Concorde Trading Pty Ltd v Croner Trading Pty Ltd

[1995] APO 43

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 104

Decision:  Issued            .

Abstract:  The construction of a patent specification is for the Commissioner alone to decide as a matter of law.  Commissioner entitled to act on any matter which is logically probative of the issues being decided.  Patent attorneys not prohibited from providing evidence on matters of construction providing these matters have been adequately particularised.

An opponent who has commented under reg 10.2(7) is not precluded from opposing the allowance of the amendments at issue, nor restricted in its opposition by any comments it may have provided.

The requirements of sec 102(2)(b) considered. Opposition dismissed. Amendments allowed.

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 104 of the Patents Act 1990

background

Patent application 571375 was advertised accepted on 14 April 1988. Subsequent to acceptance there have been several changes in the name of the applicant; the applicant is now recorded as Concorde Trading Pty Ltd (Concorde). On 13 July 1988 Croner Trading Pty Ltd (Croner) lodged a notice of opposition under sec 59(1) of the Patents Act 1952 to the grant of a patent on the application.

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 of the 1952 Act, but gave Concorde the opportunity to amend.

On 18 November 1992 Concorde filed a request under sec 104(1) of the 1990 Act for leave to amend the specification of application 571375. Leave was granted and advertised on 11 March 1993. On 11 June 1993 Croner filed a notice of opposition under sec 104(4) to the allowance of the amendments. Croner subsequently filed a statement of grounds and particulars and a statutory declaration by Mr Robert Cross, the patent attorney for Croner, as evidence in support of the opposition

On 13 October 1993 Concorde filed a request for dismissal of the opposition.  In her decision dated 4 May 1994, the Commissioner's delegate found that there were no grounds for dismissing the opposition, but directed that items 7 to 13 and 16 to 22 of the grounds of particulars were not to be relied upon in the opposition.

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.

A hearing to determine the sec 104 opposition took place in Sydney on 9 March 1995. Concorde was represented by Mr John Walsh, patent attorney with H.R. Hodgkinson & Co, and Croner was represented by Mr Cross of Phillips Ormonde & Fitzpatrick. A Mr Brian Fagan of Concorde was also present. I indicated to the parties at the commencement of the hearing that as the direction made by the Commissioner's delegate regarding the conduct of the sec 104 opposition had not been disturbed by the Administrative Appeals Tribunal, the matter would proceed on the basis only of items 1 to 6, 14 and 15 of the statement of particulars.

subject matter

The specification states that the invention relates to play or sports apparatus, known as a jump ball, of the type wherein an inflatable ball body is coupled to a rigid annular plate encircling the ball body.

The ball body is generally coupled to the annular plate by frictional engagement produced by positioning the deflated ball body within the annular plate and then inflating the ball body until it is constricted by the plate so as to jam against and bulge out on either side of the plate to form a waist or "groove" which tightly engages with the inner rim of the plate.

Jump balls of this nature are used in a manner similar to that of a pogo-stick.  A user stands on the annular plate and grasps the ball body between his or her feet.  The user is then able to perform successive bouncing operations with the jump ball by the procedure used with a pogo-stick but with the user's hands free.
However because the ball body slowly deflates over time, the high loads imposed on the friction connection between the ball body and the annular plate during continued use of the jump ball may cause the plate to suddenly slip down over the ball body causing injury to the user. 

The invention addresses this problem by providing interlocking male and female profile parts on the ball body and the annular plate which the specification states "provide an absolute, adequate confinement of the ball body in the ring under all conditions, thus also on decrease of pressure."

the specification as proposed to be amended

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 only claims which I need consider for the purposes of this decision are proposed claims 1, 6 and 14 which 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 repectively, 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 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 text shown underlined above was not present in the claims as accepted, and has been added as a result of the proposed amendments.  The remaining claims as accepted are unaffected by the proposed amendments.

the statement of grounds and particulars

The ground of opposition given in the statement of grounds and particulars is simply that "the amendment is not allowable under Section 102 of the Patents Act 1990". However, the only ground of opposition which has been foreshadowed by the particulars which remain intact for the purposes of these proceedings is the ground available under sec 102(2)(b), and both parties came to the hearing prepared to argue their case on the basis of that ground alone.

