Bradken Resources Pty Limited v Lynx Engineering Consultants Pty Ltd

[2009] APO 15

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 749848 in the name of Lynx Engineering Consultants Pty Ltd

Title:          Side Reinforced Bulk Transport Container

Action: Request under S104 of the Patents Act 1990 to amend the specification by Lynx Engineering Consultants Pty Ltd and an opposition thereto by Bradken Resources Pty Ltd

Decision:          Issued  18 August 2009.

Abstract

The invention relates to a Side Reinforced Bulk Transport Container. The amendments that were the subject of the opposition were filed in response to adverse findings in a section 59 opposition.

The proposed amendments were alleged to be non-compliant with subsection 102(1) and paragraph 102(2)(a) in four respects each.  In regard to the paragraph 102(2)(b), it was alleged that the specification does not describe the invention fully and the amended claim 1 does not define the invention. Several aspects of clarity were raised in respect of the amended claim 1, and one aspect of clarity was raised in respect of new omnibus claim 26.  It was held that none of the arguments put forward by the opponent were sustainable.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 749848 in the name of Lynx Engineering Consultants Pty Ltd and an opposition to S104 proposed amendment by Bradken Resources Pty Ltd.

BACKGROUND

1. Patent Application 749848 (herein after referred to “the application”) directed to a Side Reinforced Bulk Transport Container was filed on 30 March 1999 by Lynx Engineering Consultants Pty Ltd (hereinafter referred to “Lynx”) under the provisions of the Patent Cooperation Treaty. The application claims priority from provisional application PP2677 filed on 30 March 1998. The application proceeded to acceptance and was subsequently advertised accepted on 4 July 2002.

2. Bradken Resources Pty Ltd (hereinafter referred to “Bradken”) filed a notice of opposition to the application under section 59 of the Patents Act 1990 on 4 October 2002. The opposition to the application was heard by a delegate of the Commissioner and a decision was issued as Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2007] APO 11. In that decision, the delegate found claim 1 and claims 6, 9, 14 and 30 (when each appended to claim 1) not novel, and gave Lynx 60 days to propose suitable amendments.

3. I note that Bradken filed an appeal in the Federal Court of Australia from part of a decision of the delegate of the Commissioner issued as Bradken (supra), and Lynx filed a cross-appeal in the appeal proceedings. The matter is still pending in the court.

4. Pursuant to the decision of the delegate of the Commissioner, Lynx filed section 104 requests on 11 May 2007 and on 27 August 2007 to amend the specification. The amendments were advertised on 1 November 2007.

5. A notice of opposition to the section 104 amendments was filed on 31 January 2008 by Bradken and a statement of grounds and particulars was served on 30 April 2008. The grounds of opposition specified in the statement of grounds and particulars are that the amendments do not comply with subsection 102(1), paragraph 102(2)(a) and paragraph 102(2)(b) of the Patents Act 1990.

6. The service of evidence in support, answer and reply was completed on 11 March 2009.

7. Bradken served an amended statement of grounds and particulars on 23 June 2009 (a day prior to the hearing). The amended statement of grounds and particulars included some additional particulars but did not raise any new grounds of opposition.

8. Another opposition to the section 104 amendments was filed on 1 February 2008 by WorleyParsons Services Pty Ltd. However, WorleyParsons Services Pty Ltd did not serve a statement of grounds and particulars and withdrew their opposition on 1 May 2008.

9. The matter was heard in Canberra on 24 June 2009.  Mr John Garnsey (QC), assisted by Mr Mark Pullen, of the patent attorney firm Watermark Patent and Trade Mark Attorneys, Perth represented the applicant. Mr Andrew Fox (Barrister), assisted by Mr David Hughes, of the patent attorney firm Griffith Hack, Sydney represented the opponent. Mr Vladimir Mazur of Lynx also attended the hearing.

THE PARTICULARS

10. At the beginning of the hearing, the parties agreed to proceed on the basis of the amended statement of grounds and particulars.

