CQMS Pty Ltd v Metalogenia S.A

[2014] APO 85

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v Metalogenia S.A. [2014] APO 85

Patent Application:                   2004318061

Title:Device for removably fixing two mechanical parts to one another

Patent Applicant:  Metalogenia S.A.

Opponent:  CQMS Pty Ltd

Delegate:  Greg Powell

Decision Date:  17 December 2014

Submissions Filed:                   30 September 2014

Catchwords:  PATENTS – opposition to the allowance of amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed  – amended claims in-substance fall within the scope of the granted claims and comply with subsections 40(2) and (3) – amendment allowed – cost in accordance with Schedule 8 awarded against the opponent.

Representation:  Patent applicant:  Hodgkinson McInnes Patents, Sydney, NSW

Opponent:Fisher Adams Kelly, Brisbane, QLD

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2004318061

Title:Device for removably fixing two mechanical parts to one another

Patent Applicant:  Metalogenia S.A.

Date of Decision:  17 December 2014

DECISION

The opposition fails on all grounds relied on.  The proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patent Act 1990.

I allow the amendments.

I award costs against CQMS Pty Ltd.

REASONS FOR DECISION

Background

1. Patent application 2004318061 directed to a “Device for removably fixing two mechanical parts to one another” was filed on 30 March 2004 as a PCT application by Metalogenia S.A. (“MSA”).  The application proceeded to acceptance and was advertised accepted on 8 July 2010.  A notice of opposition was filed in the name of CQMS Pty Ltd on 24 September 2010 (“CQMS”).  A statement of grounds and particulars was filed on 21 December 2010 and the evidence in support was completed on 13 April 2012.

2. On 11 September 2012, MSA filed a request to amend the complete specification together with a request to the Commissioner to stay the opposition proceedings.  The request to stay the opposition proceedings was granted, following which the Commissioner reported on 16 November 2012 that the amendment was not allowable.  On 20 November 2012, MSA filed a further statement of proposed amendments and requested a further stay, which was granted.  On 17 December 2012 the Commissioner issued another report indicating that the later amendments were not allowable.  Following a response from MSA on 31 January 2013, the Commissioner granted leave to amend the specification and, on 27 June 2013, CQMS opposed the allowance of these amendments. 

3. MSA withdrew the opposed amendments on 3 September 2013 and then filed another request to amend the specification on 9 September 2013 with an associated request to stay the opposition.  The stay was granted.  On 16 October 2013 the Commissioner reported that the amendment was not allowable.  MSA responded with further amendments on 27 November 2013 and the Commissioner reported on 20 December 2013 that these amendments were also not allowable.  On 28 January 2014, MSA filed further amendments.  Leave to amend was given on 2 April 2014 and advertised on 17 April 2014.  CQMS filed a Notice of Opposition on 17 June 2014 and a Statement of Grounds and Particulars (“SGP”) on 17 July 2014.

4. Subsequent to the correspondence with the parties, a delegate of the Commissioner notified the parties on 19 August 2014 that they would be heard on the basis of written submissions.  Both parties filed their written submissions on 16 September 2014 and their responding written submissions on 30 September 2014.

5. As an initial point, I note that the delegate of the Commissioner who granted leave to amend indicated that the leave had been granted in respect of the amendment filed on 28 January 2014.  I note that the amendment filed on 28 January 2014 sought to replace the amended claim pages filed on 27 November 2013, and the amendment of 27 November 2013 sought to replace the claim pages filed on 9 September 2013.  The amendment of 9 September 2013 sought to replace “pages 14-16” when the claim pages of the accepted application numbered from 14–17.  However, the statement of proposed amendments filed on 9 September 2013 also noted that the claim pages to be replaced incorporated “claims 1–35”.  This was the number of accepted claims.  Hence, it is clear that the amendment request intended to replace the accepted claims.  As such, in this decision, the claims of the specification before the amendment will be taken to be the accepted claims.

   The opposition

6. The SGP sets out that CQMS opposes the amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act.  Under paragraph 102(2)(b), it was asserted that the claims as proposed to be amended would not comply with both subsection 40(2) and 40(3).

