Eigen Technology Pty Ltd v CTA Australia Pty Ltd - [2023] APO 43

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Eigen Technology Pty Ltd v CTA Australia Pty Ltd [2023] APO 43
Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd

Opponent:Eigen Technology Pty Ltd

Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents

Decision Date: 4 August 2023

Hearing Date: Written submissions completed on 26 April 2023

Catchwords: PATENTS – opposition under section 104 – tactile ground surface indicator installation – allowability under subsection 102(1) considered – whether as a result of the amendments, the specification would claim matter not in substance disclosed in the specification as filed – claim scope – further consideration regarding claim scope and fair basis in context of grounds of re-examination recommended – amendment allowable – issues do not arise as a result of the amendment – no award of costs

Representation: Patent attorney for the patentee: Davies Collison Cave Pty Ltd
Patent attorney for the opponent: Churchill Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd
Date of Decision: 4 August 2023
DECISION

As a result of the amendment requested on 11 November 2020, the specification does not claim matter not in substance disclosed in the specification as filed.
The opposition is unsuccessful, and I allow the amendment request of 11 November 2020.
I make no award of costs.
Reconsideration should be given to grounds of invalidity in the context of re-examination.
REASONS FOR DECISION
BACKGROUND

AU 2008202373 is an Australian patent (the patent) accepted on 13 July 2009 and granted on 19 November 2009 in the name of CTA Australia Pty Ltd (the patentee). The patent claims priority from provisional patent applications AU 2007903648 and AU 2007906297.
Since grant, the patent has been subject to several actions encompassing amendment, court action, and re-examination. The first amendments to the patent were allowed and advertised as such on 2 December 2010. In June of 2015 the Commissioner received a letter indicating that the patent was the subject of Federal Court proceedings, those Court proceedings being terminated later in 2015.
On 8 March 2017, the Commissioner received a request for re-examination from Roger Syn & Co. This instance of re-examination concluded on 4 July 2017 after three re-examination reports, without any proposed amendment. Further re-examination was instigated after a request received on 21 May 2018, this time by Churchill Attorneys on behalf of Eigen Technology Pty Ltd (the opponent). This concluded on 21 January 2019 after three re-examination reports, also without any proposed amendment. On 22 August 2019 the Commissioner received another request for re-examination, again by Churchill Attorneys on behalf of the opponent. In response to the re-examination report issued on 20 April 2020 the patentee filed amendments, and after a discussion with the Supervising Examiner responsible for re-examination of the patent, the patentee filed further amendments on 11 November 2020. A non-adverse re-examination report was issued on 20 November 2020, with the further amendments considered allowable by an examiner. Leave to amend was advertised on 7 January 2021.
On the 14 January 2021, the opponent filed their notice of opposition to the amendments of 11 November 2020. A Statement of Grounds and Particulars (the SGP) followed including three grounds and the particulars in relation to each of those grounds. Following this, the patentee filed a Request for Dismissal of the Opposition, and a delegate of the Commissioner wrote to the parties on 25 February 2021 intending to dismiss grounds 2 and 3 in their entirety and some of the particulars relating to ground 1 of the opposition, and providing an opportunity to comment. Both parties provided comments, and the delegate wrote again on 23 March 2021 advising that ground 2 in its entirety and part of ground 1 was dismissed and maintaining her intention to dismiss ground 3 in its entirety. Ultimately, the delegate dismissed grounds 2 and 3, and part of ground 1. A hearing was held regarding dismissal of the remaining particulars of ground 1. In the decision of Eigen Technology Pty Ltd v CTA Australia Pty Ltd[1] the delegate decided to not dismiss ground 1 as it stood, and it is this ground that remains to be decided in the present matter (being allowability under s102(1)).
[1] [2022] APO 44
For the present opposition to amendments under s104, evidence was filed by the opponent in the form of a declaration by Dr Michael Shek Sia Lim dated 21 October 2022. I have found the declaration of limited assistance in the present matter, where issues turn fundamentally upon construction of the claims as proposed to be amended and the specification as filed.
THE RELEVANT LAW
Subsection 102(1)
The application for the patent was filed in 2008 and the request for examination was also filed prior to the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Thus, these amendments do not apply to the present patent. These amendments included change to subsection 102(1) incorporating a new test which precludes the inclusion of subject matter extending beyond the original disclosure. Prior to the Raising the Bar Act, s102(1) was as follows:
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.
When determining whether matter is in substance disclosed in the specification as filed, the courts have 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[2], RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd[3]).
[2] [1971] RPC 23
[3] [1998] FCA 1358
Under subsection 40(3) prior to Raising the Bar, fair basis is “concerned purely with the relationship between the body and claims of the one specification”[4]. Furthermore, it was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd[5] that fair basis requires “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, in following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd[6]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.”
[4] Lockwood Security v Doric Products [2004] HCA 58, “Lockwood”
[5] [2001] HCA 8
[6] [1977] HCA 23
As was noted in Lockwood:
“…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”.
Under subsection 40(3), also approved in Lockwood was the following observation in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd[7]:
“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”