11. The amended 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.

12. The proposed amendments are alleged to be non-compliant with subsection 102(1) and paragraph 102(2)(a) in four respects each.  In regard to the paragraph 102(2)(b), it is asserted that the specification does not describe the invention fully and the amended claim 1 does not define the invention. Several aspects of clarity are raised in respect of the amended claim 1, and one aspect of clarity is raised in respect of new omnibus claim 26.

THE SPECIFICATION

13. The present invention relates to bulk transport containers and in particular to containers used in rail and road transportation.

THE NATURE OF AMENDMENTS

14.The specification before amendment included 31 claims. The amendments delete claims 1, 8, 9, 12, 13 and 16; alter the text of claims 2, 6 and 7 (renumbered claims 1, 5 and 6); and insert new omnibus claim 26. Amendments to the remaining claims mainly relate to renumbering. The amendments also make changes to pages 1 and 2 of the description.

15. The particulars relate to the amended claim 1 and new omnibus claim 26. These claims read as follows:

12. A container for transporting bulk material and for rotary or tipping unloading, the container, including two side walls, two end walls, and a base; said side walls including a plurality of vertical reinforcing members spaced along the length of each said side wall, wherein a section of said side wall between at least one adjacent pair of said reinforcing members includes at least one internal ridge running therebetween, the wherein said at least one internal ridge including a first wall portion angled towards an interior of said container, wherein the angle is in the direction of flow of the material during said rotary or tipping unloading, and wherein said at least one internal ridge is integrally formed within said side wall and said at least one internal ridge has a depth the distance from which said ridge projects from said side wall is greater than the thickness of said side wall.

26. A container as claimed in claim 1 and substantially as shown in any one of figures 2a, 2b, 3a, 3b, 4b, 5 or 8.

[Added text is underlined, deleted text is struck out]

EVIDENCE

16.The evidence in support consists of a single statutory declaration from each of Mr Les Smith and Mr David John Hughes.

17. Mr Smith is a mechanical engineer with over 50 years of experience in the railway industry in a broad range of roles. The Smith declaration relies on the following exhibits in support of the opponent’s case:

LS-1Accepted Specification of Australian patent application 749848

LS-2       Amendments

LS-3Letter of David Hughes of Griffith Hack

18. Mr Hughes is the patent attorney for the opponent. The Hughes  declaration puts into evidence the following exhibits in support of the opponent’s case:

DJH-1Extract from the online version of the Macquarie Dictionary detailing result 1 (of 31 results) for the definition of word “angle”

DJH-2Extract from the Chambers Science and Technology Dictionary (reprinted 1992) of definitions of the word “angle” or words that are prefixed by the word “angle”

19. The evidence in answer consists of a single statutory declaration of Dr John Gilbert Wager.

20. Dr Wager is a mechanical engineer with a Ph.D. in Industrial engineering. He worked as a faculty member with the University of Western Australia for forty years and has been involved in a number of industry related programmes and consulting projects. The Wager declaration relies on the following exhibits in support of the applicant’s case:

JGW-1Letter from David Hughes of Griffith Hack including “Evidence-in-support”

JGW-2     Amendments

JGW-3Curriculum Vitae

21. The evidence in reply consists of just one statutory declaration, which is a second declaration by Mr Smith.  The second Smith declaration rebuts the statements made in the Wager declaration.

SUBMISSIONS AT THE HEARING

22. During the hearing Mr Fox stated at the outset that his submissions at the hearing focus on the matters that are most important to be dealt with in respect to the proposed amendments. Although he did not argue several matters, I will address each of the particulars raised in the amended statement of grounds and particulars.

23. I will provide the details of what is contained in the evidence, and the details of the parties’ submissions, where relevant, later in my decision.

DECISION

Law Relating to Allowability of Amendments

24. Section 102 of the Patents Act 1990 provides that

(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 clerical error or obvious mistake made in, or in relation to, a complete specification.

