Concorde Trading Pty Ltd v Croner Trading Pty Ltd
[1996] APO 15
•29 February 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 571375 in the name of CONCORDE TRADING PTY LTD
Title: Jumpball
Action: Opposition by CRONER TRADING PTY LTD under Sec 59 of the Patents Act 1952
Decision: Issued .
Abstract: Discussion of nature of hearing following amendment of a specification as a result of an earlier decision in an opposition; the Commissioner is obliged to offer an opponent a further opportunity to be heard in these circumstances and thus it would be contrary to natural justice to shut out an opponent on a mere technicality as argued by the applicant in the present case; the Commissioner is estopped in a hearing such as the present from reconsidering any matter that was determined in an earlier decision.
Opposition succeeds on the ground of non-compliance with sec 40, but objections of lack of novelty not sustained; applicant given a further opportunity to amend; no award of costs.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 571375 by CONCORDE TRADING PTY LTD and opposition by CRONER TRADING PTY LTD under Section 59 of the Patents Act 1952
background
Patent application 571375 by Concorde Trading Pty Ltd (Concorde) was advertised accepted on 14 April 1988. The grant of a patent on the application was subsequently opposed by Croner Trading Pty Ltd (Croner) under sec 59 of the Patents Act 1952.
In my decision dated 25 September 1992 I found that the opposition succeeded on the grounds of lack of novelty and non-compliance with sec 40, but gave Concorde the opportunity to amend. Concorde duly filed a request to amend which was advertised on 11 March 1993. On 11 June 1993 Croner filed a notice of opposition under sec 104 of the Patents Act 1990 to the allowance of the amendments which precipitated a request from Concorde for dismissal of the opposition. In a decision dated 4 May 1994, the delegate of the Commissioner found that there were no grounds for dismissing the opposition , but directed that certain particulars may not be argued by Croner.
On 23 August 1994 Croner applied for a review of the delegate’s decision by the Administrative Appeals Tribunal. The tribunal decided that it had no jurisdiction to review or hear an application with respect to the powers exercised by the Commissioner or his delegate in making the relevant direction and, consequently, dismissed Croner’s application.
The matter of the sec 104 opposition was heard by me and, in August 1995, I issued a decision dismissing the opposition. The amendments have now been allowed and incorporated into the specification.
On 4 September 1995 Mr Robert Cross of Phillips Ormonde & Fitzpatrick advised by letter that
Croner wished to be further heard in relation to the sec 59 opposition. In subsequent correspondence Mr Cross indicated that the opposition would be pursued on the grounds that the specification failed to comply with sec 40 and that certain claims lacked novelty The matter was finally set for hearing in Canberra on 27 November 1995. Concorde was represented by Mr John Walsh of H.R. Hodgkinson & Co, while Mr Cross appeared for Croner.
As application 571375 was both lodged and advertised as accepted before the commencement of the 1990 Act, the opposition is proceeding under the provisions of the 1952 Act and Regulations by reason of sec 234(3) of the 1990 Act and reg 23.3 of the Patents Regulations 1991.
THE SPECIFICATION AS AMENDED
The amendments made to the specification substituted the claims as accepted with a new set of claims of which the independent claims read as follows:
“1. A jump ball consisting of an inflatable ball body of an elastic material and a rigid annular plate having a hole therethrough which provides support for the feet of a user wherein, in the inflated condition, the ball body is positioned in said hole and jammed against the annular plate of which jump ball at least the ball body is manufactured in a mould, characterised in that in the inflated condition of the ball body, this ball body is coupled with the annular plate by means of peripherally and continuously extending corresponding male and female profile parts of the ball body and plate respectively, of which profile parts the male profile part that is present in the ball body is integral with the ball body and consists of the same material, said profile parts co-operating to effect interlocking between said plate and ball body thereby preventing axial movement of said plate relative to said ball body.
6. A jump ball consisting of an inflatable ball body of an elastic material and having a preformed groove integral therewith and consisting of the same material and a rigid annular plate having a hole therethrough and which provides support for the feet of a user, wherein, in the inflated condition, the ball body is positioned in said hole and jammed against the annular plate of which jump ball at least the ball body is manufactured in a mould, characterised in that in the inflated condition of the ball body, this ball body is coupled with the annular plate by means of peripherally and continuously extending corresponding male and female profile parts of which profile parts the male part is on the plate and the female profile part is present in the ball body and consists of said preformed groove of which the bottom is radially inwards of the opening of the groove with which groove the male profile part fits, said profile parts co-operating to thereby effect interlocking between said plate and ball body thereby preventing axial movement of said plate relative to said ball body.
