Duoguard Australia Pty Ltd v Vector Corrosion Technologies Ltd - [2015] APO 86

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Duoguard Australia Pty Ltd v Vector Corrosion Technologies Ltd [2015] APO 86

Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant: Vector Corrosion Technologies Ltd

Opponent: Duoguard Australia Pty Ltd

Delegate: Dr S.D. Barker

Decision Date: 7 December 2015
Hearing Date: Written Submissions completed on 21 September 2015

Catchwords: PATENTS – opposition to amendments – amendments allowable – costs awarded against opponent

Representation: Patent applicant: IP Gateway Patent and Trade Mark Attorneys Pty Ltd
Opponent: Callinans

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant: Vector Corrosion Technologies Ltd

Date of Decision: 7 December 2015
DECISION
The opposition is unsuccessful – I allow the amendments.
I award costs according to Schedule 8 against Duoguard Australia.
REASONS FOR DECISION
Background

AU 2005238278 is an Australian patent (the patent) accepted on 12 January 2010 and granted on 27 May 2010. The patent is derived from PCT application PCT/GB2005/001651 and claims priority from UK patent application GB 0409521.2.
On 18 November 2011 Vector Corrosion Technologies Ltd (the patentee) filed a request to amend the specification and a statement of proposed amendments (the earlier amendments) which would replace the claim set as granted.
On 4 April 2012 Concrete Preservation Technologies Ltd filed a notice of opposition (the earlier opposition) to the earlier amendments.
On 20 December 2013 a decision (the earlier decision) issued in relation to the earlier opposition, being Concrete Preservation Technologies v Vector Corrosion Technologies [2013] APO 71. The earlier decision established that the earlier amendments were not allowable.
On 24 January 2014 the patentee filed a request to amend the specification and a statement of proposed amendments (the amendments) which would replace the claim set as granted.
On 8 July 2014 Duoguard Australia Pty Ltd (the opponent) filed a notice of opposition (the opposition) to the amendments. A statement of grounds and particulars (SGP) was filed by the opponent on 8 August 2014.
Evidence in support (EIS) was filed by the opponent on 9 October 2014. This comprised:
·a statutory declaration by Mr Jeffrey Pritchard (Pritchard), with supporting exhibits JP-1 to JP-3;
·a first statutory declaration by Mr Gareth Kevin Glass (Glass#1); and
·a first statutory declaration by Professor Nick Birbilis (Birbilis#1), with supporting exhibits NB-1 to NB-7.
Evidence in answer (EIA) was filed by the patentee on 15 December 2014. This comprised:
·a statutory declaration by Mr John S. Tinnea (Tinnea).
Evidence in reply (EIR) was filed by the opponent on 16 February 2015. This comprised:
·a second statutory declaration by Mr Gareth Kevin Glass (Glass#2), with supporting exhibits GG-1 to GG-10; and
·a second statutory declaration by Professor Nick Birbilis (Birbilis#2).
The opponent’s submissions (opponent’s submissions) were filed on 31 August 2015. The patentee’s submissions (patentee’s submissions) were filed on 14 September 2015. The opponent filed final submissions (opponent’s final submissions) on 22 September 2015.
The patentee filed further submissions out of time on 1 October 2015. These did not contribute anything of further relevance to the opposition beyond the submissions already made and so have not been considered as part of this decision.
The Amendments
The amendments result in a change to the wording of claim 14, the deletion of claim 25 and the addition of new independent claims 27 to 31. Claim 14 as granted is given below:
A method of cathodically protecting a metal section in an ionically conductive covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the metal section to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the metal to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the metal section alone;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and in a second protection step, the voltage generated by the power supply is no longer present and a current flows between the sacrificial anode and the metal to continue protecting and/or passivating the metal section, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.
The effect of the amendment to claim 14 is to incorporate the features of claim 25 as granted, such that the metal to be protected is specified as a steel reinforcement and to specify that the ionically conductive covering material is a concrete or mortar material. Claim 14 as proposed to be amended is given below in marked up form:
A method of cathodically protecting a steel reinforcement ~~metal section~~ in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement ~~metal section~~ to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement ~~metal~~ to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement ~~metal section~~ alone;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and in a second protection step, the voltage generated by the power supply is no longer present and a current flows between the sacrificial anode and the steel reinforcement ~~metal~~ to continue protecting and/or passivating the steel reinforcement ~~metal section~~, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.
New independent claims 27 to 31 are similar in many respects to claim 14 as granted. To assist in understanding new claims 14 and 27 to 31 I have provided a summary of the differences between these claims and granted claim 14 in table 1. This is necessarily a simplification and does not take the place of the claims as reproduced in the Annex at the end of this decision.
Table 1: Summary of differences between claim 14 (as granted) and
new claims 14 and 27 to 31.