The statement of particulars relevantly reads as follows:

"(1)  The feature of lines 2 and 3 of claim 1 ("a hole therethrough which provides support for the feet of a user") is not clear and succinct, and not fairly based on the matter described in the specification, and thus does not comply with subsection 40(3).  The wording of the feature is to the effect that the "hole" provides the support, which is not disclosed, or is unclear in not indicating whether it is the jump ball, the ball body, the plate or the hole which provides the support.  The wording is at variance with that of claims 6 and 14, indicating that a meaning different to that warranted by claims 6 and 14 is to be attributed to claim 1.

(2)  The feature of lines 8 to 11 of claim 1 (from "this ball body ..." to " ... and plate respectively" is such that either claim 1 or claim 2 does not comply with subsection 40(3), or such that claim 1 does not define the invention and does not comply with subsection 40(2).  In relation to subsection 40(3), the feature is such that either claim 1 is not fairly based, or that claim 2 is redundant.  In claim 1, the male profile part is on the ball body and the female profile profile (sic) part is on the plate, and the only arrangement disclosed in the complete specification as filed and as accepted is that disclosed in claim 2 ...

(3)  The features of claim 1 comprising the feature of lines 8 to 11, detailed above in Particular (2), and lines 13 to 16 (from "said profile parts ... " to the end of claim 1) are such that claim 1 does not define the invention and therefore does not comply with subsection 40(2), and is not fairly based and therefore does not comply with subsection 40(3).  In the context of claim 1 of allocating the male profile part to the ball body and the female profile part to the plate, the only disclosure of the complete specification as filed and as accepted is of a flange of a selected cross-section as the male profile part which, as indicated at page 3, lines 18 to 21 of the specification as filed and accepted (new page 3b, lines 2 to 5 of the amendment), "fits with this shape into a complementary shaped groove in the inner edge of the plate".  Claim 1, in specifying in these features, "corresponding" and "co-operating to effect interlocking", does not even necessitate fitting of the male part in the female part, let alone co-operating to effect interlocking other than as a consequence of inflation of the ball body.  There is nothing in claim 1 to necessitiate that the male and female parts are radially aligned, or that "preventing axial movement" is to be in each axial direction, rather than in one of the axial directions.  Thus, claim 1 allows for an axially open female part which, with inflation of the ball body, axially receives or abuts the male part to prevent axial movement in only one of the axial directions.

(4)  Each of claims 2 to 5 does not define the invention and is not fairly based for the same reasons as detailed in Particular (3).

(5)  The features of lines 2 and 6 of claim 6 "having a preformed groove integral therewith and consisting of the same material" is unclear and not fairly based on matter disclosed in the specification, and thus does not comply with subsection 40(3).  A groove denotes the absence of material, and it is unclear how it can be either integral with the ball body or made of the same material.  All that is disclosed in the specification as filed and as accepted is that the groove per se (i.e. as preformed):

(i)   is in the ball body;

(ii)  is circular;

(iii) has a bottom which is inwards from the opening of
     the groove; and

(iv)  is such that the male profile of the plate fits
     into the groove.

Claim 6 does subsequently refer, in a passage at lines 14 to 16, to "said preformed groove of which the bottom is radially inwards of the opening of the groove with which groove the male profile of the plate fits".  However, this passage is unclear in the absence of any antecedent for "the bottom" or "the opening".  Also, the passage follows reference to the ball body being positioned in the hole and jammed against the annular plate and, in particular, to that which is to obtain "in the inflated condition of the ball body".  The claim departs from the disclosure in allowing for compliance with the passage only as a consequence of inflation of the ball body, and not solely from the form of the groove per se.

(6)  The feature of lines 12 and 13 of claim 6 of "the male part is on the plate" is unclear and not fairly based, and thus does not comply with subsection 40(3).  The wording allows for a male part which is additional to that which defines the plate per se.  However, in the context of a groove in the ball body, the only disclosure in the complete specification as filed and accepted is of a male part which is the inner edge of the plate.  Also, as indicated at page 3, lines 15 to 17 of the specification as filed and accepted (new page 3a, line 38 to new page 3b, line1), it is not merely that inner edge which is the male profile part, but also that the inner edge or male part "has of course a similar shape, so that it fits properly into the groove" (underlining added, with it also being noted that "the groove" is as preformed rather than after inflation of the ball body).