[7] [1988] FCA 162
To sum up, the test to be followed for fair basis is:
·     Having regard to the specification and claims, identify the invention which is described and around which a particular claim is drawn.
·     Compare the claim with that invention – as described in the body of the specification; and
·     Assess whether the claims are consistent with the invention described in the specification, i.e. whether there is a “real and reasonably clear disclosure” of the invention as defined by the features of the claim or whether the claims “travel beyond the subject matter of the invention”.
Again, I make clear that in the present case, the comparison is to be made between the claims as proposed to be amended, and the specification as filed. Notably the legislation requires that the failure to meet the requirements of subsection 102(1) must be the result of the amendment. The present matter involves no dispute between the parties as to whether issues potentially arise as a result of the amendment, however I will consider this aspect of the relevant test later in the decision.
Standard of Proof
The patentee submitted that the present matter operates under a standard of proof whereby the opponent must establish that it is practically certain that the amendment is not allowable. The patentee cites the amendments arising as a result of Raising the Bar, particularly amendments to subsection 106(4), which relates to amendments directed by the Commissioner. In my understanding, the amendment was for the purpose of inserting the text “on the balance of probabilities” after the phrase “is satisfied”[8] so at to “put beyond doubt that the standard to be applied is the standard of balance of probabilities”[9].
[8] Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (no. 35, 2012) – Schedule 1, see Part 2
[9] Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 – Explanatory Memorandum – Part 2
In the present matter, before me for consideration are voluntary amendments filed by the patentee during re-examination proceedings. In this regard, it is my understanding that the correct standard of proof to apply remains the balance of probabilities, being the standard of proof applied to such matters subject to provisions that applied before and after Raising the Bar. See for example the decision of the delegate in Robert Philip Wulff v GB Design Limited[10] which was directed to the allowability of amendments filed during re-examination of a patent granted prior to Raising the Bar. Reference was made in that decision to the principles in Dunlop Holding Ltd’s Application[11] where it was stated that:
“As to the standard of proof, there is nothing in the statute to suggest that any standard different from the normal standard of proof required in civil litigation— that is to say, the balance of probability—should be adopted.”
[10] [2019] APO 4 at [26]
[11] [1979] RPC 523 at 542-543
In any event, I consider that the present matter is unaffected by the particular standard of proof that applies.
Construction of Claims and Specification
As is usually the case, critical to the present matter is proper construction of the specification and claims. Here, I note the comments of Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd[12]:
“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.”
[12] [2013] FCA 214; 100 IPR 451 at [139].
Furthermore, the correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[13]:
“…the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of
[13] [2009] FCAFC 70 at [118] – [120]
the specification.”
THE INVENTION
As noted above, the present matter deals with the specification as proposed to be amended on 11 November 2020.
The patent is directed towards tactile ground indicators (TGSI, Tactile Ground Surface Indicator), being devices installed in the ground to assist visually impaired individuals in identifying changes in the ground’s surface and the environment. In particular, the specification as proposed to be amended is directed towards a method of installing a particular style of indicator, the indicator having a projecting stem that may be encased in a tube before insertion of the stem into the ground. Figs 1A to 1D neatly depict the general design of the present invention.
As a specific example embodiment, a tactile ground surface indicator 1 comprises a machined or moulded body portion with an indicator portion 5 arranged to be placed above the ground surface. A generally elongate casing 9 engages over the stem 7 of the body portion, the casing generally being made from a deformable plastic. The specification discusses that the casing in the above figures is applied to the stem prior to insertion. The TGSI is then inserted into the ground with a biasing of the casing against a ground cavity assisting in the retention of the indictor in the ground.
The Claims as Proposed to be Amended.
There are 24 claims prior to amendment (with independent claims 1 and 19 and omnibus claims 23 and 24) and 32 claims after amendment (with independent claims 1-3 and 23-25, and omnibus claims 31-32). The claims are rather straight forward to understand, with relevant amendments focusing on the substantial encasing of the stem (“projecting portion”) (7) by the casing (9). Claim 1 as proposed to be amended is as follows, marked up in comparison to the specification as it currently stands:
A tactile ground surface indicator, comprising a rigid indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a rigid projecting portion extending from a base of the indicator portion, in fixed relation to the indicator portion, to be receivable in a cavity formed in the ground, the indicator further comprising a casing applied to the projecting portion, thereby substantially encasing it, prior to receipt ~~thereof~~ of the projecting portion in the cavity, the casing being deformable against a wall of the cavity, upon insertion of the projecting portion and casing into the cavity, to retain the indicator.
Previous claim 19, now proposed claim 23 is as follows, marked up in comparison to the specification as previously amended:
A method of forming a tactile ground surface indicator, the method comprising:
providing a rigid body comprising an indicator portion, which is of substantially single-piece construction and arranged to lie exposed over a ground surface, and a projecting portion extending from a base of the indicator portion to be receivable in a cavity formed in the ground; and ~~prior to receipt of the projecting portion in the cavity,~~ applying a casing to the projecting portion, such that the projecting portion is substantially encased thereby, prior to receipt of the projecting portion in the cavity, the casing being deformable against a wall of the cavity upon insertion of the projecting portion and casing into the cavity, to retain the indicator.
ISSUE FOR DETERMINATION
The patentee sums up the issue for determination in the present matter which I consider a useful starting point for considerations:
“The only question to be decided in the present opposition is whether the specification claims matter which was not in substance disclosed in the specification as filed as a result of:
(i)the casing being described in claim 1 as amended as substantially encasing the projecting portion; or
(ii)the projecting portion being described in new claim 23 as substantially encased by the casing.”
Fundamentally this simply amounts to a question of whether the specification as filed discloses a “substantially encased” projecting portion prior to insertion into a cavity. Answering this question will involve appropriate construction of the phrase which I will undertake below. First, I lay out summaries of submissions of the parties.
SUMMARY OF SUBMISSIONS
The opponent makes a number of key points in arguing that the amendment is not allowable as not disclosed in the specification as filed. In summary they argue:
·     That there is no written description of an embodiment whereby the projecting portion is encased for anything but its full length. They argue that the specification as filed never informs the person skilled in the art of partial lengthwise encasement.
·     The introduction of the idea of substantial encasement introduces a very large number of potential variations, this being virtually endless, emphasising the dramatic broadening effect on the claims.
·     Fig. 4C of the specification as filed, while disclosing slots extending along the axis of the encasement, still only discloses encasement of the projecting portion along its full length. They suggest it remains that that there is no disclosure of substantial encasement.
·     The original specification discloses encasement of the entire length, or no encasement at all. The opponent argues that it follows that substantial encasement (for example 90% of the length) represents an intermediate generalisation between the two disclosed embodiments.
·     “Substantially” only has meaning when used in relation to some claimed functional limitation. They argue that there is no functional aspect present that can be used to give meaning to the imprecise term. However, it is not clear to me how this argument goes to the question relevant to subsection 102(1), and instead appears to go more to a question of clarity of claims. I address the construction of the relevant claims below.
The patentee addresses the opponent’s arguments as exemplified by the following:
·     Fig. 4C of the specification discloses partial encasement by way of the axial slots, and regardless, the scope of the word “substantial” includes the concept of “complete’ encasement.
·     The relevant test does not ask as to whether there are a large number of variations within a broadly defined feature. Instead, the patentee argues that there only needs to be a general disclosure of the relevant feature, there also being no inconsistency, and there being no key characteristics of the invention that are not present in the claimed invention, consistent with the Mond Nickel approach[14].
·     There is no issue of an “intermediate generalisation” manifesting in the present claims citing disclosure of “complete encasement” as a species or instantiation of “substantial encasement”.
[14] Re Mond Nickel Co Ltd’s Application for a Patent (1956) RPC 189 at 194, “Mond Nickel”
In brief, the patentee’s position regarding the proper construction of the features in question is best summarised in their words as follows:
“We reiterate that ‘substantially’ means ‘to a great extent’, embracing (while not being restricted to) ‘entirely’, so that the description and illustrations [in] the original specification [amount] to a real and reasonable disclosure of the casing substantially encasing the projecting portion; ‘complete encasement’ is a species of ‘substantial encasement’.”