   The specification

7. The present invention relates to an arrangement which removably locks two parts together.  The preferred embodiment is concerned with locking a tooth to the tooth rail of an excavator bucket.  The arrangement in the preferred embodiments consists of a tension member and a pin having a lateral projection.  The tension member has a metal layer placed over a layer of resilient material.  When the pin is inserted into holes in the tooth and tooth rail and rotated initially, structures on the tooth force the projection into contact with the metal layer to thereby compress the resilient material.  Upon further rotation of the pin, the projection either moves into a cavity, which slightly decompresses the resilient material, or compresses the resilient material even further.  In either case, the compressed resilient material (which is attempting to expand to its non-compressed state) provides an axial force on the pin via the projection which locks the pin in place.  This ensures that the tooth does not inadvertently come off the tooth rail.

   The nature of the amendments

8. The accepted specification before amendment contained 35 claims.  The statement of proposed amendments filed on 28 January 2014 amends claim 1, adds a new independent claim 2 and several dependent claims, deletes previous independent claims 28 and 34 and consequentially amends several dependent claims.

9. The claims after the amendments read as follows (deleted text is struck out, added text is underlined):

   1. A removable device for attaching two mechanical parts a female and a male part of an excavating machine, which comprises the removable device comprising:

   a pin removably locking a first the female part with respect to a second the male

   part;

   a retainer member associated with the pin; and

   a resiliently loaded tension member, which cooperate the retainer member and the tension member cooperating to prevent the pin from coming out of its lock position,

   characterised by the fact in that the removable device tension member comprises a surface face with at least two planar or inclined surfaces wherein, such that when the retainer member rotates, said the retainer member runs along said the planar or inclined surfaces, moving between at least two positions against the force exerted axially along the axis of the pin by said tension member.

   2. An assembly comprising:

   a male part of an excavating machine;

   a female part of the excavating machine, adapted to removably receive the male part; and

   a removable device for attaching the female and male parts, the removable device comprising:

   a pin removably locking the female part with respect to the male part;

   a retainer member associated with the pin; and

   a resiliently loaded tension member, the retainer member and the tension member cooperating to prevent the pin from coming out of its lock position,

   characterised in that:

   the removable device comprises a face with at least two planar surfaces; and

   one of the male and female parts has at least two inclined surfaces thereon;

   wherein when the retainer member rotates, the retainer member runs along the planar and inclined surfaces, moving between at least two positions against a force exerted axially along the axis of the pin by the tension member.

   3. An assembly according to claim 2 characterised in that the at least two planar surfaces are arranged on respective substantially parallel planes offset from one another.

   24. A device according to claim 1, characterised by the fact in that the inclined surfaces are formed on one face of the tension member.

   3. A device according to claim 1, characterised by the fact that the inclined surfaces are formed on one of said parts and on at least one or more contact surfaces between both parts.

   45. A device An assembly according to claim 32, wherein the part having the inclined surfaces contact surfaces of said part containing inclined surfaces is provided with has a cavity arranged on the surface in contact with the other part, the cavity adapted to housing house the retainer member of when the pin is in its lock position.

   56. A device according to any of the previous claims claim 1, characterised by the fact in that the inclined surfaces form two facing ramps with a rib between both.

   7. An assembly according to claim 2, characterised in that the inclined surfaces form two facing ramps with a rib between them.

   68. A device An assembly according to any one of claims 1 to 5 claim 2, characterised by the fact in that the tension member has its planar upper and lower surfaces planar, straight and arranged parallel to one another.

   79. A device according to any of claims l to 4, characterised by the fact in that the inclined surfaces form at least two downwardly inclined ramps separated from one another by a planar section.

   10. An assembly according to claim 2, characterised in that the inclined surfaces form at least two downwardly inclined ramps separated from one another by a planar section.

   811. A device An assembly according to any one of claims 1 to 7 claim 2, characterised by the fact in that the tension member has its planar upper surface planar, straight and inclined with respect to its planar and straight and lower surfaces, the upper surface arranged on an incline with respect to the lower surface.