25. Section 40 the Patents Act 1990 further provides that

(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.

26. 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.

27. It is also important to note here that a delegate of the Commissioner of Patents has already issued a decision having determined certain issues in relation to the present application. I need to bear in mind that this determination is final, and can not be varied subsequently except on appeal (see R v Smith;Ex Parte Mole Engineering Pty Ltd (1981) 35 ALR 119).

Subsection 102(1): In Substance Disclosed in the Specification as Filed

28. 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, then in effect that 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).

29. The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69 at [98-99] as being relevant to the consideration of fair basis is:

·    whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or

·    whether the claims travel beyond the subject matter of the invention described in the specification [Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236].

30. Four particulars are raised under this ground of opposition.

31. The first particular states that claim 1 as amended includes the feature that “a section” of the side wall between at least one adjacent pairs of reinforcing members includes at least one internal ridge running therebetween. It further states that the specification as filed makes no reference to the internal ridge running between only “a section” of the side wall between adjacent reinforcing members, therefore the claims include subject matter not in substance disclosed in the specification as filed.

32. During the hearing, Mr Fox submitted that it is not unnatural to say that due to the term “a section”, the amended claim 1 now includes within its scope a part of the wall between the reinforcing members, which defines a different type of ridge than what was disclosed in the specification as filed.  Mr Smith, the opponent’s witness, also stated that the introduction of the term “a section of” in the amended claim 1 broadens claim 1 to allow for the situation where the internal ridges are not continuous across the side walls between the pair of reinforcing members.

33. In response, Mr Garnsey submitted that “section” is expressly used in the body of the complete specification at page 1 lines 28 and 29 and at page 4 line 22-24, and directed my attention to Figures 2a, 2b, 3a, and 3b showing internal ridges extending along “sections” of the side wall of the container. He argued that the internal ridge extends between adjacent reinforcing members but need not extend the entire length of the side wall.

34. Mr Garnsey further argued that the ridge runs from one reinforcing member to another and the claim does not claim a ridge only partially extending between the reinforcing members. He submitted that the actual amended wording is “wherein a section of said side wall between at least one adjacent pair of said reinforcing members includes at least one internal ridge running therebetween...” and the wording “includes at least one internal ridge running therebetween” of the accepted claim 2 has not changed.  On my questioning, Mr Garnsey indicated that a ridge which runs only along a part of the wall between the reinforcing members is not included within the scope of the claim because if it falls short of either reinforcing members then is not running between them.  He also asserted that on reading the plain language of the specification and the claims, it is clear that the specification does not disclose partially extending ridge. Dr Wager, the applicant’s witness, stated that the amended claim 1 is consistent with the sections of side wall shown in Figures 2a, 2b, 3a and 3b, and is not broadened in this regard over accepted claim 1 or 2.

35. From the specification as filed (particularly pages 1, 4 and the Figures), I am satisfied that there is a clear disclosure of sections of side wall, and the side wall between at least one adjacent pair of reinforcing members including at least one internal ridge. Having resolved that, the question before me is whether the term “a section” as defined in amended claim 1 includes within its scope a part of the wall between the reinforcing members.

36. In my view, the term “a section” of the side wall should not be read and construed in isolation.  Rather, it must be construed when read together with other words in the phrase “a section of said side wall …running therebetween”. In this phrase, the terms “running therebetween” carry some meaning, and the question is whether these terms provide any limitation to the term “a section” of the side wall.

37. There is no evidence before me which indicates that these terms have a special meaning in the relevant art. Therefore, I will try to construe these terms according to my understanding of their ordinary English meaning. The term “running” itself is clear in its everyday meaning and when read in conjunction with the term “therebetween”, it is in my opinion self-evident that the internal ridge extends from one reinforcing member to other. Therefore, I consider that the opponent’s argument can not be sustained in regard to this particular.