Feature Granted Claim 14 New Claim 14 New Claim 27 New Claim 28 New Claim 29 New Claim 30 New Claim 31

What is protected a metal steel reinforcement steel reinforcement steel reinforcement steel reinforcement steel reinforcement steel reinforcement

The covering material not specified concrete or mortar concrete or mortar concrete or mortar concrete or mortar concrete or mortar concrete or mortar

Anode surrounded by not specified not specified not specified encapsulating material porous material not specified not specified

First protection step “so as to passivate the steel reinforcement” “so as to passivate the steel reinforcement” “so as to passivate the steel reinforcement” “so as to passivate the steel reinforcement”

Second protection step continue protecting and/or passivating continue protecting and/or passivating
delete “and/or passivating”

delete “and/or passivating”

add “the sacrificial anode remains active”

delete “and/or passivating”

add “the sacrificial anode remains active”

delete “and/or passivating”

add “the sacrificial anode remains active”

add activation detail

delete “and/or passivating”

add “the sacrificial anode remains active”

add temporary impressed current detail

Grounds of Opposition

The grounds of opposition are that as a result of the amendments:
·claims 14 and 27 to 31 claim matter not in substance disclosed in the specification as filed (s102(1));
·claims 14 and 27 to 31 do not in substance fall within the scope of the claims of the specification before amendment (s102(2)(a)); and
·claims 14 and 27 to 31 do not comply with s40(2) or s40(3) (s102(2)(b)).
Relevant Law
I have set out the relevant law in the earlier decision and reiterate this below. Section 102 of the Patents Act (the Act) governs the allowability of amendments. It relevantly provides:
(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).
As set out in s 102(2A) the "relevant time" is after the specification has been accepted. Therefore, as the present specification had been accepted (and granted) when the amendments were requested, the requirements of s102(2) apply.
Relevant principles applying to s102(1) and s102(2) are conveniently laid out by Yates J in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [38] to[40] (Bristol-Myers Squibb):
"38. Consideration of the prohibition in s102(1) of the Act requires a comparison between what would be claimed as a result of the proposed amendment and what is disclosed in the specification as filed. The steps involved in this comparison were described in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 at 466C-E. As there emphasised, the key point is that the words' "as a result of the amendment' in s102(1) are not to be confused with the expression 'after the amendment'. The amendment is identified by considering the specification as it stands with how it would stand after the proposed amendment. It is only by that step that one can determine what matter results from the amendment. Once that is determined, the next step is to read the specification as a whole (that is, amended in the manner proposed) and to compare it with what is 'in substance disclosed' in the specification as filed. If by reason of the amendment proposed, and for no other reason, the specification would then claim matter not in substance disclosed in the specification as filed, the amendment would not be allowable.
39. As to the notion 'in substance disclosed', the Full Court in ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 at [ 118] referred to the close relationship between that notion and the test for fair basis, saying that it would be a rare case where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification: see also GambroPty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2000) 49 IPR 321 at [18] where the two requirements were said to be 'very similar'. In Ethyl Corporation's Patent [1972] RPC 169 at 195, Lord Denning MR said that the requirements were 'virtually the same', although in Lubrizol the Full Court thought it unnecessary to go that far. It is thus expedient to test whether matter is 'in substance disclosed' in the specification as filed by asking whether there is a 'real and reasonably clear disclosure' of that matter.
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 s102(2)(a) of the Act: AMP Incorporatedv The Commissioner of Patents (1974) 3 ALR 283 at 289-290; Fina Research SA vHalliburton 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."
The Opponent’s Submissions
The opponent submits that the following changes in each of the amended claims leads to one or more grounds of non-allowability under s102:
·the “inconsistent” amendment to “steel reinforcement” (claims 14 and 27 to 31);
·the “passivate” amendments (claims 27 to 30);
·the introduction of two different types of treatments (claim 31); and
·the removal of the reference to “assembly” in conjunction with other amendments (claims 14 and 27 to 31)
I will consider these contentions in the following paragraphs.
The “Inconsistent” Amendment to “Steel Reinforcement” (Claims 14 and 27 to 31)
As noted in the opponent’s submissions at [48] and [49], the replacement of “metal section” or “metal” with “steel reinforcement” in new claims 14 and 27 to 31 has been done in such a way so as to lead to an antecedent basis problem in these claims. I repeat the relevant sentence below:
