Austoft Industries Ltd v Cameco Industries Ltd

[1999] APO 53

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 639579 in the name of AUSTOFT INDUSTRIES LTD

Title:          Base Cutter Assembly

Action:          Opposition by CAMECO INDUSTRIES LTD under Section 104 of the Patents Act 1990

Decision:          Issued            .

Abstract

A "two stage" process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by section 102(1).  The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment.  Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed in order to determine whether the specification would as a result of the amendment claim matter not in substance disclosed in the specification as filed (per RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353.

It was clear in terms of the first stage of this process that the proposed amendments sought to add to original claim 1 all the features of a subsidiary claim which was also present in the specification as filed.  There was no authority for treating the subsidiary claim as an adequate disclosure of its own, and thus the answer to the question posed by the second stage turned on a determination of the facts of the case (Merck & Co, Inc v Sankyo Co Ltd 23 IPR 415 followed). In applying this general principle the amendments were found to satisfy the requirements of section 102(1).

The opposition also failed under the grounds provided by section 102(2)(a) and (b).  Regarding the former ground, the word "including" when interpreted in the context used had the effect of narrowing the scope of the amended claims (General Clutch Corporation v Sbriggs Pty Ltd (1997) AIPC 91-333 followed).

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No.639579 in the name of AUSTOFT INDUSTRIES LTD and opposition by CAMECO INDUSTRIES LTD under Section 104 of the Patents Act 1990

BACKGROUND

Patent application 639579 was filed on 9 July 1991 by Austoft Industries Ltd (Austoft).  The application was advertised accepted on 29 July 1993.

Cameco Industries Inc (Cameco) opposed the grant of a patent on the application under section 59, and it was ultimately found following a number of hearings on the matter that most of the claims of the complete specification lacked novelty on the basis of prior use.  Austoft were, however, afforded the opportunity to amend to claim patentable subject matter not disclosed by the prior user (see Austoft Industries Limited v Cameco Industries Inc 35 IPR 140).

On 28 June 1996 Austoft filed a request for leave to amend the complete specification. Leave was granted and advertised on 23 January 1997. On 12 February 1997 Cameco filed a notice of opposition under section 104 to the allowance of the amendments, followed by a statement of grounds and particulars on 8 May 1997. All evidence was served by April 1998.

A hearing to determine the section 104 opposition took place in Sydney on 1 March 1999. Austoft was represented by Mr Robert G Shelston assisted by Mr Frank Pappas, patent attorneys of Carter Smith & Beadle, and Cameco was represented by Mr A.B.S. Franklin of counsel assisted by Mr Greg Turner, patent attorney of Spruson & Ferguson.

SUBJECT MATTER

The invention relates to machines for harvesting sugar cane.  Cane harvesters utilise several types of cutting devices.  The present invention relates to a device known as a "base cutter assembly" in which a rotating disc supporting the cutting blades is suspended from a gear box and driving mechanism via a drive shaft.

With such base cutter assemblies, there is a problem with trash (leaves etc) collecting around the drive shaft, particularly when harvesting green cane.  If left uncleaned, trash can build up to an extent sufficient to prevent harvesting.  The invention addresses this problem by shaping the drive shaft so that the trash is urged towards an intermediate portion along the shaft, with cleaning means being arranged adjacent the shaft at the intermediate portion.

THE PROPOSED AMENDMENTS

The specification as filed was not subject to any amendment during examination.  The accepted specification ends with twelve claims of which claim 1 reads as follows:

"A base cutter assembly for a sugarcane harvester comprising:

a cutting means and an elongate drive shaft adapted to drive the cutting means; characterised in that the drive shaft is shaped such that, in use, trash wrapping around the drive shaft is urged to collect proximate an intermediate portion of the drive shaft;

and cleaning means positioned adjacent the intermediate portion of the drive shaft and adapted to remove the trash which is wrapped around the drive shaft."

Claims 2 to 11 are either directly or indirectly appended to claim 1, and claim 12 is an omnibus claim.  The only dependent claims I need to consider for the purpose of this decision are claims 7 and 8, which read:

"7. The assembly of any one of claims 1 to 6 wherein the cleaning means includes a deflector plate having an edge immediately adjacent the intermediate portion.

8. The assembly of claim 7 wherein the deflector plate is a circular wheel rotatable about an axis normal to the plane of the plate."