38. The second particular states that claim 1 as amended includes within its scope an internal ridge which includes only “a first wall portion” without requiring a “second wall portion”, and therefore, the claim includes within its scope side wall structures not in substance disclosed in the specification as filed.  The parties did not provide any evidence or submissions on this matter. I can see reference to various wall portions in the specification as filed. Most notably, the broadest form of invention as originally disclosed was not limited to the inclusion of a second wall portion. Accordingly, I am unable to conclude that the amended claim 1 includes within its scope side wall structures not in substance disclosed in the specification as filed.

39. The third particular states that claim 1 as amended includes the feature that the first wall portion of the internal ridge is “angled towards an interior of said container”, however the specification as filed states that the first wall portion is angled “from said wall”. The particular further states that without including the phrase “from said wall”, there is no reference to where the angle is formed and as such claim 1 now includes within its scope an angle formed within the first wall portion which is not in substance disclosed in the specification as filed.

40. Mr Garnsey, in his submissions, indicated that the above feature (portion 8a) finds support in the specification as filed in Figures 2a, 2b, 3a, 4b and 5 and page 4 lines 14-16, and that the term “from said side wall” was not a limitation of originally filed and accepted independent claims 1 and 2. The question before me is whether the feature “said at least one internal ridge including a first wall portion angled towards an interior of said container” is fairly based on the specification as filed or not. I can clearly see the above feature in the figures pointed out by Mr Garnsey and consequently the opponent’s argument is untenable in this matter.

41. The last particular under this ground of opposition states that claim 1 as amended includes that “the angle is in the direction of flow of material during said rotary or tipping unloading” but the specification as filed does not specifically state that the angle is in the direction of flow “during said rotary or tipping unloading”.

42. In response, Mr Garnsey submitted that the “rotary or tipping unloading” finds support on page 5 line 11, and page 8 lines 10-11 of the specification. The whole phrase finds support at page 2 lines 3-4, page 5 lines 6-22 and page 8 lines 10-17 of the specification. From reading the relevant portions of the specification as filed, I am satisfied that the feature is in substance disclosed.

43. Consequently, I conclude that the opposition fails under this ground of opposition.  

Paragraph 102(2)(a): In Substance Fall Within the Scope of the Claims before amendment

44. A useful test for considering the allowability of an amendment under section 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 where the High Court stated:

“The amending claim must in substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether on not a particular act or a particular article is an infringement of the patent.”

45. I note that the allowability of an amendment under section 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in substance fall within the scope of every claim before amendment, rather it only need to in substance fall within the scope of broadest claim(s) before amendment. This finds support in Robertshaw Controls Co  v GSA Industries Ltd (1991) AIPC 90-784 at page 37,460 where it was pointed out that:

"There is also the fact that the Act does not require amended claim 3 to fall within the scope of the omnibus claim before amendment, but only within the scope of the claims ... while it may be that new claim 3 does not fall within the scope of the previous omnibus claim (a matter which I do not have to decide), it certainly falls within the scope of claim 1 before amendment, and consequently does not contravene the provisions of s. 78(2)(a) [the predecessor of section 102(2)(a )]."

46. The particulars raised under subsection 102(1) are also raised under paragraph 102(2)(a) to assert that the claims, as amended, do not in substance fall within the scope of the claims before amendment.

47. In regard to the first particular under this ground of opposition, I have already found that the amended claim 1 does not include within its scope an internal ridge running along a part of the side wall between an adjacent pair of reinforcing members. I consider it to be a situation where the inclusion of the term “a section” has no effect on the scope of the claim. Therefore, I conclude that the amended claim 1 does not broaden the scope of accepted claims. Hence, the opposition fails in this respect. 

48. Mr Fox did not make any submissions in respect of the other three particulars raised under this ground of opposition. However, Mr Garnsey submitted that the amended claim 1 reproduces features of accepted claims 6 and 8. Reading the amended claims as a whole and claims 6 and 8 in particular, I am satisfied that the amended claims in substance fall within the scope of the claims before amendment.