“…where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.” (emphasis added)
It is apparent that this issue is as a result of the amendment and so s102 is at least nominally enlivened. However the question here of what has actually occurred as a result of the amendment is fundamentally one of construction in that it is necessary to first consider how a skilled addressee would construe the claims so as to determine what in fact results from the amendment. Consequently while the opponent has used this issue to support grounds under all of s102, I will first consider how a skilled person would construe the claims as proposed to be amended in view of the antecedent basis issue identified by the opponent.
The operation of clarity under s40(3) has been considered in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349:
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use...The consideration is whether, on any reasonable view, the claim has meaning...In determining this, the expressions in question must be understood in a practical, commonsense manner… Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection...”
This was cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 at [13] to [16]; (2008) 77 IPR 229 at 233-235(Austal Ships).
The important point here is how would a skilled addressee treat the lack of antecedent basis for “the metal” in the context of the claims as a whole. It would seem to me that the skilled addressee is faced with two different choices in construing “the metal”, these being:
·“the metal” simply means “the steel reinforcement”; or
·“the metal” refers to some other metal that is not the steel reinforcement.
I first note that all the new claims define in their preamble “a method of cathodically protecting steel reinforcement”. It is thus apparent that the subject matter to be protected in these claims is a “steel reinforcement”, with the subsequent steps defining how this is to be achieved. There is thus no reason for a skilled addressee to believe that the claims intend protection of anything other than the “steel reinforcement”.
Secondly the claims refer to a first protection step connecting a power source of some description in series with a sacrificial anode so as to “produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement alone”. They then go on to a second protection step wherein the voltage from the power source is no longer present, but “a current flows between the sacrificial anode and the steel reinforcement to continue protecting (and/or passivating) the steel reinforcement, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal” (emphasis added). Consequently the skilled addressee would understand that the second step defines protecting the “steel reinforcement” using some form of galvanic protection.
If a different metal is intended, then the galvanic protection of the second step is in no way conventional – my understanding of galvanic protection as outlined in the evidence is that it is based on the use of a cathode to be protected and an electrochemically more active anode (see Tinnea [11a] and Birbilis#2 [6], noting that Professor Birbilis appears to disagree only with Mr Tinnea’s nomenclature rather than his characterisation of galvanic protection). The use of a “third electrode” does not appear to be well known in the art, nor is it countenanced in the specification as filed.
In addition if a different metal is intended it is not apparent how this drives a current between the “steel reinforcement” and the “sacrificial anode” given that a different metal would comprise a different electrochemical potential. Rather it would seem that the “steel reinforcement” and “the metal” (which is not the steel reinforcement) would result in some form of competing cathodic process that would at best reduce the level of protection given to the “steel reinforcement”, or at worst render such protection entirely ineffective.
The inexorable conclusion that one draws from the above is that to construe “the metal” as anything other than “the steel reinforcement” is to lead to an absurd and unworkable construction that is not countenanced in the specification as filed nor is consistent with what was known in the art. For this reason I conclude that the “inconsistent steel reinforcement” amendment does not result in any ambiguity being introduced into claims 14 and 27 to 31 as a result of the amendment.
Armed with the construction that I have determined it is apparent that no grounds under s102 are enlivened as a result of the “inconsistent” steel reinforcement amendment. This is due to the fact that protection of a steel reinforcement is present in the specification before the proposed amendments in the form of claim 25 as at grant, and so the introduction of “steel reinforcement” cannot be said as per Bristol-Myers Squibb at [38] to be “by reason of the amendment proposed, and for no other reason”. Consequently I need not consider any of the opponent’s further arguments with respect to the “inconsistent steel reinforcement” amendment.
In conclusion the “inconsistent steel reinforcement” amendment does not result in changes that can be said to occur as a result of the amendment, and therefore this change cannot offend against s102.
The “Passivate” Amendments (Claims 27 to 30)

