Connected Group Australia Pty Ltd v Kolex Pty Ltd - [2019] APO 35

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Connected Group Australia Pty Ltd v Kolex Pty Ltd [2019] APO 35

Patent Application: 2011265354

Title:An Electrical Connector With Insulation Displacement Contacts

Patent Applicant:                   Kolex Pty Ltd
Opponent:  Connected Group Australia Pty Ltd
Delegate:  M. G. Kraefft
Decision Date:  26 July 2019
Hearing Date:  Written submissions completed on 1 May 2019

Catchwords: PATENTS – opposition under section 104 – allowability of amendments under section 102 – compliance with section 102 as a result of the amendment considered – passageway versus floor for receiving each insulated conductor considered – meaning of receiving each insulated conductor flat considered – proposed amendments satisfy requirements of section 102 – proposed amendments allowable.

Representation: Patent attorney for the applicant: Peter Maxwell & Associates
Patent attorney for the opponent: Wallington-Dummer

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011265354

Title:An Electrical Connector With Insulation Displacement Contacts

Patent Applicant: Kolex Pty Ltd
Date of Decision: 26 July 2019
DECISION
The proposed amendments satisfy the requirements of section 102. The proposed amendments are allowable. The opposition is unsuccessful.
Costs in accordance with Schedule 8 awarded against the opponent, Connected Group Australia Pty Ltd.
REASONS FOR DECISION
BACKGROUND