The amendments proposed to the specification seek to replace the claims as accepted with a new set of claims, and to make corresponding changes to the description and drawings.  New claim 1 is as follows, with the portion shown in italics representing the wording that would be added to the claim if amended as proposed:

"A base cutter assembly for a sugarcane harvester comprising:

a cutting means and an elongate drive shaft adapted to drive the cutting means characterised in that the drive shaft is shaped such that, in use, trash wrapping around the drive shaft is urged to collect proximate an intermediate portion of the drive shaft;

and cleaning means including a stationary deflection plate having an edge immediately adjacent the intermediate portion of the drive shaft and adapted to remove the trash which is wrapped around the drive shaft."

It will be seen from the above that the proposed amendments would have the effect of substituting claim 1 with a new claim which includes the subject matter of claim 7, with the additional limitation that the deflection plate is stationary. 

THE LAW

The allowability of amendments is governed by section 102, which provides:

"102. (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 specification has been accepted 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).

(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification."

Section 40(2) requires that a complete specification describe the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention.  Section 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

In accordance with regulation 5.3(4), these are the only grounds on which the allowance of a proposed amendment of a complete specification may be opposed.

STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds and particulars indicates that the amendments are opposed on all grounds available under section 102, and sets out a number of particulars in relation to each ground.  The particulars are critical of the changes proposed to the specification consequent on the introduction of the subject matter of claim 7 into claim 1, and in essence are based on the following identified issues:

- Proposed claim 1 states that an edge of the deflection plate is immediately adjacent the intermediate portion of the drive shaft which is not in accordance with the specification as filed at page 3, lines 6 to 8, where it is said that the point of mounting of the deflection plate is adjacent the point of minimum diameter of the intermediate portion.

- The specification as filed and as proposed to be amended does not disclose any means by which a deflection plate is adapted to perform the task of trash removal called for in proposed claim 1.

- The phrase "immediately adjacent" in proposed claim 1 is not clear and, if interpreted to mean that the edge of the deflection plate actually touches the drive shaft, lacks fair basis since new Fig 2 shows a gap between the plate and shaft.

- Fig 2 as proposed to be amended illustrates a "cleaning means" 34 comprising a deflection plate 42. The plate is illustrated in a state of suspension with no clear indication as to where it is mounted.  Page 3 of the specification as proposed to be amended states at lines 21 to 25 that the plate is fixedly supported by support means (not shown) extending from the plate to an appropriate stationary part of the harvester such as the housing.  This disclosure is not clear and is unsupported by the specification as filed.

THE EVIDENCE

Evidence in Support

The evidence filed in support of the opposition consists of statutory declarations by:

• Richard Butler Frost with Exhibits RBF-1 to RBF-7

• Philip Gwyther Atherton

• Gregory John O'Toole with Exhibits GJO-1 and GJO-2

• Ian Alexander Millar with Exhibit IAM-1

Professor Frost states that he is Head of the Design department in the School of Mechanical and Maufacturing Engineering at the University of New South Wales, and has held that position since 1 January 1996.

Professor Frost's evidence is directed to the full range of issues identified by the statement of particulars.  However, the only issues raised in the Atherton, O'Toole and Millar declarations are  unrelated to any of the grounds on which the allowance of the amendments can be opposed and, consequently, these declarations are rejected entirely from further consideration in the present action. 

Evidence in Answer

The evidence in answer consists of statutory declarations by:

• Malcolm John Baker

• Leslie William Blake

Mr Baker states that he was employed by Massey Ferguson, Cane Equipment Division, from 1968 to 1974.  He has been employed since then by Austoft, firstly as a Project Engineer and for the past 10 years as Engineering Manager.  In this role he has been involved in the mechanisation of the sugar cane industry in relation to planting, harvesting and infield transporters.