To determine whether this amendment offends against s102, I first need to consider what has been introduced as a result of the amendment, that is “by reason of the amendment proposed, and for no other reason”.
The opponent indicates with reference to new claim 27 that the “…amendment introduces a transition from a purely passivating step to a protecting step which did not exist prior to amendment” (opponent’s submissions [55]). The patentee appears to concur with this assessment at [38] of their submissions. I note that new claims 28 to 30 make the same “passivate” changes as claim 27. I consider that claims 27 to 30 introduce changes wherein there is passivation in the first step and then protection in the second step as a result of the amendment.
The opponent alleges that this amendment results in the proposed claims being unclear, not fairly based on the specification as filed and leading to these claims not falling within the scope of the claims as granted.
Clarity
As noted by the opponent, these claims now involve passivating a steel reinforcement in a first protection step and continuing protection in a second protection step.
The evidence indicates that passivation can be induced using cathodic protection systems, and when using impressed current systems in particular; see Birbilis#1 [17]; Tinnea [12] and Birbilis#2 [14]. The difference between whether a cathodic protection system is “passivating” or merely providing “cathodic protection” appears to be largely defined by the relative magnitude of the current involved, this current with respect to “passivation” being influenced by environmental factors such as the rate of corrosion; see Tinnea [12], [26], [27] and Birbilis#2 [16] (noting that passivation in the context of concrete and cathodic protection inherently involves the movement of chloride ions: see Tinnea [12]; the patentee’s submissions at [116] to [120] and references therein and as conceded in opponent’s submissions in reply at page 3 paragraph 1). This perhaps explains why “passivation” is rather more associated with impressed current systems rather than galvanic protection.
It is thus clear that cathodic protection systems will typically result in both “cathodic protection” and “passivation” to a greater or lesser degree of efficacy depending on the current used and environmental factors. Consequently characterisation of a process as “protecting” or “passivating” comes down to the comparative efficacy of the cathodic protection system to induce either effect, which appears to rely to a large degree on the magnitude of the current used, rather than formally excluding one effect or the other. Both can be considered “protective” in that they inhibit corrosion of the metal concerned.
As noted in the earlier decision at [37] the claims do not define a conventional impressed current system. Nevertheless the process in the first protection step would be understood as involving an impressed current. In this sense there is nothing about the inclusion of “passivation” in the first protection step that is inherently problematic for the skilled addressee to understand.
Similarly the second protection step merely defines conventional galvanic protection in the absence of an impressed current. There is nothing confusing about this second step continuing protection based on galvanic protection as well known in the art, especially given that some form of “cathodic protection” would inevitably be present in the first protection step.
The arguments at [84] to [88] of the opponent’s submissions appear more pertinent to an attack on in substance disclosure or broadening the scope of the claims. The substantive clarity argument appears to be based on alleged confusion in construing the claims by Professor Birbilis. It is not entirely clear what this confusion is. In any case the task of construction is one for me alone and as noted I see no difficulties for the skilled addressee in unambiguously construing these claims.
In conclusion I am satisfied that these claims do not introduce any ambiguity as a result of the amendment.
In Substance Disclosure/Fair Basis
The specification as filed at page 3 lines 28 to 31 states that:
“(I)n addition, the assembly of the present invention produces a high initial current. This is in particular useful as it allows the assembly to be used to passivate metals, such as steel, which metals may be in an active corrosion state or may be in new concrete.”
and at page 4 lines 10 to12:
“(W)hen the cell of the assembly of the present invention ultimately becomes depleted, the sacrificial element may still remain active and thus continue to provide cathodic protection.”
In view of the impressed current/galvanic protection system disclosed in the specification as filed (see page 2 line 28 to page 3 line 7 and figure 2) and the above cited passages, it is apparent that there is real and reasonably clear disclosure in the specification as filed of an initial passivation step (comprising relatively higher current) followed by continued protection mediated by the sacrificial element.
It would thus appear that there is no issue with in substance disclosure with respect to these claims, and this appears to be conceded by the opponent in their submissions at [105], noting the submissions in [107] relate to features that are not necessarily in the claims as I have construed them.
The opponent’s criticisms of lack of in substance disclosure appear to rest on the absence of an “assembly” in the claims and the reference to a “power supply” as opposed to a “cell” in conjunction with the “passivate” amendment; see opponent’s submissions at [105] and [108] to [110].
However the absence of an “assembly” and the inclusion of a “power supply” are in fact apparent in claim 14 before amendment. These bring with them their own peculiar possibilities that are fundamentally unchanged by, and do not affect, the “passivate amendment”. Consequently any issues that occur due to the omission of the former and the inclusion of the latter do not occur “…by reason of the amendment proposed, and for no other reason…” As such the issues raised here by the opponent do not occur as a result of the amendment and therefore do not enliven s102.
I am therefore satisfied that the “passivate amendment” does not, as a result of the amendment, result in claims to anything that is not fairly based or not in substance disclosed with respect to the specification as originally filed.
Scope of the Claims After Amendment
At [132] of their submissions the opponent states:
“As a consequence of the amendment, the broad inventive concept of a purely passivating step…transitioning to a purely protective step…now falls within the scope of claims 27 to 30. Such features are again found in the invented hybrid cathodic protection process utilising the DuoGuard anode. Such features may fall within the amended claims but would not have been captured prior to amendment because prior to amendment a purely passivating first step continued to a passivating second step.”