I will first construe the relevant terms myself before considering the case as to non-allowability of the amendment. It appears that the construction of the claims in the present matter is highly relevant to the grounds of examination that have been alive during re-examination to date.
CONSIDERATION
Claim Construction
First and foremost, it is important to have a clear understanding of the scope of the features of the claims as proposed to be amended, thus allowing adequate comparison to the specification as filed. The patentee proffers meaning to the term “substantially” in as much as pointing out that the word means “to a great extent” including the concept of “entirety”. This is consistent with the plain meaning of the word which is relevantly as follows[15]:
1.  of a corporeal or material nature; real or actual.
2.  of ample or considerable amount, quantity, size, etc.: a substantial sum of money…
[15] The Macquarie Dictionary, 8^th ed. 2022, >
I have no doubt that the meaning of the word refers to not only a considerable portion of whatever concept it is qualifying, but also the totality of whatever concept it is qualifying, being in this case “encasement”. The concept of “encasement” has the following plain meaning defined with reference to the word “enclose” also found in the Macquarie Dictionary:
…to enclose in or as in a case.
Enclose…
1. to shut in; close in on all sides.
2.  to surround as with a fence or wall: to enclose land...
I see both of these words including within their scope the concepts of completeness and partialness (i.e. there may be gaps like a fence). It is thus clear that the claimed term “substantially encased” has an upper bound of complete encasement, however it is reasonable to see prima facie difficultly in defining a precise lower bound for the claimed term. I consider it useful to look to complete the picture of claim construction by considering this lower bound.
The word “substantially” is frequently used in claims and is permissible from the point of view of the clarity of claims, provided it conveys the necessary meaning[16]. The word indicates that the term it qualifies should not be read literally being consistent with the concept that imprecise terms are permissible in a claim as long as it is possible to ascertain whether an act or article would fall within the scope of the claim. As explained in the text by Blanco White[17], Fifth Edition, at 2-112:
"If draftsmen and judges were perfect 'substantially' would have no effect; as it is, the indication is often a useful one. But the word can only mean 'nearly enough for the patentee's purposes', unhelpfully unless the body of the specification tells the reader what those purposes are and what sort of precision is needed to achieve them."
[16] Leonardis v Sartas [1996] 449 FCA 1
[17] Patents for inventions and the protection of industrial designs, T. A. Blanco White, Fifth Edition at 2-112
Sufficiently precise effect can be given to the word “substantially” by purposively considering an invention. The invention described and claimed involves the application of a casing over a projecting portion prior to insertion into a cavity, following which upon insertion of the cavity the casing is deformable against a wall of a cavity in the ground so that the indicator is retained with sufficient operational strength. However, the operations involving deformation of the casing and application of a retention force on the projecting portion of an indicator occur upon insertion into the cavity. I can see nothing in the body of the specification to guide me as to the functional purpose of the “substantial encasement” of the projecting portion by the casing prior to insertion. All the body of the specification indicates is that a casing can be applied to projecting portion prior to insertion, and that embodiment of this encasing is complete along the length of the projecting portion. As such, I find it difficult to assign a workable lower bound to the idea of “substantial encasement” prior to insertion, in particular regarding the degree of lengthwise encasement.
I note my considerations above are consistent with the thrust of submissions of the opponent which at times appear to go to the clarity of the claims as proposed to be amended. While objection to a lack of clarity arising in the claims due to the amendment was raised by the opponent but dismissed by a delegate of the Commissioner of Patents, I hold reservations as to the scope of the claims as they stand to be amended. For present purposes I will view the phrase “substantially encased” as including within its scope both complete and partial encasement, being inclusive of the idea of partial lengthwise encasement (for example 50% lengthwise encasement).
At this point I refer to the most recent re-examination report dated 20 November 2020. In that report the examiner appears to conclude that the claims as proposed to be amended (in accordance with the amendments before me for consideration) are novel and inventive in the light of a construction of the relevant features which is as follows (his emphasis):
“I agree with the attorney that the TGSI in the Installation guide is not closely received and fitted, in its entirety, into the casing prior to installation into the ground. Rather, the casing upper end is received over the stem lower end, as shown in the 2nd photo on page 9 of the installation guide, prior to installation into the ground (i.e. the casing forms a preliminary interconnection with the stem). Furthermore, the casing must first be externally supported in the cavity, during installation, to receive the stem fully therein. The stem is only fully received into the casing once installation is complete.”
This construction on its face appears somewhat inconsistent with my construction above. Accordingly, notwithstanding the advice of 20 November 2020 that re-examination will be complete once the present amendments are allowed, I will refer the case back to an examiner for the novelty and inventive step findings to be revisited and re-examination recommenced if necessary. To be more specific, it appears that the examiner has considered “substantially encased” to refer in essence, to entire encasement of the length of a projecting portion, thus distinguishing from the prior art.
