was filed in the same terms as the parent application in regard to which the delegate in ASSA ABLOY v Pacific Enterprises (supra) found that:
“…the only contemplated method in the parent application of preventing such extension is where the detent means directly engages the chain.”
With specific reference to the amended features of a separate rigid sliding member extending along the housing substantially between the keylock and the drive means, there is no disclosure in the specification as filed of this sliding member operating in any manner to achieve something other than a direct engagement of the chain. In this sense the specification as filed ties the claimed operation of the sliding member to a direct engagement of the chain, the result being that the sliding member is claimed in a more generalised form than disclosed in the specification as filed. The claim as amended clearly includes within its scope the operation of this sliding member in a particular manner to prevent further extension of the chain, whereby the engagement of the detent means with the chain is indirect. Thus there is no real and reasonably clear disclosure of the claimed feature.
The applicant also submitted that the issue cannot be a result of the proposed amendment. I disagree with this submission. The deficiency is one which is affected by amendment. As a result of the amendment, the claim is directed to newly claimed subject matter that is not in-substance disclosed in the specification as filed, this being the specific arrangement of the sliding member operating in combination with a generalised form of detent means.
Therefore I find that the amendment to claim 1 does not comply with subparagraph 102(1) and the amendment is not allowable.
Spindle Axle
The opponent also alleges that the following aspect of amended claim 1 fails to comply with subsection 102(1):
… a drive means including a worm gear on a spindle axle connectable to a handle at one end and at the other end to a cog means engaging and driving the chain;
Figures 7 and 8A-C of the specification as filed are useful in depicting the relevant features.
Relevant text of the specification as filed is as follows:
“The drive means as shown in Figures 7 and 8A-C includes a handle 18 connected to a worm gear, which is connectable to a cog means for engaging and driving the chain or cord. The drive means can include a block mount with a top opening extending from a top side and of a first dimension and an internal cavity extending from a side opening and having a second larger dimension; and the worm gear can include a spiral; thread and at an end distal from the end attaching to the handle have a head of a dimension greater than the first dimension but at least slightly less than the second dimension and a neck at least slightly less than the first dimension, herein the worm gear can be slid into the block mount to capture the head in the internal cavity thereby mounting the worm gear while allowing rotational movement of the worm gear.”
Particularly relevant is figure 8B. Here is clearly shown a drive means which includes a spiral mounted on a shaft with a neck at one end for fixing the drive means within the winder structure. This neck mounts inside a block mount (figure 8A) thereby achieving this fixing as shown in figure 8C. The central shaft part of figure 8B can be considered a spindle axle and the spiral can be considered a worm gear on a spindle axle.
The opponent submits that:
“…there is no disclosure of a spindle axle which is connectable at one end to a handle and at the other end to a cog means … there is also no disclosure [in the specification as filed] of a worm gear which is connectable to a handle at one end and to a cog means at the other … the only feature described in the specification as filed as being connectable to a cog means is the worm gear.”

Importantly, there is nothing in the description to suggest that any form of connection to handle and cog means is direct. The specification as filed and the amended claim for that matter, only suggest “connectability” which could either be direct or indirect. In this sense, connection of the spindle axle to a cog means at one end may for example, be indirect connection via the worm gear (see for example the bottom of the worm gear in figure 8C, this connectability being inherent). In a similar vein, the spindle axle could be directly or indirectly connected to the handle at the other end (as shown in figure 7). As the worm gear is connected to the spindle axle, connectability of the worm gear at one end to the handle is also disclosed in the specification as filed.
Hence while there is no textual disclosure of the claimed connectability in the specification as filed, basis can be found in the drawings as an inherent aspect of the worm gear on a spindle axle depicted in the figures. I find that this aspect of the amendment is allowable in accordance with subparagraph 102(1).
Paragraph 102(2)(b): Compliance with subsection 40(3), clarity and fair basis
I have already identified the relevant law with respect to fair basis. In relation to clarity, while the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules 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."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "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).
Fair basis
In regard to fair basis the opponent alleges that claim 1 as proposed to be amended (and claims 5, 14 and 15) are not fairly based on the matter disclosed in the specification. The opponent pointed to Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 62 IPR 461 at [99] which exemplifies a situation whereby a consistory clause itself failed to provide fair basis.
