Austoft Industries Ltd v Neville Harold Toft

[1995] APO 47

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 635438 in the name of AUSTOFT INDUSTRIES LTD

Title:  Basecutter Gearbox for a Sugar Cane Harvester

Action:  Opposition by NEVILLE HAROLD TOFT under Section 104

Decision:  Issued            .

Abstract:  Opposition dismissed.  Amendment allowed.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 635438 by AUSTOFT INDUSTRIES LTD and opposition by NEVILLE HAROLD TOFT under Section 104 of the Patents Act 1990

background

Patent application 635438 by Austoft Industries Ltd (Austoft) was filed on 5 August 1991. The application was advertised accepted on 18 March 1993. On 18 June 1993 Cameco Industries Inc (Cameco) filed a notice of opposition under sec 59 of the Patents Act 1990 to the grant of a patent on the application, and on 19 July 1993 a statement setting out the grounds and particulars of the opposition. Evidence in support was served on 18 October 1993, and service of evidence in answer was completed on 21 April 1994 after one contested extension of time. On 23 May 1994 Austoft served a notice of intention to file evidence in reply.

On 8 April 1994 Austoft filed a request under sec 104(1) of the 1990 Act for leave to amend the specification of application 635438. Leave was granted and advertised on 4 August 1994. On 4 November 1994 Neville Harold Toft (who I note is not the sec 59 opponent) filed a notice of opposition under sec 104(4) to the allowance of the amendments. Mr Toft subsequently filed a statement of grounds and particulars and a statutory declaration by Mr J G Hinde, patent attorney with Spruson & Ferguson, as evidence in support of the sec 104 opposition which in effect simply repeated the matters raised in the statement of grounds and particulars.

A hearing to determine the sec 104 opposition was set down for 19 July 1995 in Canberra. On 12 July 1995 Mr Crispin Marsh, patent attorney with F B Rice & Co, advised the office in writing that Austoft did not wish to be heard or rely upon written submissions. The office also received written advice to that effect from Mr Hinde on 14 July 1995.

subject matter

The specification states that the invention relates to an improved sugar cane harvester and in particular to a harvester having an improved base cutter assembly.

According to the specification, known sugar cane harvesters are produced with a frame comprising a pair of spaced apart plate-like sidewalls which normally lie in parallel planes.  These frame sidewalls are used to support at least the base cutter assembly, the feed rollers and the billet cutting means of the sugar cane harvester.  In one known form of harvester, the base cutter assembly includes a motor, a gearbox, drive shafts and base cutting blades, and is mounted totally between the frame sidewalls.  This arrangement has proven inconvenient for the purposes of servicing the base cutter assembly and has also made other design modifications difficult to achieve in view of the very limited space between the frame sidewalls.  It has also been found that this limited space makes it difficult to position the gearbox between the sidewalls or remove it for servicing.

The invention addresses this problem by mounting the gearbox so as to project beyond at least one of the sidewalls and then mounting the base cutter assembly motor on that projection so as to allow the motor to be more readily accessed for service.

the proposed amendments

The specification as filed was not subject to any amendment during examination.  The accepted specification contains five claims which read as follows:

"1. In a sugar cane harvester of the type having;
    a frame including a pair of spaced apart plate-like side walls between which are mounted a base cutting assembly and feed rollers and billet cutting means which together define a path for the passage of sugar cane through the harvester,
    the improvement in which the base cutting assembly comprises:
    a gear box mounted so as to extend across the space between the side walls, above the path for the sugar cane, and to project beyond at least one of the side walls,
    a pair of spaced apart drive shafts extending downwardly from the gear box in the space between the side walls,
    base cutting blade means carried at or adjacent a lower end of each of the drive shafts, and
    a motor for driving the base cutting assembly being mounted on the gear box where it projects beyond the said one of the side walls so as to be on the outside of the space between the side walls.

2. The harvester of claim 1 wherein the gear box is mounted to each side wall with a fastening means which connects the gearbox to a mounting means provided on each side wall.

3. The harvester of claim 1 or claim 2 wherein the side wall beyond which the gear box projects has a recess extending from a lower edge thereof which receives the projecting part of the gearbox and allows the base cutting assembly to be moved laterally outwards from between the side walls of the harvester and through the recess for servicing.