49. Consequently, I conclude that the opposition fails under this ground of opposition.

Paragraph 102(2)(b): Comply With Subsection 40(2) or (3)

Comply With Subsection 40(2)(a): Specification must describe the invention fully

50. The test accepted in Patent Gesellschaft AG v Saudi Livestock Transport and Trading Company [1997] FCA 95 as being relevant to the consideration whether the specification describes the invention fully is:

“The specification contains a full description if it makes the nature of the invention plain to persons having reasonably competent knowledge of the subject and also makes it plain, to persons having reasonable skill, how to perform the invention”

51. The only particular raised under this ground of opposition states that the specification as amended is directed to a container for transporting bulk material “for rotary or tipping unloading”, however the specification provides no explanation of the rotary and tipping unloading and there are no drawings to illustrate such unloading techniques. The particular further states that the issue is compounded by the introduction in the amended claim 1 of the requirement that an angle associated with the first wall portion “is in the direction of flow of material during said rotary or tipping unloading”, and that there is no description in the specification of the material flow during unloading in general and specifically in “rotary or tipping unloading”. At the hearing, Mr Fox argued that the feature of rotary or tipping unloading was referred to in the body of the specification in passing. Accordingly, in view of the amendments, there is a failure to describe the invention fully, including the best method known to the applicant of performing the invention.

52. Mr Garnsey argued that the language of the description and claims is clear as a matter of ordinary language, but if the meaning of the specification and claims is not clear, the meaning is that which is understood by the skilled addressee.  He further argued that the applicant is not required to condescend to the minute detail, rather is entitled to assume that the addressee is a person normally skilled in that art and possessed of the CGK pertaining to the same. Mr Garnsey submitted that the requirement of “sufficiency” is met even if the specification did contain some mistakes or omissions, provided the same can be rectified without the exercise of inventive faculty.

53. It is clear from the authorities that a person skilled in the relevant art is the addressee of the specification. I agree that while drafting the specification, the applicant is entitled to assume that the skilled addressee possesses the CGK in the relevant art. I note that the invention is not directed to rotary or tipping unloading per se. From the evidence on file, I can also see that Mr Smith, the opponent’s witness, did not have any problem understanding rotary or tipping unloading. In view of the above, I consider that a person skilled in the art will have no difficulty in performing the invention. Therefore, I conclude that the opponent’s argument is untenable in the present matter.

Comply With Subsection 40(2)(b): Specification must end with claim or claims defining the invention

54. A claim is a portion of the specification which fulfils a separate and distinct function of defining the monopoly for which the application has been made. The relevant test for the requirement that a complete specification must end with a claim or claims defining the invention is whether the claim under question defines the monopoly without sufficient ambiguity. This view was expressed in PhotoCure ASA v Queens’s University at Kingston [2005] FCA 344 at [117], where the Federal Court stated:

“Section 40(2)(b) of the Act requires that a complete specification must “end with a claim or claims defining the invention”. This requirement is related to the requirement in s 40(3) that the claims must be clear and succinct, in that if sufficient ambiguity attends a claim it may be invalid for failing to define the invention. However, invalidity will only arise if the claim is “incapable of resolution by a skilled addressee by the application of common sense and common knowledge”.”

55. The only particular raised under this ground of opposition states that the specification teaches that the incorporation of an integrally formed internal ridge to a container for bulk product can act as an in-built longitudinal structure stiffener provided that certain structural and manufacturing requirements are met. Furthermore, the specification teaches that it is essential that the internal ridge is designed so as to ensure that all product is unloaded, as trapped product may unbalance a container thought to be unloaded thereby possibly causing derailment or collapsing of the container. The particular further states that therefore claim 1 of the specification as amended does not define the invention as the internal ridge as claimed is not necessarily limited to one which would provide adequate strength to the container nor which would ensure that all products is unloaded following rotary or tipping unloading.

56. In response, Mr Gransey submitted that the specification ends with a claim or claims defining the invention and, thus, there is no basis for this ground.