   912. A device according to any of claims l to 4, characterised by the fact in that the inclined surfaces form at least two inclined ramps, one after the other, one of them having a steeper slope incline than the other one.

   13. An assembly according to claim 2 characterised in that the inclined surfaces form at least two inclined ramps, one after the other, one having a steeper incline than the other.

   1014. A device according to any of the previous claims claim 1, characterised by the fact in that the pin has the shape of a surface of revolution.

   1115. A device according to claim 1014, characterised by the fact in that the pin is frustoconical.

   1216. A device according to claim 1115, characterised by the fact in that the pin is cylindrical.

   1317. A device according to any of the previous claims claim 1, characterised by the fact in that the pin has a circular section.

   1418. A device according to any of the previous claims claim 1, characterised by the fact in that the pin has an elliptical section.

   1519. A device according to any of the previous claims claim 1, characterised by the fact in that the retainer member constitutes a transverse projection of the pin.

   1620. A device according to claim 1519, characterised by the fact in that the retainer member is joined to the pin.

   1721. A device according to any of the previous claims claim 1, characterised by the fact in that one of the ends of the pin has a an end adapted to coupling couple with for a tool adapted to apply a rotational movement to said the pin about its longitudinal axis.

   1822. A device according to any of claims 1 to 17 claim 1, characterised by the fact in that the tension member is a curved segment.

   1923. A device according to any of claims 1 to 17 claim 1, characterised by the fact in that the tension member is a simple circular washer.

   2024. A device according to claims 1822 or 1923, characterised by the fact in that the tension member is constituted only of formed from an elastomeric material.

   2125. A device according to claims 1822 or 1923, characterised by the fact in that the tension member is constituted of comprises a metal member arranged on a resilient member.

   2226. A device according to claim 1923, characterised by the fact in that the tension member is a metal spring.

   2327. A device according to any of the previous claims claim 1, characterised by the fact in that the tension member is mounted or built on affixed to the pin.

   2428. A device according to any of the previous claims claim 1, characterised by the fact in that the male part comprises a cavity in at least one of its outer surfaces for housing adapted to house the tension member.

   2529. A device according to any of the previous claims claim 1, characterised by the fact in that the female part comprises a cavity in at least one of its inner surfaces for housing adapted to house the tension member.

   2630. A device according to any of the previous claims claim 1, characterised by the fact in that the female part is provided with at least one hole with a notch, for being able to introduce the hole and notch adapted to receive the pin with the projection or and retainer member.

   2731. A device according to any of the previous claims claim 1, characterised by the fact in that said the female part is a tooth and said male part is a tooth bar.

   28. A female part for being coupled in a male part and having at least one hole for introducing a pin, characterised in that the female part has at least two inclined planes in at least one of its inner surfaces applicable to a removable device according to claim 1 where the retainer member of the removable device runs along said inclined inner surfaces of the female part, moving between at least two positions.

   29. A female part according to claim 28, characterised by the fact that the same inner surface of the female part containing the inclined planes is provided with a cavity housing the retainer member of the pin in its lock position.

   30. A female part according to claims 28 or 29, characterised by the fact that the inclined planes form two facing ramps with a rib between them.

   31. A female part according to claim 28, characterised by the fact that the inclined planes form at least two downwardly inclined ramps separated from one another by a planar and straight section.

   32. An assembly according to claim 2, characterised in that the female part has the at least two inclined surfaces arranged in at least one of its inner surfaces and the retainer member runs along the inclined surfaces, moving between at least two positions.

   33. An assembly according to claim 32, characterised in that the inner surface containing the at least two inclined surfaces is provided with a cavity housing the retainer member in its lock position.

   34. An assembly according to claims 32 or 33, characterised in that the at least two inclined surfaces form two facing ramps with a rib between them.

   35. An assembly according to claim 32, characterised in that the at least two inclined surfaces form at least two downwardly inclined ramps separated from one another by a planar and straight section.

   3236. A female part An assembly according to claim 28, characterised by the fact in that the female part has at least said one hole has with a notch adapted to receive for introducing a retainer member associated to the pin and retainer member.