Mr Baker disputes the evidence of Professor Frost who he argues has not demonstrated experience in, or any particular knowledge of, the design, fabrication or operation of sugar cane harvesters.  An example of this line of argument is found in paragraph 10 of Mr Baker's declaration where he states:

"In paragraph 6 of the Frost declaration, Professor Frost states he has difficulty in understanding how a stationary deflection plate could remove or interact with trash in any way.  He further states that his inability to understand how a stationary plate having an edge immediately adjacent a rotating shaft could remove trash from the shaft by asserting that his frustration arises from the fact that there are no drawings or expansion of the limited disclosure, that neither the orientation of the plate, nor the type of material from which it might be fabricated, is described.  However, a person skilled in the art of fabrication of sugar cane harvesters, being an appropriate notional expert addressee of the patent specifications in suit, would know without being told that the plate would have to be orientated so as to provide an obstruction to the passage of trash past the plate and would know that the structural components in the base cutter area of a sugar cane harvester are conventionally made from steel.  Such a person would have no problem in deciding that steel would be a suitable material, again without requiring the patent specification to provide that information."

Mr Blake states that he has been actively engaged in the harvesting of sugar cane by means of mechanical cane harvesters since 1960.  He has also participated in the construction and modification of cane harvesters, including one built for his own use.  Mr Blake is fully supportive of the evidence of Mr Baker, and expresses the view that Professor Frost does not seem to have acquired "hands on experience" in the field operation of mechanical sugar cane harvesters.

Evidence in Reply

The evidence in reply consists of statutory declarations by:

• Richard Butler Frost with Exhibits RBF-8 and RBF-9

• Douglas James Young with Exhibits DJY-1 to DJY-5

In responding to the evidence of Mr Baker, Professor Frost contends that while he has not been directly involved with sugar cane harvesters, he has gained relevant design experience in relation to equipment for harvesting stone fruit.  He then says:

"Mr Baker is nominated as the inventor of the claimed invention and is well acquainted with his own thinking in relation to these issues.  Others are left by the specification to recognise these issues for themselves and to formulate a set of design features to cope with them in a way which they themselves see as appropriate.  It would not be a simple or direct matter for a skilled addressee to put into effect a device which could confidently be regarded as embodying the invention."

To illustrate this, Professor Frost draws attention to the alleged inconsistency between:

"text which says "a stationary deflection plate mounted adjacent to the point of
minimum diameter of the drive shaft ...", and

text which says "a deflection plate having an edge immediately adjacent the
intermediate portion (of the drive shaft)"."

which he says creates uncertainty as to whether it is the mounting for the deflection plate or the edge of the deflection plate which is adjacent to the drive shaft.  He thus concludes that the specification does not provide a disclosure of the invention sufficient in itself to enable a skilled addressee to comprehend the invention and put it into effect.

Mr Young is a harvesting contractor and has been in the sugar cane industry since about 1960.  He says the specification as proposed to be amended is unclear to him for reasons which repeat those listed in the statement of particulars.  With regard to the statement in claim 1 that the deflection plate has an edge "immediately adjacent" the intermediate portion of the drive shaft, Mr Young makes the point that:

"To my mind, an edge that was merely "adjacent" to the drive shaft might be spaced away from the drive shaft by a small gap.  However, the word "immediately" tends to imply that the edge abuts the narrow portion of the drive shaft.  Figure 2 … shows a small gap between the edge of the plate 42 and the narrow part 40 and this tends to cloud my interpretation of the claim language.  The specification does not clearly specify the size of any gap.  If the gap were very small, say only a millimetre or if the edge of the plate actually touched the drive shaft, then excessive heat build-up and even fire could result … If the gap between the shaft and plate were too large, then trash would be allowed to build up to the thickness of the gap."

At the hearing both parties provided me with detailed written submissions.  Where necessary the  evidence and various submissions will be discussed in greater detail later in this decision.

DECISION

Procedural Issues

In a letter dated 22 February 1999 Mr Shelston requested that for the purpose of the hearing the expression "deflection plate" be treated as "deflector plate" wherever it appeared in the specification as proposed to be amended.  He explained that although used exclusively in the specification as it stood prior to amendment, the word "deflector" had been inadvertently changed to "deflection" when preparing the amended description and claims of the specification.  Mr Franklin acceded to Mr Shelston's request.  For completeness I note that Austoft have filed a request for leave to amend which seeks to correct this error in transcription.   

In addition, the material relied on by Cameco includes evidence from Mr Frost which refers to a publication known as the 1979 Sugar y Azucar Yearbook (RBF-6 and RBF-7), and from Mr Young based on a series of photographs (DJY-2 to DJY-5).  Mr Shelston submitted that this evidence goes to the issue of novelty which by virtue of regulation 5.3(4) is not a ground for opposing the allowance of the amendments.  I agree with this submission and therefore will not take account of the evidence of Mr Frost and Mr Young so far as it relates to the exhibits identified above.