(14) The feature of lines 10 and 11 of claim 14, specifying "the male profile part being on the annular plate" is unclear and without fair basis in the complete specification as filed and as accepted, and claim 14 thus does not comply with subsection 40(3).  In the context of a groove in the ball body, the only disclosure is of a male part of, or defined by, the inner edge of the plate.  The feature of claim 14 either necessitates or allows for a male part additional to the plate per se.

(15) The feature of line 13 of claim 14, specifying "a groove on which the bottom is radially inwards" is unclear and does not comply with subsection 40(3).  The feature indicates or allows for "the bottom" being other than the bottom of the groove.  Also, there is no antecedent for "the bottom"."

decision

Procedural issue

Mr Walsh referred me to the decision in Osram Lamp Works Ltd v Pope's Electric Lamp Co Ltd, (1917) 34 RPC 369 at 391 which states that:

"Where questions of interpretation or sufficiency arise, the court must ascertain the persons to whom the specification is addressed, and when the specification deals with technical matters, must instruct itself as to the technical knowledge which those persons may reasonably be supposed to have possessed at the date of the Patent ... These persons may be assumed to possess  ... a competent knowledge of the art or arts which have to be called into play in carrying the patentee's direction into effect."

He then submitted that the declaration filed as evidence in support of the opposition was of little or no probative value since it was made by Mr Cross and not by an expert in the field of the invention.

The construction of a specification is, of course, for the court alone to decide as a matter of law (see, for example, General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, [1972] RPC 457 at 485). Thus, while the court must place itself in the position of a person to whom the specification is addressed when dealing with questions of construction, it will seek the assistance of expert evidence for this purpose only where the meaning of technical terms or other such matters is in doubt. The primacy of the plain meaning of the terms used in a specification has been upheld in all other circumstances. In my view, it would be illogical to suggest that these principles do not apply to hearings before the Commissioner, and in fact it has been the long-standing practice that at a hearing of an opposition an opponent may raise issues involving sec 40 regardless of whether it has filed evidence in relation to those issues, provided that this ground of opposition was foreshadowed by the opponent before the hearing. Furthermore, there is nothing before me to show that the present case turns on the interpretation of technical matters so as to require the assistance of expert evidence as submitted by Mr Walsh.

It also important to remember that in these proceedings the Commissioner is acting as an administrative tribunal.  In T.A. Miller v The Minister for Housing and Local Government and Another, (1968) 1 WLR 992, Lord Denning M.R. commented that a tribunal (of this kind) is master of its own procedure provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it might not be admitted as evidence in a court of law.

Similarly, the judgement of Deane J. in The Minister for Immigration and Ethnic Affairs v Pochi, 31 ALR 666, included the following statement:

"These technical rules of evidence, however, form no part of the rules of natural justice.  The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined ..."

Accordingly, the Commissioner is entitled to act on any material which is "logically probative" of the issues being decided. 

I would additionally mention in passing that it is not uncommon for a delegate of the Commissioner to make an adverse finding of his or her own volition pursuant to sec 60(3) of the 1990 Act (or sec 60(2) of the 1952 Act) on a sec 40 matter even where the opponent has omitted to make any mention of it.  I also note that sec 40 issues frequently do not lend themselves to being supported by meaningful evidence, but rather must be left to skilled practioners in the field such as patent attorneys to argue their merits, with the proviso that these issues have been adequately particularised (see also Cooper Industries Inc v Metal Manufacturers Ltd, (1994) AIPC 91-051).

For the reasons discussed above, I do not agree with Mr Walsh that evidence by an attorney on matters of construction should be disregarded in opposition proceedings simply because an attorney is not a suitably qualified expert.  In any case, it is clear that the present proceedings are not critically dependent upon the evidence of Mr Cross since this evidence in effect merely repeats the statement of particulars.

Allowability of the proposed amendments

As previously mentioned, the only ground of opposition supported by the statement of particulars is that the proposed amendments contravene sec 102(2)(b), i.e., as a result of the amendments, the specification does not comply with sec 40(2) or (3). In considering the requirements of sec 40, I am mindful of the rules of construction summarised by Sheppard J in Decor Corp v Dart Industries, 13 IPR 385 at page 400.

It has been argued on behalf of Croner that none of the independent claims satisfy the requirements of sec 40.  I will now deal with these claims in turn.