Kolex Pty Ltd (“the applicant”) filed patent application 2011265354 on 21 December 2011 (“the priority date”). The application was advertised as accepted on 25 August 2016.
Connected Group Australia Pty Ltd (“the opponent”) filed a notice of opposition to the grant of a patent on 29 November 2016 together with a request for an extension of time under section 223 to file that notice. That request was subsequently granted.
Following the parties’ completion of the evidentiary stages, the applicant filed a statement of proposed amendments to amend the complete specification under section 104. A delegate of the commissioner considered that the request for leave to amend was valid, whereupon the opponent filed a notice of opposition against the allowance of the amendments. The present matter deals solely with this latter section 104 opposition.
SPECIFICATION
The specification describes the invention as relating to an apparatus and a method for making electrical connection with an electrically insulated wire or cable. In particular, the invention relates to an electrical connector with one or more insulation displacement contacts that can be used in electrical power outlet sockets, electrical power switches, electrical junction boxes, power transformers, ballasts for fluorescent lights and other electrical devices.
As background, the specification discusses the typical installation of electrical power outlet sockets in lower regions of a building wall. The sockets have socket receptacles for three plug pins corresponding to an active, a neutral and an earthing connection. Electrically insulated connecting wires are installed within the building wall to connect the respective contacts of the socket receptacles to the mains electrical power source. To provide a secure electrical connection between the connecting wires in the wall and the electrical contacts of the power outlet socket, screw contacts have normally been utilised. This requires insulation to be removed from an end of the connecting wire, and that the exposed conductor portion, consisting of a bundle of thin wire strands, be twisted and inserted in a contact opening and then engaged into secure electrical contact by screwing a contact screw into the contact opening to physically and electrically engage the exposed conductor portion. The specification then discusses some operational issues with such arrangements.
The specification further refers to some prior art said to address some of those problems. An electrical connector is disclosed which effects relative movement between the conductors and its insulation displacement contacts. The relative movement is restrained to make the electrical connections therebetween in a substantially sequential manner. The insulation displacement contacts are configured laterally with respect to the directions of the insulated wires received in the channels, so that the insulated wires are cut cross-wise at an angle that, whilst cutting through the insulation, may also cut through and sever the nearby wire strands, thus reducing the level of electrical connection.
An object of the invention, as stated in the specification, is to provide an electrical connector that achieves a faster, easier, safer, cleaner and/or more efficient form of electrical connection with insulated conductors.
The specification ends with 12 claims. The proposed amendments are only to claim 1. This claim, together with the amendments as indicated, reads as follows.
1.An electrical connector having a plurality of insulation displacement contacts adapted to make electrical connection with respective insulated conductors in the form of a cable or of separate electrically insulated connecting wires, the connector comprising:
(a)   a movable press,
(b)   a passageway having a longitudinal direction and being between the movable press and a floor for receiving each insulated conductor flat along a the longitudinal direction of the passageway,
(c)   cutting edges of respective insulation displacement contacts for cutting into a respective insulated conductor to make electrical connection to each conductor when received in the passageway, the cutting edges being formed on respective blades which are spaced apart in a lateral direction of the passageway and which extend upwardly through the floor, each cutting edge being longitudinally aligned with the passageway, and
(d)   the movable press having a curved pressing surface and being pivotally movable about a pivot point extending perpendicularly with reference to each conductor in the passageway, the pivotal movement of the movable press being between a first position where it allows access of each insulated conductor into the passageway and a second position where it presses against each insulated conductor and forces the insulated conductor against the respective cutting edge whereby each cutting edge cuts into its respective insulated conductor and makes separate electrical connection thereto longitudinally with reference to the direction of each conductor in the passageway.
APPLICABLE LAW
The applicant filed its request for examination on 20 November 2015. Consequently, the present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”), which came into force on 15 April 2013. Amendments to sections 40 and 102 of the Act relevantly apply to the present case as a consequence of schedule 1, items 55(1)(e) and 55(9)(e) of the Raising the Bar Act.
Section 102 reads as follows:-
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)   the complete specification as filed;
(b)   other prescribed documents (if any).
(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 purposes 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; or …
Subsection 40(3) reads as follows:-
(3)The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The expression “as a result of the amendment” has been considered on many occasions. In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd, [1998] FCA 1358, 89 FCR 458 at page 466, Carr and Goldberg JJ discussed subsection 102(1) as it stood at the time.
“That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted … on the one hand and, on the other hand, as the specification would read if amended in the manner sought. Then one reads the specification as a whole (as so amended in the manner sought) to see whether as a result of the amendments sought (which must mean by reason of the amendment sought) the specification would claim matter not in substance disclosed in the specification as filed. The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression ‘matter not in substance disclosed in the specification as filed’. The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words ‘as a result of the amendment’ are not to be confused with the expression ‘after the amendment’.
Pre-existing defects in the specification are not relevant in considering the allowability of amendments under section 102. As noted by Bennett J in Apotex Pty Ltd v Les Laboratoires Servier (No 2), [2009] FCA 1019 at [28]:-
“There may be deficiencies in the (existing) complete specification or lack of compliance with s40 which do not fall for consideration at this time. The question is whether, as a result of the introduction of the proposed new claims, the amendments are not allowable because of the requirements of s102.”
STATEMENT OF GROUNDS AND PARTICULARS
As grounds of opposition in the present case, the opponent listed the available grounds under section 102. That is, firstly, that the amended specification would claim and disclose matter that extends beyond that disclosed in the complete specification as filed. Secondly, that the amended claim would not in substance fall within the scope of the claims of the specification before amendment. Thirdly, that the amendments result in the claim as amended being not clear and/or the claim as amended includes no support such that there is lack of compliance with subsections 40(2) (sic) and/or 40(3).
For particulars against each of the above grounds, the opponent referred to the declarations of its declarants.
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr Graeme Edward Neil MacDonald and Mr Peter Charles Birrell. Both declarants describe themselves as having considerable technical and industrial design experience relating to electronic products, amongst other things.
In his evidence and with reference to the specification, Mr MacDonald described a conductor to refer to an elongate circular cross-section wire which could itself be made up of multiple wires or strands laid against each other. Given that construction, Mr MacDonald stated it was difficult to be sure as to what characteristic of the wire may be defined as flat. With further reference to meanings for the term “flat” from the Macquarie Dictionary, he identified a number of possible constructions for the amended clause of claim 1. These were as follows:-