Allowability of Amendments

Section 102(1)

General principles

In RGC Mineral Sands Pty Ltd v WimmeraIndustrial Minerals Pty Ltd 42 IPR 353 the full Federal Court said that a "two stage" process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by section 102(1). The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment. Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed in order to determine whether the specification would claim matter not in substance disclosed in the specification as filed. The court when discussing the second stage emphasised that:

"The subsection [102(1)] 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 … that the words "as a result of the amendment" are not to be confused with the expression "after the amendment"."        

It is common ground that the matter resulting from the present amendments primarily lies in the  addition to claim 1 of all the features of claim 7.  Mr Shelston argued that as both claims were present before amendment their proposed amalgamation would not have the effect of introducing new matter into the specification.  In taking this argument further he submitted that the objections brought forward by Cameco related to deficiencies which, if they existed, already appeared in the original specification and thus did not arise by reason of the amendments now proposed.    

There does not appear to be any direct authority on the leading point raised by Mr Shelston that a claim on its own may be treated as part of the original disclosure.  The only guidance to hand of which I am aware is provided by paragraph 22.8.5 of Volume 2 of the Australian Patent Office Manual of Practice and Procedure which indicates that a claim may be accepted as a disclosure in substance of matter where the claim provides a specific definition of a broadly described invention.  However, this is not the case here since the matter defined by original claim 7 does not constitute a further elaboration of any broad generalisation found in the description.  This situation could of itself be seen as supportive of the position for which Mr Shelston contends were it not for the fact that the terms used in claim 7 differ in a number of respects from those employed in the description, and it is clear that these differences have in large part lead to the objections raised by Cameco under section 102(1).  

Nevertheless, what does emerge from the authorities is that reference to other decisions is often not very helpful (cf. F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents 123 CLR 529) since, as stated for example in Merck & Co, Inc v SankyoCoLtd 23 IPR 415, the issue whether a matter is in substance disclosed in the specification as filed is a question of fact to be determined in each case. This is relevantly demonstrated in Kornelis' Kunsthars ProductenIndustrie BV v W R Grace & Co 28 IPR 471 where Burchett J considered the allowability under section 102(1) of amendments which sought to reinstate claims included in the specification at filing but subsequently deleted prior to acceptance. Rather than simply look to these claims in isolation, his Honour noted that:

"… 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."

His Honour then went on to determine whether as a matter of construction the specification included disclosures which could properly be translated into claims in accordance with the amendments before him.  It is of significance to note that although various reported decisions relating to amendments were referred to in argument, the outcome of this case turned essentially on its facts.  

Of course this is not to say that the courts have not derived any assistance from the body of case law when applying the requirements of section 102(1) to the facts of a particular matter.  As indicated in RGC v Wimmera, supra, the courts when determining whether a matter is in substance disclosed have basically applied the judicial test for fair basis that there must have been "a real and reasonably clear disclosure" (see also Merck v Sankyo, supra, and Nicola Leonardis v Sartas No 1 Pty Limited (1996) AIPC 91-239).

The principles discussed above are clearly apposite to the present case.  Aside from the divergence in terminology between original claim 7 and the description mentioned earlier, the circumstances leading to the presently proposed amendments are also relevant.  Original claim 7 stipulates that the cleaning means includes a deflector plate having an edge immediately adjacent the intermediate portion of the drive shaft.  The deflector plate is mentioned only briefly in the description and indeed it is only in response to the substantive opposition that Austoft seek by way of amendment to assign any prominence to this feature.  Although an amendment of this kind is not objectionable per se under section 102(1) (AMP v Hellerman [1962] RPC 55), the question of its allowability implicitly calls for a determination of the facts of the case which, having regard to the authorities, does not simply turn on a comparison with the original claims as Mr Shelston has suggested.

I will now deal with the issues of the present case with the above principles in mind.