Claim 1

In addressing the allowability of the amendments in terms of proposed claim 1, Mr Cross had three lines of attack.

Firstly, Mr Cross submitted that it is not clear from the wording "a hole therethrough which provides support for the feet of a user" at lines 2 and 3 whether the user's feet are supported by the jump ball, the inflatable ball body, the rigid annular plate or the hole through the plate.  He also submitted that claim 1 is unclear as to whether the "hole" referred to in the above passage is additional to the central hole or opening inherently defined by an annular plate.

A fundamental rule in construing claims is that a construction that would lead to an absurd result should be avoided wherever possible (see Henriksen v Tallon, [1965] RPC 434 at page 443). In applying this rule, I believe that any lack of clarity regarding the "hole" of claim 1 derives solely from applying a strained construction on the relevant portion of the claim, and in particular it seems a nonsense to suggest that a hole could support the feet of a user.

Furthermore, a claim is not to be read in isolation from the body of the specification; it must be read in the context of the specification as a whole, and given a purposive construction.  I have no doubt that, in the context of the present specification, the clear intention is for the feet of a user to be supported by the annular plate.

Secondly, Mr Cross referred to the alternative form of the invention contemplated by the broad disclosure on amended page 3a of the specification wherein 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 which is cast on the ball body.  Put simply, Mr Cross said that although lines 8 to 11 of claim 1 state that the female profile part is of the plate and the male profile part is of the body, the features of the groove and flange are defined in claim 2 and not claim 1. As a consequence, either claim 1 is not fairly based or claim 2 is redundant on claim 1.

Mr Walsh objected to this line of argument on the grounds that
it went beyond matters arising as a result of the amendment and was not confined to the comments made by Croner under reg 10.2(7) with regard to the proposed amendments which followed my decision on the opposition to grant.

I agree with Mr Walsh's first ground of objection. I note from sec 102(2)(b) that non-compliance with sec 40(2) or (3) is only a ground of opposition if it occurs as a result of the amendment. Although the portion of claim 1 identified by Mr Cross has been amended so as to refer to corresponding male and female profile parts, the features of concern to him appeared in claim 1 before amendment.  I also note that claim 2 is not subject to any amendment.  Thus the issues raised by Mr Cross relate to aspects of claims 1 and 2 which were not affected by amendment.  This is also true of his previously mentioned submissions regarding the allegedly ambiguous nature of the reference in claim 1 to "a hole" through the annular plate.  Moreover, if Croner believes that claim 1 (or claim 2) is deficient for the reasons advanced in these proceedings, it could have raised the matter as a ground of opposition under sec 59.  In any case, it is clear from reg 5.3(4) that the presence of pre-existing deficiences, whether or not identified in an opposition to grant, is irrelevant to an opposition to amendment.

Regarding Mr Walsh's second ground of objection, the primary purpose of the provisions of reg 10.2(6) and (7) is to facilitate resolution of a sec 59 opposition.  Thus, where any amendments are proposed to a specification under opposition, the applicant is afforded the opportunity to consider the views of the sec 59 opponent on the proposed amendments, and consequentially to rectify any deficiencies identified by the opponent.  However, as stated in para 22.13.6 of the Manual of Practice and Procedure (Vol 2 - National), an opponent who has provided comments pursuant to reg 10.2(7) is not precluded from subsequently opposing the allowance of those amendments, nor restricted in its opposition by any comments it may have provided. 

Thirdly, Mr Cross said that claim 1 was not necessarily definitive of a male part which "fits in" the female part.  He went on to explain that the terms "male" and "female" can be understood as requiring no more than that the male part projects from the ball body with the female part being defined within the plate, either for a related purpose, or for a somewhat related purpose which is at variance with the primary object of the invention.  Mr Cross submitted that in the latter case, claim 1 is silent as to the conditions under which axial movement is prevented.

There is also a suggestion in the statement of particulars that the provision of "corresponding" male and female parts does not necessarily mean that these parts co-operate to effect interlocking other than as a consequence of inflation of the ball body.  The statement of particulars additionally asserts that there is nothing in claim 1 which strictly limits the male and female parts as being radially aligned, or the prevention of axial movement as being effected in each axial direction.

I am inclined to agree with Mr Walsh that this line of argument is directed to aspects of claim 1 unaffected by the amendment, and has already been the subject of my decision in the opposition to grant.  I again note that an opposition to amendment is limited to matters arising as a result of the amendment.