4. The harvester of claim 3 wherein the recess is defined by a cut-away portion.

5. A sugarcane harvester as hereinbefore described with reference to and as shown in the accompanying drawings."

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.  The new claims are as follows, with the text shown underlined (in claim 1) having been added as a result of the proposed amendments:

"1. In a sugar cane harvester of the type having:
    a frame including a pair of spaced apart plate-like side walls between which are mounted a base cutting assembly and feed rollers and billet cutting means which together define a path for the passage of sugar cane through the harvester,
    the improvement in which the base cutting assembly comprises:
    a gearbox mounted so as to extend across the space between the side walls, above the path for the sugar cane, and to project beyond at least one of the side walls through a recess extending from a lower edge of the side wall and which is so dimensioned that the base cutter assembly may be moved laterally outwardly from between the side walls through the recess,
    a pair of spaced apart drive shafts extending downwardly from the gearbox in the space between the side walls,
    base cutting blade means carried at or adjacent a lower end of each of the drive shafts,
    a motor for driving the base cutting assembly being mounted on the gearbox where it projects beyond the said one of the side walls so as to be on the outside of the space between the side walls, and,
    removable fastening means which connect the gearbox to each side wall.

2. The harvester of claim 1 wherein the gear box is mounted to each side wall with the fastening means which connects the gearbox to a mounting means provided on each side wall.

3. A sugar cane harvester as hereinbefore described with reference to and as shown in the accompanying drawings."

It will be seen from the above that the effect of the proposed amendments is to exclude claim 1 and replace it with a new claim which combines all the features of accepted claims 1 and 3, and introduces the additional feature of releasable fastening means for which a basis may be found both in the specification as filed and as accepted.

STATEMENT OF GROUNDS AND PARTICULARS

The statement of grounds and particulars reads:

"GROUND:     Proposed amendment item No 3 is not
            allowable since, as a result of the
            amendment, the specification would not
            comply with Subsection 40(3).

PARTICULARS: As a result of the proposed amendment,
            claim 2 is unclear.

Claim 1 is to an improvement in a sugar
            cane harvester.  Claim 2 is to a
            harvester per se."

Thus the only ground of opposition supported by the statement is that the proposed amendments contravene sec 102(2)(b).

decision

On my understanding of the matter, the difficulty with the proposed amendments according to Mr Toft stems from the fact that claim 2 is unclear in its appendancy to claim 1 because the invention as defined in the opening claim is directed to an improvement in a sugar cane harvester, and not to the harvester in its entirety.

As indicated by para 10.8.14.4 of the Manual of Practice and Procedure (Vol 2 - National), where the invention is defined in the opening claim as an improvement in an existing machine such as "In a machine of the type comprising ..." followed by the characterisation of the improvement, but subsequent appendant claims are defined as "A machine according to claim 1", the latter claims do not provide a clear statement of the invention and are therefore objectionable under sec 40.

However, it is clear from sec 102, which governs the allowability of a proposed amendment of a complete specification, that the test provided by sec 102(2)(b) is confined to sec 40 matters which arise as a result of the amendment (see also Kornelis' Kunsthars Producten Industrie BV WR Grace & Co-Conn, (1994) AIPC 91-056 at 38,204). Furthermore, and in accordance with reg 5.3(4), the only grounds for opposition to allowance of a proposed amendment of a complete specification is that the amendment does not comply with sec 102. It therefore follows from the combined operation of these provisions that the presence of pre-existing sec 40 deficiencies which are unaffected by amendment is irrelevant to the present action.

With this in mind I note that, prior to amendment, claim 1 was for an improvement in a sugar cane harvester whereas claim 2 was directed to a harvester per se.  The form of these claims is unaffected by the amendments now proposed by Austoft and, consequently, any lack of clarity arising from the appendancy of claim 2 to claim 1 is not a matter which has occurred as a result of those amendments.  Accordingly, I do not consider that the proposed amendments would lead to the failure of claim 2 to satisfy the requirements of sec 40(3) as argued by Mr Toft.

CONCLUSION

I have found that the proposed amendments would not result in the non-compliance of claim 2 with sec 40(3).  The proposed amendments consequently do not contravene sec 102(2)(b) and the opposition fails on all counts.  I therefore dismiss the opposition and allow the amendments.

In accordance with the direction made by the Commissioner's delegate on 3 June 1995, the time for serving evidence in reply in respect of the sec 59 opposition shall commence on the date of this decision.

In proceedings such as these before the Commissioner, a successful party is entitled to its costs in the matter.  In the present case I have found in favour of Austoft.  However as Austoft did not attend the hearing, or provide any evidence or submissions, I do not believe an award of costs is appropriate.

O.L.Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  F B Rice & Co, Sydney

Patent attorneys for the opponent   :  Spruson & Ferguson,

Sydney