The function of the deflector plate

The invention is broadly described in the specification as filed as residing in a sugarcane harvester base cutter assembly comprising a drive shaft adapted to drive cutting means and which is shaped such that trash wrapping around the drive shaft is urged to collect at a point intermediate first and second ends of the drive shaft, and cleaning means positioned adjacent the intermediate point and adapted to remove trash from the drive shaft.  The specification continues thus at page 3:

"In a preferred embodiment of the present invention the drive shaft has an hour-glass shape … such that the overall diameter of the drive shaft is smallest at a point intermediate the ends.

The cleaning means could comprise a stationary deflector plate mounted adjacent the point of minimum diameter of the drive shaft.
In a further preferred embodiment of the present invention, however, the cleaning means comprises a wheel … The wheel may be either free-wheeling or driven, however, it is presently preferred that the wheel is free-wheeling so that the need to provide means to drive the wheel is avoided.  When the wheel is free-wheeling it gains its driving torque through friction from contact with the collected trash.  The wheel acts as a deflector plate preventing trash from being wrapped around the drive shaft."

The specification next provides a more detailed description of a preferred form of the invention with the aid of a number of drawings.  The drive shaft is shown as being provided with an array of triangular paddles spaced apart around the periphery of one of its end while a truncated cone is provided at its other end so that the overall shape of the drive shaft is that of an hour-glass.  The cleaning means in this instance comprises a wheel.  The specification explains that due to the provision of the paddles and the cone, trash which wraps around the drive shaft during harvesting migrates to the neck (or intermediate) portion of the hour-glass shape.  The rotation of the wheel, caused by either the action of a motor or by friction between the accumulated trash and the wheel, acts to peel the trash from the drive shaft, thereby preventing build up of trash.

According to Mr Franklin, this disclosure establishes that the wheel serves two distinct functions.  First, the wheel acts as a cleaning means which removes trash from the drive shaft, and this function is exemplified by the wheel rotating to peel trash from the drive shaft.  The wheel also acts to deflect trash and prevent it from being wrapped around the drive shaft.  The deflector plate, it is said, operates in precisely the same manner to deflect trash away from the drive shaft thus preventing its accumulation.  For this reason the deflector plate is not a cleaning means in the sense that it is "adapted to remove trash".  The case put by Cameco in relation to this matter is stated in Mr Franklin's written submissions as follows:

"There is no fair basis in the specification … for claiming that the "stationary deflection (deflector) plate" is "adapted to remove trash which is wrapped around the drive shaft".  Clearly the deflector plate … when it functions as such, deflects trash and prevents it from being wrapped around the shaft.  The only disclosure of cleaning means adapted to remove trash wrapped around the drive shaft is the description of the rotation of the wheel peeling the trash from the shaft."

In Austoft v Cameco, supra the Deputy Commissioner of Patents said:

"As noted in my first decision, claim 8 presents some difficulties.  It is appended to claim 7, and specifies that 'the deflector plate is a circular wheel …'.  This seems incongruous.  The specification states (page 3) that the cleaning means could comprise a stationary deflector plate, and in a further embodiment the cleaning means comprises a wheel.  That is, the specification describes the wheel as an alternative cleaning means viz-a-viz a stationary deflector plate.  The wheel is not described as being a modified deflector plate.  Consequently claim 8 in its present form and appendancy is not fairly based on the specification, and is not clear."

Mr Franklin submitted that this finding demonstrated that the deputy commissioner had not appreciated the dual functionality of the wheel.  Mr Franklin's submission could be viewed as an  attempt to impermissibly re-argue matters which have already been the subject of the earlier decision (cf. Ex parte MoleEngineering Pty Ltd 147 CLR 340), but in any event it appears to overlook the fact that "there can be no ground for excluding the assistance of context from the task of ascertaining what in substance the specification discloses." (Kornelis' v W R Grace, supra).

With this in mind I note from the introductory portion of the specification that:

"[w]ith cane harvesters of the prior art, during harvesting of green cane, cane trash (leaves etc.) wraps around the drive shafts of the base cutters, one layer on top of another.  If left uncleaned, there will be sufficient build up of trash to stop the harvesting operation.  Accordingly, it would be advantageous if a base cutter assembly could be provided in which the accumulation of trash around the drive shafts of the base cutters is substantially prevented."