Relevantly claim 14 prior to amendment defines a first protection step as per claim 14 after amendment, but omits any reference to passivating. In addition the second protection step before amendment refers to “continue protecting and/or passivating the metal section” as opposed to “continue protecting” after amendment.
However the nature of the impressed current/galvanic protection mode that is used in the first step means it would be understood by the skilled addressee that the resulting current would give rise to some form of cathodic protection (at least), but also passivation as well, depending on the magnitude of the current concerned and other environmental factors, in line with my earlier observations. This naturally leads to the “continue protecting and/or passivating the metal section” of the second step.
Thus in reality the claims prior to amendment do not necessarily define a “purely” passivating step leading to a purely passivating step. Rather claim 14 before amendment defines a general “protection and/or passivating” process in the first and second protection steps. Consequently the limitation “so as to passivate the steel reinforcement” and the deletion of “and/or passivating” in the amended claims does not make anything an infringement that would not have been an infringement before the amendment.
I am therefore satisfied that these claims fall within the scope of the claims prior to amendment.
The Introduction of Two Different Treatments (Claim 31)
As noted by the opponent at [57] and the patentee at [53] of their respective submissions, claim 31 as proposed to be amended introduces the features of
“…wherein the first protection step provides a temporary impressed current which is a high current treatment relative to the low current preventative treatment of the second step”.
The opponent alleges that this alteration results in claim 31 being unclear, being not fairly based on the specification as filed/lacking in substance disclosure and not falling within the scope of the claims as granted.
Clarity
My understanding of this limitation in new claim 31 is that it specifies the first protection step to comprise a relatively higher current than that used in the second protection step. As observed in my earlier decision, the inclusion of “temporary impressed current” here does not appear to add anything over and above that which already occurs in the first step.
In view of my previous discussions the use of a “high current” in the first step would tend to result in passivation to a greater degree than the “low current” second step. Similar to the inclusion of “temporary impressed current” this does not appear to add anything more to the claim than would already be there in the absence of this limitation when read by the skilled addressee.
The second “preventative” treatment is low current and so would seem to be commensurate with galvanic protection. However I note the use of “preventative” as opposed to “protective” treatment. Mr Tinnea defines “preventative treatment” as the use of galvanic current to sustain passivity of the reinforcing steel, this being comparatively low current in nature and well known in the art (Tinnea [31] and [32]). Professor Birbilis, while not directly supporting Mr Tinnea on this point, considers that “cathodic protection” and “cathodic prevention” are merely one and the same thing in a spectrum of applied current (Birbilis#2 [20]). Consequently I consider that “preventative treatment” defines an effect resulting from cathodic protection systems wherein the current is effective to sustain passivity of the steel reinforcement. Like passivation it is apparent that the two effects go hand in hand based on Professor Birbilis’ evidence.
Given the differing effects to be expected as a result of the application of low or high current, it is clear that each of the first and second steps can be said to comprise particular treatments.
In view of the preceding it should be clear that there is nothing in this claim that I consider is beyond unambiguous interpretation by the skilled addressee.
The arguments at [89] to [91] of the opponent’s submissions appear more pertinent to an attack on in substance disclosure or broadening the scope of the claim beyond the previous claims. The substantive clarity argument appears to be based on alleged confusion in construing this claim by Mr Tinnea. It is not entirely clear what this confusion is. In any case the task of construction is one for me alone and as noted I see no difficulties in unambiguously construing this claim.
In conclusion I am satisfied that this claim does not introduce any ambiguity as a result of the amendment.
In Substance Disclosure/Fair Basis
It is clear that the specification as originally filed discloses a first protection step comprising the use of impressed current in conjunction with a sacrificial anode and then a second step comprising protection which is galvanic in nature; see figure 2 of the drawings as originally filed. Consequently the first protection step inherently comprises a comparatively higher current than in the second step. There is thus no question of in substance disclosure for these features.
As noted in my discussion with regard to clarity, the use of “temporary impressed current” does not add anything not in substance disclosed in the specification as originally filed.
What then of “preventative treatment”? This term as such is not used in the specification as originally filed. However as noted in my clarity discussion, “preventative treatment” as an effect resulting from cathodic protection was well known in the art and would be readily understood by the skilled addressee to result from the second protection step given appropriate conditions such as current and other environmental factors. I therefore consider that there is a real and reasonably clear disclosure for the features of the second treatment in the specification as originally filed when this is read by the skilled addressee.
Given the differing effects to be expected as a result of the application of low or high current, it is clear that each of the first and second steps can be said to comprise particular treatments as would be understood by the skilled addressee.
The opponent’s criticisms of lack of in substance disclosure/lack of fair basis at [111] to [122] of their submissions appears to be based on assertions that the specification as originally filed only disclosed the use of an “assembly” to achieve a single treatment. As I have noted earlier the elision of “assembly” in this claim cannot be said to be as a result of the amendment, and does not in any way affect those features introduced as a result of the amendment. In this regard the opponent’s representations with respect to the “assembly” are not relevant to determining allowability under s102.