   3337. A female part An assembly according to any one of claims 28 to 32 claim 2, characterised by the fact in that it the female part is a tooth of the type adapted to be coupled to a tooth bar.

   34. A male part for being coupled to a female part and having a housing inside for receiving a pin, characterised in that the male part has at least two inclined planes in at least one of its outer surfaces and is applicable to a removable device according to claim 1 where a retainer member of the removable device runs along said inclined outer surfaces of the male part, moving between at least two positions.

   3538. A male part An assembly according to claim 332, characterised by the fact in that said the male part is a tooth bar of the type adapted to be coupled to a tooth.

   Evidence

10. No evidence was filed by the parties.  I will provide the details of written submissions filed by the parties as necessary in the later paragraphs.

    The law on amendments

11. The grounds for opposing an amendment are that the amendment is not allowable under section 102. Changes to section 102 as a consequence of the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2011 do not apply to the present specification because the request for examination of the present application was made before 15 April 2013.

12. Thus, the relevant sections of the Patents Act in the current case are sections 102(1), (2) and (2A) as they existed prior to the introduction of the Raising the Bar Act.  These are set out below:

    (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.

13. The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:

    (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.

14. 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 Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [38]). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.

    Subsection 102(1): In substance disclosed in the specification as filed

15. 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, the amended 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).

16. Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:

    “The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure.  Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”

1. As was noted in Lockwood (supra):

   “the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”

2. I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:

   “The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim.  Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”

   This was cited with approval in Lockwood (supra).

   First particular

3. The first particular is that amended claim 1 in not claiming that the retainer member has four, two-by-two parallel faces, the upper and lower faces being the ones which allow exerting pressure on the tension member as well as facilitating the sliding of the retainer member and, therefore, the rotation of the pin, in order to reach the lock position, extends to matter not disclosed in the complete specification as filed. 

4. CQMS based this position on page 3 lines 21–24 of the originally filed specification which they maintained showed that the retainer member must have these features.  The passage referred to by CQMS occurs at the end of a paragraph on page 3.  The full paragraph is as follows:

   “In order to overcome the drawbacks mentioned and to simplify the assembly and removal of a tooth in a tooth bar, and more generally of two mechanical parts, one female and the other male, from one another, the attachment device according to the present invention is characterised by the fact that it further comprises at least two inclined planes, the general shape of which is that of a projection oriented in the axial direction of the pin, such that when the pin is rotated, the retainer member runs along said inclined planes and the pin moves between two positions, the pin lock position and the unlock or introduction position, against the force axial to the pin exerted by said tension member.  Said retainer member has four, two-by-two parallel faces, the two upper and lower faces being the ones which allow exerting the pressure on the tension member as well as facilitating the sliding of the retainer member, and therefore the rotation of the pin, in order to reach the lock position.”

5. Contrary to what CQMS submits, it seems clear to me that this passage is not saying that the retainer member must have the features noted by CQMS.  It is suggesting that it would be a desirable thing.  I note that this paragraph is in the form of a consistory statement.  In this regard I note the warning on Lockwood at [99]:

   “An assertion by the inventor in a consistory clause of that of which the invention consists does not compel the conclusion by the court that the claims are fairly based nor is the assertion determinative of the identity of the invention.  The consistory clause is to be considered by the court with the rest of the specification”

6. I think it is fair to say in the present case that, while the particular shape described by CQMS is a preferred embodiment, as MSA submitted the specification as a whole attaches no particular significance to this shape.  For example, while some figures show the retainer member with this shape, others do not.  Indeed figure 25, showing top and side views of the same thing, shows both.  CQMS is mistaken when it submits that the claims need to be limited to the particular shape that is exemplified.

7. This same mistake permeates all of CQMS’s submissions under this ground.  For each particular, they have taken a particular, isolated passage in the originally filed specification and have submitted that the claims need to be limited to the features of the passage, while effectively ignoring the rest of the specification.  I will deal with each particular quickly.