(1)the passageway was for receiving each insulated conductor lying wholly on or against the passageway along the longitudinal direction of the passageway;
(2)the floor was for receiving each insulated conductor lying wholly on or against the floor along the longitudinal direction of the passageway;
(3)the passageway was for receiving each insulated conductor straight along the longitudinal direction of the passageway;
(4)the floor was for receiving each insulated conductor straight along the longitudinal direction of the passageway.
Mr MacDonald consequently stated he could not conclude with any certainty that any one of the above constructions is more likely than any of the others.
Mr Birrell offered two possible interpretations in respect to the amended clause. The first was that of a flat channel for receiving each insulated conductor, the channel being vertically aligned with a movable press. The second was that of an opening through which a flat conductor is passed, the opening being vertically aligned with a movable press and fixed floor. Mr Birrell expressed the opinion that the first interpretation was most likely.
EVIDENCE IN ANSWER
The applicant filed evidence in answer from Mr David John Bull and Mr Norman Samuel Boemi. Both declarants describe themselves as having extensive experience with electrical and electronic product design.
Both declarants also provided two separate reports each. The first related to their opinions about the amended specification prior to being provided with any other material related to the present case. The second related to their opinions on the matters raised in the opponent’s evidence in support.
In their first reports, both declarants referred to the drawings of the specification and relied on their own understanding to essentially indicate there is no contravention of the Patents Act by the amended specification.
In their second reports, both declarants distinguished the concepts of a flat cable or of a flat conductor from that of the act of receiving the conductor flat in the passageway, as claimed in the amended claim 1. The applicant’s declarants indicated that, when this was understood, the interpretations of the opponent’s declarants were not supported by the specification.
Mr Bull suggested that the proper construction of the amended clause was:-
(i)a passageway;
(ii)that, structurally, has a longitudinal direction;
(iii)and where the passageway is defined, positionally, between the movable press and the floor;
(iv)and where the passageway is able to receive an insulated conductor;
(v)and where the insulated conductor is received flat along the longitudinal direction of the passageway.
Mr Boemi succinctly stated that being received flat along the longitudinal direction meant that the conductor was positioned flat along the passageway without being bent or twisted or distorted.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr MacDonald. He suggested there were inconsistencies between Mr Bull and Mr Boemi in interpreting the amended clause of claim 1. The first inconsistency related to their discussion of the term “flat” in isolation. The second related to the above-mentioned constructions advanced by Mr Bull and Mr Boemi.
Mr MacDonald observed that if there were at least those two inconsistencies between the declarants then there must be an issue regarding the clarity of the amended clause.
SUBMISSIONS
The opponent’s submissions principally predicate the four possible constructions for the amended clause of claim 1 offered by Mr MacDonald in his evidence in support. With two of those constructions, namely where the floor was suitable for receiving each insulated conductor, the opponent submitted that the specification and the claims before amendment did not extend to such constructions, and thereby there was a contravention of subsections 102(1) and 102(2)(a).
Moreover, in view of the four possible constructions and Mr MacDonald’s observations of at least two inconsistencies on interpretation in Mr Bull’s and Mr Boemi’s evidence, and that it was unclear to Mr MacDonald whether a particular embodiment in the specification fell within the scope of the amended claim, the opponent submitted there was a contravention of subsection 40(3).
The applicant challenged the opponent’s contentions of a contravention of section 102. The applicant stated that there was no evidence to support any of the constructions put forward by Mr MacDonald or in the opponent’s submissions. The applicant further stated that, even if it were accepted that such constructions were interpretations that a person skilled in the art would have adopted, there was no evidence from the opponent that such constructions related to matter not disclosed in the specification, or that the amended claim would claim matter that was not in the original unamended claim. As for the opponent’s assertions of lack of clarity arising from stated inconsistencies between the evidence of Mr Bull and Mr Boemi, the applicant commented that those inconsistencies were in respect to Mr MacDonald’s evidence, not in respect to the amended clause in claim 1.
DISCUSSION
It is clear that the opponent’s case rests on the four possible constructions identified by Mr MacDonald.
Passageway versus floor for receiving each insulated conductor
I will deal firstly with the question of whether it is the passageway or the floor that is for receiving each insulated conductor along the longitudinal direction of the passageway. Whatever may be said of that question possibly leading to an ambiguity in contravention of subsection 40(3), or that if it were the floor then there would be a contravention of subsections 102(1) and 102(2)(a), is irrelevant in the present case. The clause that led Mr MacDonald to offer these interpretations exists in the claim prior to amendment. Thus, an assertion of a contravention of section 102 based on that question must fail as it does not arise as a result of the amendment.
For completeness, I will nonetheless consider the question in full in this case. It is correct that, positionally in the relevant clause, the word “floor” is more closely associated for receiving each insulated conductor than the word “passageway”. On the other hand, I think the context is clear from the claim itself. The phrase, as filed, that distances the passageway from the receiving feature is merely a precursor phrase defining the location of the passageway between the movable press and the floor. That is, the floor is defined to provide context for the location of the passageway, not to relate to receipt of a conductor. Moreover, the clause concludes with each insulated conductor being received along a longitudinal direction of the passageway (my emphasis). I find it is clear from the claim itself that it is the passageway that is for receiving each insulated conductor.
If I were wrong with this finding, I would additionally note the comments of Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc., [1988] FCA 399, (1988) 13 IPR 385 at 400 [14]. Relevantly to the present matter, if an expression in a claim is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim. The paragraph bridging pages 9 and 10 of the specification as filed, together with at least Figures 2 and 3 of the drawings, indicate that it is the passageway that is for receiving each insulated conductor. Presumably the opponent would concur with this position since the opponent pressed for a contravention of subsections 102(1) and 102(2)(a), on the basis of the specification as filed and on the basis of the claims before amendment, only where an interpretation of the floor being for receiving each insulated conductor might prevail in the amended claim.
I conclude, for both the unamended and the amended claim 1, that it is the passageway that is for receiving each insulated conductor.
Receiving each insulated conductor flat along the longitudinal direction of the passageway
The feature of receiving each insulated conductor flat along the longitudinal direction of the passageway is a new feature of the claims (my emphasis). Thus, a contravention of section 102 may prevail on that feature as the contravention would be as a result of the amendment.
The evidence from both sides clearly contains much discussion around the meaning of the word “flat” in the amended claim. Mr Birrell, for the opponent, offered interpretations around structures of the electrical connector being flat. In one instance, he suggested an interpretation of a flat channel, or a flat passageway in the words of the claim, for receiving each insulated conductor. In another instance, he suggested an opening through which a flat conductor is passed. Mr MacDonald, for the opponent, referred to the nature of how each insulated conductor was to be received. The latter is more in line with the definition of features in the amended clause. Thus, this would appear to be the more appropriate line to consider.