In addition I have noted the differing effects that occur in using cathodic protection as understood by the skilled addressee, and these can be considered different treatments even if the underlying process used for each treatment is fundamentally the same in nature.
I am therefore satisfied that the “two treatments” amendment does not, as a result of the amendment, result in claiming anything that is not fairly based or not in substance disclosed with respect to the specification as originally filed.
Scope of the Claim After Amendment
At [139] of their submissions the opponent states:
“These features would not have fallen within the scope of the claims prior to amendment. The claims of the Patent prior to amendment only cover a single treatment of protecting and/or passivating a protected metal section which had two steps (stages in a gradual process), at least using the circuit illustrated in Figure 5 above (if not Figure 4) to deliver a single treatment. After amendment the claim includes two treatments and at least one, if not all, of the above features fall within the scope of the claims because the amendment exploits any existing lack of clarity in the claims prior to amendment”.
This argument, and others presented by the opponent at [134] to [140] of their submissions, appears to rely on alleged pre-existing deficiencies in the claims to make out an argument that the claims do not fall within the scope of the claims prior to amendment. Such arguments extend beyond the requirements of s102(2)(a), which refers to “as a result of the amendment”. To the extent that the opponent’s arguments can be understood within the bounds of s102(2)(a), it would seem to be a criticism of the characterisation of the two steps as two treatments, whereas, it is argued, there was only a single treatment in the claims before amendment.
However, as noted in my discussion on clarity and in substance disclosure/fair basis with respect to claim 31, I consider that each of the “treatments” tend to lead to specific effects that occur as a result of the cathodic protection defined in each of the protection steps. These effects fall within the scope of the general cathodic protection offered by the claim prior to amendment. The characterisation of these effects as different “treatments” in no way alters this fact. Consequently the amended claim does not make anything an infringement that would not have been an infringement before the amendment.
I am therefore satisfied that this claim does fall within the scope of the claims prior to amendment.
The Elision of Assembly in the Amended Claims
The opponent alleges that the elision of “assembly” in the amended claims results in a lack of clarity at [71] to [83] of their submissions. As I have noted previously the opponent also cites this as part of their arguments with respect to lack of in substance disclosure/lack of fair basis and scope of the claims after amendment in relation to the issues I have discussed above.
However as I have observed previously claim 14 prior to amendment made no reference to an “assembly”. Although I have previously discussed this issue with respect to other results of the amendments, for the benefit of doubt I do not see any nexus between any changes that occur as a result of the amendment, as considered above, and the elision of “assembly”, as asserted by the opponent. Whatever the effect that elision of assembly has on the claims it therefore cannot be said to have occurred as a result of the amendment.
As such the issues raised here by the opponent do not occur as a result of the amendment and therefore do not enliven s102. I need not consider this issue any further.
Conclusion
I am satisfied that the proposed amendments do not contravene s102 of the Act. Therefore the opposition fails on all grounds. Subject to appeal I will allow the amendments filed on 24 January 2014.
Costs
Costs usually follow the event. I see no reason to do otherwise here. I will award costs against the opponent according to Schedule 8 of the Act.
Dr S.D. Barker
Delegate of the Commissioner of Patents
ANNEX – CLAIMS AS PROPOSED TO BE AMENDED
Amended claim 14 (showing additions and deletions).
A method of cathodically protecting a steel reinforcement ~~metal section~~ in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement ~~metal section~~ to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement ~~metal~~ to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement ~~metal section~~ alone;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and in a second protection step, the voltage generated by the power supply is no longer present and a current flows between the sacrificial anode and the steel reinforcement ~~metal~~ to continue protecting and/or passivating the steel reinforcement ~~metal section~~, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.