In any event, I do not accept that claim 1 does not adequately define the manner and extent to which the male and female profile parts co-operate to effect interlocking between the annular plate and ball body.  As stated on page 5 of my decision in the matter of the opposition to grant:

"Mr Caine further submitted that on its proper construction the specification requires the tongue and the groove to unite in a complementary way so that the tongue fits properly into the groove ... The passages throughout the specification to which Mr Caine has referred contain no suggestion that the male part must fit completely within the female part.  From my understanding of the overall disclosure, the male and female parts need do no more than cooperate to the extent necessary to interlock (which has a particular meaning in the mechanical sense) the annular plate and the ball body.  It should be noted here that the body of the specification further qualifies the extent of such cooperation between the male and the female parts as preventing axial movement of the plate relative to the ball body."

I also indicated my agreement with the proposition put to me on behalf of Concorde that it would be clearly understood from the ordinary meaning of the terms "male" and "female" that interlocking of the ball body and the annular plate is effected by means of one profile part which fits into a corresponding profile part without the need to fit wholly and completely within one another.  In my view these earlier findings, which were based on the specification before amendment, apply equally to the present situation.

Furthermore, and applying the principles of purposive construction, there is nothing in claim 1 or the body of the specification to suggest anything other than that axial slippage of the plate is prevented regardless of which face of the plate the user stands on (i.e. the plate is prevented from moving in "both axial directions" relative to the ball body).

On the basis of the foregoing, I do not consider that the proposed amendments would result in the failure of claim 1 to comply with sec 40(2) or (3).  As there are no changes proposed to the claims appended to claim 1, I also find in favour of claims 2 to 5.

Claim 6

Mr Cross raised a number of matters concerning claim 6.

He firstly submitted that as the term "groove" denotes the absence of material, it is not clear how a groove can be either integral with or made of the same material as the ball body as stated by lines 2 and 3 of claim 6.

In my view, the only criticism which may be levelled against this portion of the claim is that it is clumsily worded, but without being in any way unclear.  Furthermore, and given the ordinarily accepted meaning of "groove", I do not consider that the references in claim 6 to "the bottom" and "the opening" of the groove lead to ambiguity as contended by Mr Cross.

Mr Cross then submitted that as a result of the "disjunction" between the reference to "a preformed groove" in the ball body and the ensuing definition of what occurs "in the inflated condition of the ball body", claim 6 is rendered unclear with regard to what else the female profile part consists of, in what way the groove differs "in the inflated condition" compared with its "preformed" condition, and whether the female part at least partially results from inflation of the ball body.

In response Mr Walsh argued that it is clear from applying a purposive approach to claim 6 that "inflated condition" refers to an in-use condition of the claimed invention whereas "preformed groove" refers to a configuration of the ball body and in particular its moulded surface profile.  He also made the point that the reference to a "preformed" groove indicates that axial movement of the annular plate is prevented by something more than inflation of the ball body. 

I agree entirely with the views of Mr Walsh and note in particular the judgement of Burchett J in International Business Machines Corporation v Commissioner of Patents, (1991) 33 FCR 218 where at page 222 he states:

"One should not pick one's way through a claim wearing blinkers that exclude from sight the context in which the claim is set."

Thus, in the context of claim 6, it is clear from the specification that the ball body is preformed with a female profile part (i.e. groove) which, after the deflated ball is positioned within the annular plate and then inflated, interlocks with a male profile part on the plate whereby axial movement of the plate is prevented under conditions of normal use.  I also share Mr Walsh's concern that the matters raised by Mr Cross regarding the conditions under which axial slippage is prevented have not strictly arisen from the proposed amendments.
Other matters raised on behalf of Croner in relation to claim 6 can I believe be also dismissed since they do not give rise to any adverse implications in relation to sec 40.

On the basis of the foregoing, I do not consider that the proposed amendments would result in the non-compliance of claim 6 with sec 40(2) or (3). 

Claim 14

The deficiencies perceived by Croner to exist in claim 14 have already been addressed above with reference to claim 6 and, consequently, can be similarly dismissed.

conclusion

I have found that claims 1, 6 and 14 as proposed to be amended comply with sec 40(2) and (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 general principle that costs follow the event, I award costs against Croner and in favour of Concorde.

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