“…the correct position is that a claim based on what has been cast in the form of consistory clause is not fairly based if other parts of the matter in the specification show that the invention is narrower than that consistory clause. The inquiry is into what the body of the specification read as a whole discloses as the invention. An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention. The consistory clause is to be considered by the court with the rest of the specification.”
While claim 1 as proposed to be amended is reproduced in a consistory clause, the opponent submits that:
“…immediately following this consistory clause it is stated that “therefore there is provided a lockable chain winder … including a detent means for directly engaging the chain”. Further, the remainder of the specification of AU2008200245 describes only embodiments of the invention in which the locking mechanism involves a detent means which directly engages that chain.
Accordingly, having regard to the specification as a whole, it is clear that the invention disclosed in AU2008200245 is limited to a window winder in which the locking mechanism has a detent means which directly engages that chain.
Claims 1, 5, 14 and 15 if AU2008200245 are not so limited.
…
The amendment introduces into the claim a specific requirement with respect to the sliding member which is only disclosed in the specification in combination with another specific requirement not forming part of the claim.”
Firstly in regard to the general submission as to the detent means directly engaging the chain, I do not consider the disclosure of the specification to be so to suggest that invention is narrower than the consistory clause. The consistory clause as proposed to be amended reproduces the features of claim 1 and thus clearly encompasses direct and indirect engagement of the chain. This disclosure is consistent with the following paragraph which discusses direct engagement only, as direct engagement is not described in this paragraph in a manner to preclude indirect engagement from the specification as a whole. Further, while the detailed embodiment only describes direct engagement it is made clear in the specification as proposed to be amended that the embodiment should not be considered in any way limiting (page 5):
To more fully describe the invention, an embodiment will now be described with reference to the following drawings. The drawings, however, are merely illustrative of how the invention might be put into effect and the specific form and arrangement of features shown is not to be understood as limiting to the drawings.
Thus I do not consider the presently amended specification reflects the situation that the Court discussed in Lockwood v Doric (supra). Similar reasoning applies to the specific features of the sliding member as proposed to be amended. Hence I find the claims as proposed to be amended fairly based.
Clarity
The opponent submits that the following feature is unclear:
…an activation means, which is a key lock, the activation means further including a separate rigid sliding member extending along the housing substantially between the keylock and the drive means…
The issues with this feature are compounded by the fact that:
…the keylock directly activates the detent means, including directly moving the sliding member…
I interpret the submission of the parties in regard to these features to relate to the fact that the claim defines separate detent and activation means. The activation means “is a key lock”, which “directly activates the detent means, including directly moving the sliding member”. On this basis it appears that the sliding member is part of the detent means. However, the claim also is limited such that “the activation means further [includes] a separate rigid sliding member”. This suggests that the sliding member is part of the activation means, i.e. part of the key lock. Thus there are two possible locations for the sliding member that are inconsistent on the face of the claim alone. Alternatively, on the face of the claim it may be the case that the sliding member is part of both the activation means and the detent means.
Turning to the description, the relevant discussion of a separate rigid sliding member extending along the housing substantially between the keylock and the drive means, wherein a keylock directly activates by directly moving the sliding member to selectively allow and prevent the chain from extending is found in figures 3, 4 and 5 discussed above. Here, the slide bar 33 forms part of the detent means and is separate from a keylock. Hence, it appears proper to construe the relevant features of claim 1 such that the activation means (key lock) and detent means are separate, and that the rigid sliding member is a part separate from the activation means, being part of the detent means.
Thus I find the claims as proposed to be amended clear.
Conclusion
The amendment does not comply with the requirements of subsection 102(1). The opposition is successful. Subject to appeal I refuse the amendments.
I consider it clear that allowable amendments can be made to the claims. I allow 60 days for the applicant to propose further amendments to overcome the deficiencies identified in the delegates decision in ASSA ABLOY Australia Pty Ltd v Pacific Enterprises (Aust.) Pty Ltd [2013] APO 58.
Costs
Ordinarily in proceedings such as these, costs follow the event. I see no reason that warrants varying this approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against Pacific Enterprises (Aust.) Pty Ltd.

Dr N. R. Madsen
Delegate of the Commissioner of Patents