57. I consider that the issue raised by the opponent relates to the question of inutility, or at best to a mismatch between the invention claimed and the invention described. On either view, the position for which the opponent contends is unsustainable under this ground of opposition. In my view, the amended claim 1 unambiguously define the invention and meets the above requirement of the Patents Act.

Comply With Subsection 40(3): Claims must be clear

58. The function of the claims is to clearly and precisely define the monopoly claimed. Their primary objective is to limit the monopoly. In order to understand a claim, it is impermissible to resort to the body of the specification if the words of the claim are clear and unambiguous. In Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [11]; (1974) 130 CLR 461, the High Court stated:

“…the settled rule is that in ascertaining the width of a particular claim it is not permissible to vary or qualify the plain and unambiguous meaning of the claim by reference to the body of the specification (Welch Perrin & Co. Pty Ltd  v Worrel [1961] HCA 91; (1961) 106 CLR 588, at p 610).”

59. However, if the claim is ambiguous then one may refer to the body of the specification for clarification. In Interlego (Supra) at [14], the High Court further stated:

“If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meanings of the words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification…”

60. Patent claims may contain terms that are imprecise. This does not give rise to an objection of lack of clarity if it is possible for the addressee to ascertain whether or not an act falls within the ambit of the claim. This is a practical determination, rather than a strictly literal exercise, and it is acceptable if there is minor uncertainty at the edges of a claim.

"The court will give little weight to puzzles which may arise 'at the edge of the claim' if those puzzles would not, as a practical matter, cause difficulty for the skilled addressee or manufacturer wishing to satisfy himself that what he proposes to do will not infringe that patent" (Glaverbel SA v British Coal Corp [1994] RPC 443 at 495).

61. The first particular states that claim 1 as amended is not clear because the phrase “for rotary or tipping unloading” is not clear. For example, it is not clear what is contemplated by “tipping unloading” and whether that unloading requires rotation of the container, and that if it does require rotation of the container, then what is the distinction between “rotary” and “tipping” unloading.

62. Mr Garnsey submitted that the phrase is clear and a container of the type can be unloaded by rotation or tipping. The specification clearly describes that the container according to the invention can be so unloaded (page 8 lines 9-12). The relevant skilled person would understand the actual mechanism of unloading. The invention relates to the container and not the unloading per se and Mr Smith, the opponent’s witness, has no difficulty in understanding at least some forms of rotary and tipping unloading.

63. I note that the witnesses from both the parties had no difficulty in understanding the terms rotary or tipping unloading. Therefore, the opponent’s argument fails on this particular.

64. The second particular states that claim 1 as amended is not clear because the shape and position of “the internal ridge” is unclear. Mr Fox argued that the accepted claim 2 was able to be construed with the resulting construction of the “internal ridge” being consistent with the embodiment. However, the amended claim 1 now describes the “internal ridge” in wholly different terms without making reference to certain features defined in the accepted claims and directed my attention to several aspects of the amended claim 1 which render the structure of the “internal ridge” unclear. Mr Fox submitted that the difficulty in construing the amended claim 1 is further compounded by the introduction of the feature “wherein the angle is in the direction of flow of material during said rotary or tipping unloading”. He asserted that the use of the term “angle” is not appropriate as it is not a vector, and it is not possible to establish what inclination of the “first portion” of the wall is required to fall within the scope of the amended claim 1. Mr Smith, the opponent’s witness, stated that the amended claim 1 requires clarification with its use of the word “angle” which does not have a direction.

65. In support of his arguments, Mr Fox directed my attention to the delegate’s decision in Bradken (supra) and the diagrams of some shapes that may fall within the scope of the amended claim 1. Mr Fox submitted that if the amendments are capable of any meaning, then they have the effect that amended claim 1 now includes shapes of the internal ridge which are wholly different from those in claim 2 as accepted.