14. A jump ball consisting of an inflatable ball body of an elastic material and a rigid annular plate having a hole therethrough and which provides support for the feet of a user wherein, in the inflated condition, the ball body is positioned in said hole and jammed against the annular plate of which ball at least the ball body is manufactured in a mould, characterised in that in the inflated condition of the ball body this ball body is coupled with the annular plate by means of corresponding male and female profile parts of the plate and ball body respectively, the male profile part being on the annular plate and the female profile part being present in the ball body and consisting of a groove on (sic) which the bottom is radially inwards of the opening of the groove into which groove the male profile of the plate fits, said profile parts effecting interlocking between said plate and ball body thereby preventing axial movement of said plate relative to said ball body, said groove being substantially rectangular in cross section and having legs forming sidewalls which are in turn formed by a thickening in the wall of the ball body at the extremities of the said legs; each of said sidewalls forming a bearing shoulder onto which a surface of the annular plate bears thereby effecting said restraint against axial travel of said plate relative to said ball body.”
The portions highlighted above were added to the accepted claims as a result of the amendments made to the specification. All other claims, except omnibus claim 17, are dependent claims. The only one of these which I need to note here is claim 2 which provides:
“A jump ball according to claim 1, characterised in that the female profile consists of a groove in the inner edge of the plate and the male profile consists of a radially extending flange which is cast on the ball body.”
DECISION
Right to be further heard
In a letter dated 14 September 1995 Mr Walsh argued that Croner should not be granted a further opportunity to be heard since it had not been invited by the Commissioner to be heard again (para 2.11.1 of the Manual of Practice & Procedure Vol 3 refers).
I reject entirely this proposition. In opposition proceedings the delegate of the Commissioner hearing the matter not infrequently finds the opponent’s case is partially made out and issues a decision giving the applicant the opportunity to file amendments which address the delegate’s adverse findings. It is the practice of the Commissioner after any such amendments have been allowed to offer the opponent a further opportunity to be heard before the fate of the opposed application is finally determined. This practice arises from the Commissioner’s obligation under reg 85 of the 1952 Act (see also sec 216 and reg 22.22 of the 1990 Act) to give a person the opportunity of being heard before exercising any discretionary power adversely to that person. Furthermore, in proceedings such as the present the Commissioner acts as a tribunal which must observe the principles of natural justice, and I note here the following comments in Hallsbury 4th Ed. Vol 1 para 76 p.94:
“Where there is an express or implied obligation to conduct an oral hearing, it is contrary to natural justice to fail to give a party any opportunity of being heard at all ... or to preclude him or his advocate from addressing the tribunal or making submissions ...”
It is clear from the above that although Croner in effect “pre-empted” the Commissioner’s invitation to be heard again, this procedural technicality does not displace its rights consistent with natural justice. Consequently, an injustice would be done to Croner if it was denied the opportunity to argue its case against the specification as amended. I would add here that, contrary to what Mr Walsh seemed to be suggesting, the criteria for opposing the allowance of an amendment do not correspond to the grounds under which the grant of a patent may be opposed. Thus for example an amendment under sec 104 intended to overcome a ground of objection under sec 59 may not in fact overcome that ground but nevertheless be unobjectionable under sec 102.
Nature of this decision
The question of whether Croner is entitled to re-argue matters which have already been the subject of my earlier decision in the opposition to grant was actively contested by Mr Cross and Mr Walsh.
Formerly, an initial decision in accordance with sec 60(1) of the 1952 Act was styled as “interim”, while the decision following amendment of a specification consequential upon the “interim” decision was styled as “final”, whether or not preceded by another hearing. The nature of a hearing following a decision in an opposition, and subsequent amendments, is discussed in Perkin Elmer Corporationv Varian Techtron Pty Ltd 5 IPR 321. Reference is made in that decision to the decision of the High Court in Exparte Mole Engineering Pty Ltd 147 CLR 340.
In essence, the import of the decision in Ex parte Mole Engineering, supra is that my earlier decision in the opposition, ie the “interim” decision, is final insofar as it determined all issues capable of determination at that time. Furthermore, as Mason J stated at p.348 in the former decision:
“The Commissioner can, notwithstanding a delegation, hear and decide a case under s.60 (s.11(2)). But clearly once a decision has been made under s.60 the Commissioner cannot re-hear the proceeding and arrive at a different conclusion. If he could do so, an impossible situation would arise, with no statutory provision to indicate which of the two conflicting decisions was to prevail.”