   Second particular

8. CQMS submitted that claim 1 had to limit the female part to being a tooth of an excavating machine and the male part to being a tooth bar.  CQMS quoted page 6 lines 18–20 as support for this position. 

9. This paragraph is as follows:

   “In a particularly useful embodiment of the invention, said first part is a tooth and said second part is a tooth bar, particularly of a bucket of an excavating machine or the like.”

   CQMS has completely ignored the first 8 words of this paragraph and then attempted to characterise the rest of the paragraph as defining some sort of essential features.  This specious submission requires no further comment.  These features are not required to be claimed.

   Third particular

10. CQMS submitted that claim 1 had to be limited such that the two positions the retainer member moved between were a lock position and an unlock position.  They rely on the passage at page 3 lines 18–20.  I have already set this passage out above in the context in which it appears.  There are two reasons why such an approach is misguided.  The first reason is those I have already given above – the specification attaches no significance to this feature.  The second, more significant, reason is that this “omission” does not arise “as a result of the amendment”.  It is clear from the marked up claims that I have set out above that the requirement for two, unlimited positions as defined in amended claim 1 were present in the claim prior to amendment.

    Fourth particular

11. CQMS submitted that claim 2 claimed matter not in substance disclosed because, in defining that one of the male and female parts has at least two inclined surfaces thereon, it claimed matter not in substance disclosed.  CQMS submitted that page 4, lines 24–28 required the inclined surfaces be formed on at least one of the contact surfaces between the male part and female part.  Once again, CQMS has been very selective.  The full passage referred to by CQMS is as follows:

    “In an alternative embodiment, the inclined planes are formed on at least one of the contact surfaces between the male part and female part, i.e. in at least one of the inner surfaces of the female part or in at least one of the outer surfaces of the male part.  In this case, the same surface of the part containing said inclined planes can be provided with a cavity housing the retainer member of the pin in its lock position”

    This passage could not be clearer.  The inclined surfaces are formed on the surfaces of the female and/or male parts.  This is what claim 2 defines.  It is not claiming anything that was not disclosed in the original specification.

    Fifth particular

12. CQMS submitted that claim 2, in not claiming that the removable device had at least two inclined planes, claimed something that was not in substance disclosed.  They referred to page 3 lines 15–17 to support this.  The problem with this submission is that it ignores the words of the amended claims.  Amended claim 2 is not defining that the removable device does not have inclined planes.  It is defining that it has at least two planar surfaces.  There is clear disclosure for this in the originally filed specification at, for example, figure 24.

    Sixth particular

13. CQMS submitted that claim 2, in not claiming that the retainer member has four, two-by-two parallel faces, the upper and lower faces being the ones which allow exerting pressure on the tension member as well as facilitating the sliding of the retainer member and, therefore, the rotation of the pin, in order to reach the lock position, extends to matter not disclosed in the complete specification as filed.  I have dealt with this submission above with respect to claim 1.  The outcome remains the same.

    Seventh particular

14. CQMS submitted that claim 2 had to be limited such that the two positions the retainer member moved between were a lock position and an unlock position.  I have dealt with this submission above with respect to claim 1.  The outcome remains the same.

    Eight particular

15. CQMS submitted that claim 2, in not defining that the retainer member and the tension member cooperate to prevent the pin from coming out of its lock position, defined something that was not in substance disclosed.  They relied upon page 4, lines 13–15 for this position.  That passage states:

    “The two inclined planes, in combination with the resilient loading of the tension member and the retainer member, make it very difficult for the pin, with said retainer member, to come out of its lock position.”

16. I do not see how CQMS can possibly rely on this passage to support their position that features are missing from claim 2.  The passage is defining a result (i.e. “difficult … to come out of its lock position”) which arises as the result of the interaction of a retainer member with a resiliently loaded tension member.  It is not stating a feature of the removable device that must be in the claims.  In any event, I note that claim 2 defines that the retainer member runs along the planar and inclined surfaces against a force exerted axially along the axis of the pin by the tension member.  To my mind, this set of features of claim 2 would inherently produce the result identified by CQMS as being required in claim 2.