The invention broadly described addresses this problem by providing a drive shaft shaped such that trash wrapping around the drive shaft is urged to collect at an intermediate point on the drive shaft, and cleaning means adapted to remove trash which has wrapped around the drive shaft.  It is clear in the context of the specification that the removal of trash from the drive shaft by the cleaning means has the added effect of substantially preventing the accumulation of layers of trash around the drive shaft, and this impression is wholly consistent with the detailed description where it is said that the wheel "acts to peel the trash from the drive shaft 32, thereby preventing build up of trash on the drive shaft 32" (emphasis added).  That is, although the effects of the cleaning means may be described as two-fold, it is apparent that the cleaning means in each of its exemplified forms is intended only to prevent the build up of trash by removing it from the drive shaft.  There is no prevention of trash build up in the absolute sense as Mr Franklin has argued.  

Mr Franklin has placed some reliance on the passage on page 3 which reads "The wheel acts as a deflector plate preventing trash from being wrapped around the drive shaft."  However, in addition to the incongruity referred to by the deputy commissioner which arises from the opening words of this passage, there seems no doubt that the wording which follows is as a matter of context to be read against the description of the wheel as an alternative cleaning means viz-a-viz the stationary deflector plate.  In other words, the cleaning means whether in the form of a wheel or deflector plate fulfils the same purpose which, in the absence of any suggestion to the contrary in the specification as filed, does not extend to the deflection of trash away from the drive shaft as submitted by Mr Franklin.            

On this basis I find that the specification as filed in substance discloses cleaning means in the form of a stationary deflector plate adapted to remove trash which is wrapped around the drive shaft.

The position of the deflector plate

Mr Franklin drew attention to the fact that the specification as filed states that the point of mounting of the stationary deflector plate is adjacent the intermediate portion of the drive shaft and, as a consequence, fails to provide a real and reasonably clear disclosure of the arrangement defined by proposed claim 1 in which an edge of the plate is immediately adjacent the intermediate portion of the drive shaft. 

This line of argument is an example of the kind of meticulous verbal analysis disapproved of in CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 48. In my opinion any prima facie disharmony between the original description and proposed claim 1 can be dispelled by the ordinary rules of construction which require a specification to be read as a whole in a purposive rather than a purely literal fashion (per Catnic Components Limited v Hill & Smith Limited [1982] RPC 183). The clear inference to be drawn from construing the present specification in this manner is that the deflector plate is mounted near to the drive shaft with an edge thereof relatively closer to the shaft such that the deflector plate is able to serve its stated purpose of removing trash which collects at the intermediate point of the drive shaft. Indeed, this interpretation is more or less confirmed by Mr Frost's declaration filed as evidence in support where he states:

"… it is my belief that the edge of the plate must be sufficiently close to the intermediate portion of the drive shaft to achieve an effective severance of the trash which wraps around the drive shaft … so that a progressive build-up of trash around the drive shaft is avoided."

Part of the problem here is said by Cameco to lie in the use of the expression "immediately adjacent", but as submitted by Mr Shelston this is not a matter resulting from the presently proposed amendments.  Even if this were not the case, Mr Franklin's submission that as a matter of ordinary language the expression suggests that the edge of the deflector plate might touch the drive shaft does not take account of the context in which proposed claim 1 is set and should therefore be rejected.  Again I find support in the evidence of Mr Frost which states that the skilled addressee "would construe the language, in context, to mean that there was a small gap between the deflection plate and the drive shaft."

In view of the foregoing I hold that the proposed amendments do not offend section 102(1).

Section 102(2)(a)

The only objection pursued under this ground of opposition is based on the assertion that the words in proposed claim 1 "… and cleaning means including a stationary deflector plate" may be construed to mean that the proposed claim is a claim to all cleaning means of which a deflection plate, as characterised, is an example.  When construed in this way, so the argument runs, proposed claim 1 would not fall within the scope of the claims before amendment.

I do not agree.  The language objected to appears in the claims before amendment and I therefore fail to see how their scope can be extended simply by repeating this language in the claims following amendment.  Nevertheless, for the sake of completeness I note from GeneralClutch Corporation v Sbriggs Pty Ltd (1997) AIPC 91-333 that the word "include" must be given an interpretation appropriate to the context in which it is used. In the present case the deflector plate is in accordance with the specification as proposed to be amended the only form of cleaning means contemplated by the invention, and thus there can be no doubt that "include" has been used to signify that the deflector plate is part of the cleaning means. This being so, the introduction of this wording into claim 1 narrows the scope of the claim, and does not widen it as alleged.