66. In response, Mr Garnsey argued that claim 1 as amended is clear and a common sense approach to the construction of the plain language is required. He stated that the opponent was isolating the features without paying attention to the rest of the wording of claim 1. The claim distinguishes the internally directed ridge from an externally directed ridge which is consistent with being an “internal ridge”. In regard to the phrase “wherein the angle is in the direction of flow of material during said rotary or tipping unloading”, he asserted that the phrase is taken directly from original claim 8 as filed and when taken in the context of rotary or tipping unloading where the material passes through an upper opening of the container, the first wall portion may be angled in an upward direction. In regard to the definition of the word “angle”, Mr Garnsey indicated that there are many possible meanings of the word angle or angles, and each must be placed in the context in which it is used.

67. Mr Garnsey criticized the opponent’s drawings describing them as speculative. He stated that the drawings disregard the fact that the amended claim 1 defines an internal ridge which has a depth greater than the thickness of the side wall and do not fit with the language of the claim. Mr Garnsey asserted that the ridge as defined in the amended claims is consistent with the delegate’s decision in Bradken (supra). He submitted that lack of clarity disappears when the amended claim 1 is read as a whole.  

68. It is evident to me that the opponent is construing various phrases of the amended  claim 1 in isolation from each other. The individual phrases when read in isolation may not be clear and may have some element of uncertainty, but that does not matter. In my opinion, the shape and position of the internal ridge must be determined by construing the wording of the claim as a whole rather than determining the meaning of individual phrases in isolation. Amended claim 1 defines the internal ridge as follows:

“….the said at least one internal ridge including a first wall portion angled towards an interior of said container, wherein the angle is in the direction of flow of material during said rotary of tipping unloading, and wherein said at least one internal ridge is integrally formed within said side wall and said at least one internal ridge has a depth greater than the thickness of said side wall.”

69. Although Mr Fox described the clarity of the amended claim 1 as an issue of primary concern, there is no expert evidence before me suggesting that a person skilled in the art would have difficulty in construing the shape and position of the internal ridge when reading the above wording as a whole. The above wording of the claim is clear to me, and in the absence of any evidence to the contrary I am unable to determine that the amended claim 1 lacks clarity. The opposition, therefore, fails in this respect.

70. The third particular states that the new omnibus claim 26 is not clear as the invention as now claimed in claim 1 does not encompass the embodiments shown in any of the figures 2a, 2b, 3a, 3b, 4b, 5 or 8.  Mr Fox submitted that the new omnibus claim must be understood in relation to renumbered omnibus claim 23. He argued that it was not necessary to insert claim 26 unless there was some discord in the invention defined in the amended claim 1 that it travelled beyond the disclosure. He also submitted that claim 1 as amended is so unclear that it is not possible to make any sensible comparison with the drawings accompanying the specification.

71. Mr Garnsey submitted that the claim 26 is narrower to the amended claim 1, and the features shown in the aforementioned figures provide further limitations to the features in claim 1. He further stated that if the amended claim 1 was allowable then there should not be any problem in allowing claim 26.

72. I have already found that the amended claim 1 falls within the scope of the accepted claims and is clear. Since new omnibus claim 26 is appended to claim 1 and is narrower, there is no basis for the opponent’s arguments in this matter.

73. Consequently, the opposition fails on this ground of opposition.

CONCLUSION

74. I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b), and, as a consequence, the opposition fails on all grounds relied on.  Thus subject to appeal, I refuse the opposition and allow the amendments.

COSTS

75. Ordinarily in proceedings such as these, costs follow the event.  There appears to be no special circumstances applying in relation to this matter which warrant varying that approach.  Therefore, I award costs in accordance with Schedule 8 of the Patent Regulations against the opponent, Bradken Resources Pty Ltd.

Dr S. K. Aggarwal
Delegate of the Commissioner of Patents

18 August 2009

Patent attorneys for the applicant   : Watermark Patent and Trade Mark Attorneys, Perth

Patent attorneys for the opponent   : Griffith Hack, Sydney