Mr MacDonald relied on some definitions of the word “flat” from the Macquarie Dictionary. He indicated the definitions included:-
(1)level, even, or without inequalities of surface; and
(2)lying wholly on or against something.
Mr MacDonald further noted with interest that the dictionary did not include a meaning of “straight” for “flat”. Nonetheless, in the context of a conductor in the nature of a wire, of circular cross-section, Mr MacDonald suggested that, in the present case, it may be that “flat” was intended to mean “straight”, or “lying wholly on or against …”, as in the dictionary definition.
I am not persuaded by either of these definitions in the present context. They appear to be more restrictive than the present context would suggest. Moreover, these definitions appear to be focused on each conductor individually. The concept of the flatness feature relating to a disposition of each insulated conductor collectively does not appear to be considered.
The Macquarie Dictionary ( also includes the definition of having a generally level shape or appearance, and by example a flat plate. The Oxford English Dictionary ( includes the definition of horizontally level, without inclination, and lying in its original plane of deposition. Both of these definitions suggest a planar context for the word “flat”. This would also appear to fit the presently claimed context in terms of the passageway being for receiving each insulated conductor in a planar arrangement along the longitudinal direction of the passageway. This arrangement is clearly shown in Figures 4 and 7 for example. Figure 4 illustrates three insulated conductors of a cable aligned in a single plane for being received in the passageway. Figure 7 illustrates three separated insulated connecting wires, also aligned in a single plane, whereby those wires arise from having stripped away the outer sheath of a round cable. I will adopt the interpretation of each insulated conductor being received in a planar arrangement along the longitudinal direction of the passageway.
Compliance with section 102
From the above discussion, it would be clear that the above interpretations of the amended claim 1 do not result in the specification claiming or disclosing matter that extends beyond that disclosed in the specification as filed. Thus, I find there is no contravention of subsection 102(1).
Both Mr Bull and Mr Boemi, for the applicant, pointed out that claim 1, prior to amendment, covered passageways that could receive insulated conductors either flat or not flat. Both declarants also stated that the amended claim clearly covered only the subset, or a smaller number of connectors, where insulated conductors were received flat along the longitudinal direction of the passageway. I agree. As a result of the amendment, there is no claim that would not in substance fall within the scope of the claims of the specification before amendment. Thus, I find there is no contravention of subsection 102(2)(a).
Having ascribed a particular interpretation, as indicated above, for the word “flat” in the amended claim, and absent any other clarity, succinctness or support issue as a result of the amendment, it would follow that there is no subsection 40(3) issue as a result of the amendment. I find there is no contravention of subsection 102(2)(b).
CONCLUSION
I conclude the proposed amendments satisfy the requirements of section 102. The proposed amendments are allowable.
COSTS
It is normal that costs follow the event. I see insufficient reason to depart from that approach in the present case. The opposition is unsuccessful. I award costs in accordance with Schedule 8 against the opponent, Connected Group Australia Pty Ltd.
M. G. Kraefft
Delegate of the Commissioner of Patents