As a consequence I hold that the proposed amendments do not contravene section 102(2)(a).

Section 102(2)(b)

The main contention put forward under this ground goes to the issue of sufficiency.  This issue was discussed in Universal Oil Products v Monsanto (1973) 46 ALJR 658 in the following terms:

"The specification is sufficient if the patentee makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which the patent relates, and having reasonably competent skill in the practical mode of doing what was then known."

As already mentioned, the evidence from each party questions the credibility of the other party's declarants.  In my opinion the declarants for Austoft have established greater expertise in the field of sugar cane harvesters than that possessed by Professor Frost, but even so the evidence of Mr Baker must be viewed with caution given his inventor status.  However, nothing turns on this.  Matters arising under section 40 are ultimately for a tribunal of this type alone to decide (see Blanco White, fifth edition 2-101) and, as pointed out by Mr Shelston, "… we are not dealing with complex or high technology subject matter" so as to necessarily require the assistance of expert evidence.

The present amendments so far as is relevant to this ground of opposition seek to restrict the description and drawings to cleaning means in the form of a stationary deflector plate.  This in part involves the replacement of original Figures 2 and 3 with a new Figure 2 which is described as follows:

"Positioned at the intermediate portion 40 of this hour glass shape is a cleaning means 34.  Those cleaning means 34 include a deflector plate 42, having an edge immediately adjacent the intermediate portion of the drive shaft, which is fixedly supported by support means (not shown) extending from the plate 42 to an appropriate stationary part of the harvester, for example, a housing 43."

The criticisms raised on behalf of Cameco against this portion of the specification are reflected in  Professor Frost's evidence in support thus:

"The plate is shown with no clear indication of where it is mounted.  Figure 2 shows an edge of a plate which is spaced from a drive shaft 40.  Page 3 of the specification … states that the deflection plate is fixedly supported by support means extending from plate 42 to an appropriate stationary part of the harvester, for example, the housing 43.  It is not clear to me precisely where such an appropriate mounting position might be located and I believe that the ordinary person would have to make special design considerations in mounting such a plate to a harvester."

Professor Frost also asserts that the specification does not clearly establish the orientation of the plate nor the material from which it is fabricated.

Of course a specification is not insufficient merely because it requires the addressee to apply their ordinary knowledge and experience to put the invention into effect, even if this requires an element of "trial and error" or experimentation as indicated in British Ore Concentration Syndicatev Minerals Separation (1909) RPC 124. The concerns expressed by Professor Frost clearly fall within this category or at best relate to matters not forming part of the invention (eg. the plate material), and indeed in referring to "the ordinary person" his evidence is not suggestive of the views of an appropriately skilled worker who was "wishing and willing" to put the invention into effect. Notwithstanding this, Professor Frost's initial evidence appears to be completely at odds with his evidence in reply where he states "I have no trouble at all in understanding how a plate which was adjacent to a rotating shaft might act to remove material from the shaft which was either adhering to the shaft or was wound around the shaft."

The amended specification was further objected to for the reason that the gap shown by new Figure 2 between the edge of the deflector plate and the drive shaft did not accord with the meaning implied by the expression "immediately adjacent" that the plate and shaft were in contact with one another.  I have already dealt with this issue but note with interest the evidence in reply of Mr Young for example that an arrangement in which the deflector plate actually touched the drive shaft could result in excessive heat build-up or even fire.  This clearly demonstrates that the approach taken by Cameco to the interpretation of "immediately adjacent" is not in keeping with the general principle that a specification should be construed "so as not to lead to a foolish result" (Electric & Musical Industries Ltd v Lissen Ltd (1939) RPC 23).

I therefore find that the proposed amendments do not contravene section 102(2(b).

CONCLUSION

I have found that the proposed amendments satisfy the requirements of section 102(1) and section 102(2)(a) and (b), and as a consequence, the opposition fails on all grounds relied on.  I therefore dismiss the opposition and allow the amendments.

COSTS

Ordinarily in proceedings such as these, costs follow the event.  There are no special circumstances applying in the present matter which warrant varying that approach.  Accordingly, I award costs against Cameco.  

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Carter Smith & Beadle, Five Dock

Patent attorneys for the opponent: Spruson & Ferguson, Sydney