New Claim 27
A method of cathodically protecting steel reinforcement in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement alone so as to passivate the steel reinforcement;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and, in a second protection step, when the voltage generated by the power supply is no longer present and a current flows between the sacrificial anode and the steel reinforcement to continue protecting the steel reinforcement, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.
New Claim 28
A method of cathodically protecting steel reinforcement in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
wherein the sacrificial anode is surrounded by an encapsulating material;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement alone so as to passivate the steel reinforcement;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and, in a second protection step, when the voltage generated by the power supply is no longer present the sacrificial anode remains active and a current flows between the sacrificial anode and the steel reinforcement to continue protecting the steel reinforcement, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.
New Claim 29
A method of cathodically protecting steel reinforcement in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
wherein there is provided at the sacrificial anode a porous material for absorption of corrosion products;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement alone so as to passivate the steel reinforcement;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and, in a second protection step, when the voltage generated by the power supply is no longer present the sacrificial anode remains active and a current flows between the sacrificial anode and the steel reinforcement to continue protecting the steel reinforcement, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal.
New Claim 30
A method of cathodically protecting steel reinforcement in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement alone so as to passivate the steel reinforcement;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and, in a second protection step, when the voltage generated by the power supply is no longer present the sacrificial anode remains active and a current flows between the sacrificial anode and the steel reinforcement to continue protecting the steel reinforcement, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal;
wherein, the sacrificial anode is activated to ensure continued corrosion of the sacrificial anode.
New Claim 31
A method of cathodically protecting steel reinforcement in an ionically conductive concrete or mortar covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the steel reinforcement to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the steel reinforcement to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the steel reinforcement alone;
wherein the power supply is otherwise isolated from the environment such that current can only flow into and out of the power supply via the sacrificial anode and the connector;
and, in a second protection step, the voltage generated by the power supply is no longer present and a current flows between the sacrificial anode and the steel reinforcement to continue protecting and/or passivating the steel reinforcement, where the current is generated solely by the galvanic voltage between the sacrificial anode and the metal;
wherein the first protection step provides a temporary impressed current which is a high current treatment relative to the low current preventative treatment of the second step.

Feature	Granted Claim 14	New Claim 14	New Claim 27	New Claim 28	New Claim 29	New Claim 30	New Claim 31
What is protected	a metal	steel reinforcement	steel reinforcement	steel reinforcement	steel reinforcement	steel reinforcement	steel reinforcement
The covering material	not specified	concrete or mortar	concrete or mortar	concrete or mortar	concrete or mortar	concrete or mortar	concrete or mortar
Anode surrounded by	not specified	not specified	not specified	encapsulating material	porous material	not specified	not specified
First protection step	“so as to passivate the steel reinforcement”	“so as to passivate the steel reinforcement”	“so as to passivate the steel reinforcement”	“so as to passivate the steel reinforcement”
Second protection step	continue protecting and/or passivating	continue protecting and/or passivating	delete “and/or passivating”	delete “and/or passivating” add “the sacrificial anode remains active”	delete “and/or passivating” add “the sacrificial anode remains active”	delete “and/or passivating” add “the sacrificial anode remains active” add activation detail	delete “and/or passivating” add “the sacrificial anode remains active” add temporary impressed current detail