    Ninth particular

17. CQMS submitted that claim 32 claimed matter not in substance disclosed by defining that the female part has at least two inclined surfaces thereon.  CQMS submitted that page 4, lines 24–28 required the inclined surfaces be formed on at least one of the contact surfaces between the male part and female part.  This particular is more or less identical to the fourth particular I have dealt with above.  The outcome is no different with respect to claim 32.

    Tenth particular

18. CQMS submitted that claim 32, in defining that the retaining member runs along the inclined surfaces of the female part, as it moves between its two positions, claimed matter not in substance disclosed.  CQMS submitted that claim 32 needed to define that the retaining member ran along the inclined planes of the removable device.  As with my discussion with respect to the fifth particular, this submission ignores the words of the amended claims.  Claim 32 defines that the retaining member runs along the inclined surfaces of the female part, as it moves between its two positions.  This is clearly shown in the originally filed specification.  See figure 29, for example.

19. It follows that CQMS has not made out this ground of opposition.

    Paragraph 102(2)(a): In substance fall within the scope of the claims before amendment

20. Relevant principles applying to paragraph 102(2)(a) are conveniently laid out by Yates J in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [40]:

    “Consideration of the prohibition in s 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Once again the prohibition is conditioned on a state of affairs existing as a result of the amendment, namely that a claim would not in substance fall within the scope of the claims before amendment. Thus the identification of the amendment is, once again, an important first step. Moreover, the reference to 'within the scope of the claims' before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression 'within the scope of the claims' directs attention to all the claims. For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment. If the answer is 'yes', the amendment is proscribed by s 102(2)(a) of the Act: AMP Incorporated v The Commissioner of Patents (1974) 3 ALR 283 at 289-290; Fina Research SA v Halliburton Energy Services Inc (No 2) (2003) 127 FCR 561 at [29]; W J Voit Rubber Corp’s Application, Re (1965) AOJP 1752 at 1754-1755.”

21. Under this ground of opposition CQMS submitted that claim 2 would not in substance fall within the scope of claim 1, or independent claims 28 and 34 before amendment.

22. CQMS submitted that supply of, for example, a male part without two inclined surfaces would not infringe claim 34 prior to amendment, but would infringe claim 2.  It follows, CQMS submits, that claim 2 makes something an infringement which was not an infringement before and, therefore, claim 2 does not fall within the scope of the claims prior to amendment.  I do not follow this submission.

23. It is true that a male part without two inclined surfaces would not infringe any of the claims before amendment.  However, such a part would also not infringe any of the claims after the proposed amendments.  Amended claim 2 is directed to an “assembly”, which includes a male part in combination with a female part and a removable device.  Amended claim 2 would only be infringed by an assembly including the male part, the female part and the removable device.  It would not be infringed by a male part in isolation.

24. It follows that CQMS has not made out this ground of opposition.

    Paragraph 102(2)(b): Comply with subsections 40(2) and 40(3)

    Subsection 40(3) – Clarity

25. CQMS submitted that amended claims 4, 37 and 38 lacked clarity.  Specifically they submitted that:

    (i)Claim 4 was not clear, because it was unclear if “the inclined surfaces” of claim 4 were the same as the “at least two inclined surfaces” of claim 1;

    (ii)Claim 4 was not clear, because it was unclear if the “one face” of claim 4 was the same as the “face” of claim 1;

    (iii)Claim 37 was not clear, because it was unclear if the female part was adapted to be coupled to a tooth bar in addition to being adapted to removably receive the male part as defined in claim 2; and

    (iv)Claim 38 was not clear, because it was unclear if the male part is adapted to be coupled to a tooth in addition to being adapted to be removably received by the female part as defined in claim 2

26. There is no merit in any of these submissions.  The first thing to note is that the words complained of in paragraph (i) above were in the claims prior to amendment.  As such, CQMS cannot succeed on this point.  In any event, even assuming that the wording of paragraph (i) did arise “as a result of the amendment”, I cannot see where the confusion as to the scope of any of the claims listed in (i) to (iv) above could possibly arise.  I note that in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 Middleton J said at [139]:

    “It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense.  The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent.  From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”

27. Applying a modicum of common sense when construing the claims as amended, it becomes clear that “the inclined surfaces” of claim 4 are the same as the “at least two inclined surfaces” of claim 1, “one face” of claim 4 is the same as the “face” of claim 1, the male part as defined in claim 2 is clearly meant to be the tooth bar which removably receives the tooth of claim 37 and the female part as defined in claim 2 is clearly meant to be the tooth which removably receives the tooth bar of claim 38.