As a result, I am estopped in a hearing such as the present from reconsidering any matter that was determined in my earlier decision. It also follows that this hearing is not an opportunity to rectify inadequacies of the case previously presented by a party to the opposition. Neither is this hearing in any manner or form a de facto appeal or review of my earlier decision.
Thus it is not open for me:
- to reconsider the fair basis of claim 1 as regards the interlocking effect produced by the male
and female profile parts;
- to reconsider the fair basis of claims 6 and 14 as regards the form of the male and female
profile parts, and the interlocking effect produced by them;
- to reconsider the novelty of claim 14; or
- to reconsider the fair basis of claim 14 as regards the inclusion of a preformed female profile
part.
The only issues I can now deal with are those arising out of the specific deficiencies which I found in my earlier decision, and anything arising consequentially upon amendments to correct those deficiencies. However in relation to the first and second points above I would mention that the approach taken by Mr Cross to the interpretation of the claims does not, in my view, find support in the authorities which have stated as a matter of general principle that a specification should be construed “so as not to lead to a foolish result or one which the patentee could not have contemplated” (EMI v Lissen (1938) 56 RPC 233).
Matters arising from my earlier decision
In my view the amendments made to the specification overcome the sec 40 matters that I identified in my earlier decision insofar as they relate to claim 6. In particular I note that claim 6 now refers to “peripherally and continuously extending” male and female profile parts of which the female part consists of a preformed groove integral with the inflatable ball body. Consequently, and in accordance with my earlier decision, I am also satisfied that claim 6 is not anticipated by the prior art relied on by Croner.
However the amendments do not introduce the feature of “peripherally and continuously extending” profile parts into claim 14, and I repeat here my earlier observation that the specification is devoid of any suggestion that the profile parts may only partially extend around the ball body or the annular plate as presently allowed by claim 14. As also stated in my earlier decision (p.7):
“The main thrust of this criticism [by counsel for Croner] centres on the broad disclosure on page 2 where it is stated that the interlocking effect is achieved by having peripherally continuously extending male and female profile parts of the ball body and the annular plate respectively. Given the plain meaning of the term “respectively”, this means that the male part is of the ball body and the female part is of the plate ... On page 3 it is said that two solutions may arise from this broad disclosure. In one solution, the female profile part consists of a groove in the inner edge of the annular plate and the male profile part consists of a radially extending flange in the ball body. This arrangement is illustrated in Figs. 3, 6 and 7. However in the second solution the female part consists of a groove in the ball body which receives a male profile on the plate. This arrangement is shown in Figs. 1, 2 and 4 and on my reading of the body of the specification seems to constitute the most preferred form of the invention. In any event this second solution is at odds with the broad disclosure on page 2 and introduces doubt as to whether the female profile part must be present on the annular plate as indicated on page 2, or can be present on either the plate or the ball body as suggested by page 3. I therefore conclude that the specification does not fully describe the invention because it is not clear exactly what features are essential to the invention.”
No attempt has been made by Concorde to correct this defect. Furthermore, it is apparent from the overall description of the first “solution” mentioned above, viz. where the female profile part is of the plate and the male profile part is of the ball body, that the only form of the profile parts contemplated by the invention in the context of this arrangement is as presently defined by claim 2. Generally speaking, claims should be interpreted to avoid ambiguity (Henrikson v Tallon (1965) RPC 434) and thus, on the presumption that claim 2 is not redundant over claim 1, the latter claim must be given a broader interpretation with the result that it is claiming something not fairly based on the description.
To summarise, I find that:
- claim 6 as amended avoids the sec 40 deficiencies and grounds of anticipation identified in my
earlier decision;
- claims 1 and 14 as amended are not fairly based for the reasons given above and in my earlier
decision; and
- the specification as amended does not fully describe the invention for the reasons given above
and in my earlier decision.
In short, the amendments made to the specification consequential upon my earlier decision do not overcome all grounds of objection which I found in that decision.
CONCLUSION
I have decided that the opposition has been successful in relation to the ground of non-compliance with sec 40, but unsuccessful in relation to the ground of lack of novelty. As the sec 40 defects can in my view be easily overcome, I believe Concorde should be given a further opportunity to amend the specification of application 571375. On the other hand, there is a need to finalise the matter expeditiously in the public interest; the opposition proceedings first began in 1988. Thus I allow Concorde 30 days from the date of this decision to propose amendments accordingly.
COSTS
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 that the opposition is only partially successful on the relatively minor ground of non-compliance with sec 40. I also note that a significant proportion of the issues raised by Croner had already been the subject of my earlier decision and therefore could not be re-heard. Taking all the circumstances into account, I make no award of costs.
O.L.Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : H.R. Hodgkinson & Co, Sydney
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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