    Subsection 40(3) – Fair basis

28. The particulars that CQMS raised under this ground with respect to claim 1 were exactly the same as those they raised under their first ground when contending that claim 1 claimed matter not in substance disclosed.  They submitted that claim 1 lacked fair basis because:

    (i)it did not define that the retainer member has four, two-by-two parallel faces, the upper and lower faces being the ones which allow exerting pressure on the tension member as well as facilitating the sliding of the retainer member and, therefore, the rotation of the pin, in order to reach the lock position;

    (ii)it did not limit the female part to being a tooth of an excavating machine and the male part to being a tooth bar; and

    (iii)it did not limit the two positions the retainer member moved between to being a lock position and an unlock position.

29. I have dealt with these submissions above.  The description after amendment is identical to the description as originally filed.  As I have already concluded that claim 1 does not include anything that was not in the description as originally filed, it follows that claim 1 does not include anything that was not in the description after amendment.  That is, the amendments have not introduced a lack of fair basis into claim 1.  CQMS has improperly taken passages of the description out of context and sought to create a problem when none exists.

30. Exactly the same thing can be said for CQMS’s submissions that claim 2 and 32 lack fair basis.  CQMS’s reasons for a supposed lack of fair basis of these claims are the exact same reasons as to why they alleged that these claims claimed matter not in substance disclosed.  I have dealt above with why the reasons do not support CQMS’s position.  The same reasoning applies here.  Claims 2 and 32 do not lack fair basis.

    Subsection 40(2) – Claims defining the invention

31. CQMS submitted that the claims as amended do not define the invention because:

    “The background section of the Application identifies as a problem that " ... the stresses required for removal exceed assembly stresses since in addition to the difficulties of the design and construction, removal is affected because during operation, the pin and retainer member may become deformed and earth can additionally be introduced in the housing of the pin, making its extraction difficult." (see page 3, lines 5-9)

    [CQMS] submits that, as stated on page 4, lines 5 to 9 of the Application, the invention seems to be in that the assembly and removal of the parts can be carried out in a simple manner due to the tension member occupying a space which is not affected by dirt, [and] when the tension member is compressed, a previously inexistent space is opened, allowing the movement of accumulated dirt.  As a result of the amendments, all of the claims (including at least claim 2 and its dependent claims) do not define the invention as stated above.”

32. I cannot see any merit in this submission.  CQMS seems to saying that there is a particular physical characteristic that is essential to the invention and that actual characteristic must be defined in the claim.  I am unsure what this characteristic is.  In any event, I do not see why the claims do not define an invention.

33. A complete specification must end with a claim or claims “defining the invention” (sec 40(2)(b)).  This requires that the claims define the monopoly for which application has been made.  The dictionary to the Act defines ‘invention’ as including an ‘alleged invention’.  It follows that any investigation is directed to deciding whether the claim fulfils the statutory purpose of ‘defining the invention’; including an alleged invention.  Claims in the form of:

    “My invention is worth $1 million dollars”,

    do not define any invention.  However, claims which clearly and distinctly identify the invention to be protected can be said to define an invention.  The amended claims of the present application are in the form of the latter example and not the former.  As such, they can be said to satisfy the requirement that they define an invention.

34. It follows that CQMS has not made out this ground of opposition.

    CONCLUSION

35. The opposition fails on all grounds relied on.  The proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patent Act 1990.  I allow the amendments.

    COSTS

1. Ordinarily in proceedings such as these, costs follow the event.  There appears to be no special circumstances which warrant varying that approach.  Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against CQMS.

   Greg Powell
   Delegate of the Commissioner of Patents