No description of anything but encasement of full length prior to insertion, in particular FIG 4C of specification as filed.
There are two main elements to the opponent’s case under this heading which are well represented by the following submissions of the opponent:
“The drawings illustrate a TGSI having the retaining portion encasing the entire length of the stem (FIGs. 1A, 1C, 1D, 3A, 3C, 4A, 4B and 4C). The drawings further illustrate a stem that has no encasement whatsoever (FIGs. 2A, 2C and 2D) to show more clearly the structure of the stem. The drawings fail to show any TGSI having a stem with a retaining portion that extends only a partial length of the stem.
There is no written description of an embodiment whereby the stem is encased for anything less than its full length. Moreover, the written description is devoid of any language that would lead a reader to consider that encasement of the full length of the stem is optional, and that encasement of a portion of the length is contemplated. Words such as, ‘preferably’, ‘may’, and ‘alternatively’ are used throughout the description to indicate the optional nature of some features, but never in relation to the length of the stem that is encased. The reader is therefore never informed as to the possibility that any intermediate length of stem may be encased.”
and
“As to fair basis for the feature of ‘substantially encased’, the best the patentee can do is to point to the embodiment of FIG. 4C which illustrates a retaining portion that extends the full length of the stem, and having axially extending slots (73). In fact, FIG. 4C provides only a real and reasonably clear disclosure of a retaining portion having axially extending slots. A reader may reasonably expand that reading to contemplate that a different number of slots might be used, or possibly even that the slots need not be strictly axially aligned. However – no broader construction of the specification is warranted to extend to the very many possibly ways that a stem may be ‘substantially’ encased.
It is important to note that the embodiment of FIG. 4C is consistent with other embodiments showing encasement of the stem: each and every embodiment demonstrate encasement for the full length of the stem. Thus, FIG. 4C reinforces the global teaching of the description and drawings that no matter how the retaining portion is configured it must nevertheless extend the full length of the stem.
It may be acceptable to use the word ‘substantially’ to qualify the requirement that the slots of FIG. 4C extend axially (i.e. substantially axially) to account for some departure from a strict axial alignment. However, use of the word ‘substantially’ to further broaden the already broad notion of encasement is impermissible. It is worth emphasising at this point that the word ‘encasement’ does not even appear in the original description.”
As per my approach above, I have considered “substantial encasement” prior to insertion to include complete and partial encasement, and in particular to include both 100% lengthwise encasement along with partial encasement of less than 100%. I accept for example, that it is reasonable to suggest that such partial encasement includes lengthwise encasement to a reasonably considerable amount, say for example 50%. With this understanding of the claimed invention, I must turn to the specification as filed to assess for consistency between the invention described in that specification, and the claim as proposed to be amended.
Firstly, it is clearly the case that the specific described embodiments in the specification as filed are limited to a casing portion that extends the entire length of the projecting portion in operation. The described embodiments show separate casing and projecting portion, and combined casing and projecting portion involving complete lengthwise encasement, prepared prior to insertion into a cavity, or by first inserting the casing into the ground and then inserting the projecting portion. While these embodiments are described as non-limiting examples, the figures and description thereof contain no mention of partial lengthwise encasement, and for that matter, no mention of the words “substantially encased”, or such a general concept. The remainder of the relevant content regarding the disclosure of the specification as filed includes relevant claims matching associated consistory clauses. I refer to the following relevant consistory clauses[18]:
[18] Specification as filed at page 1 line 29 – page 2 line 1, and page 3 lines 25 – 32.
According to a first aspect of the present invention, there is provided a tactile ground surface indicator, comprising:
a body, made of metal and comprising an indicator portion configured to be positioned above a ground surface; and
a retaining portion, configured for retaining engagement with the body and being receivable in a cavity provided in the ground, the retaining portion being adapted to deform against a wall of the cavity to retain the tactile ground surface indicator in the ground.
According to a third aspect of the present invention, there is provided a method of
manufacturing a tactile ground surface indicator, the method comprising:
forming a body from metal, the body having an indicator portion configured to be positioned above a ground surface; and
overmoulding a retaining portion on the body such that the retaining portion is locked to the body, the retaining portion being made from a deformable material and being configured to deform against a wall of the cavity when the tactile ground surface indicator is driven into the cavity to retain the tactile ground surface indicator in the ground.
The first consistory clause above makes no reference to encasement prior to insertion. The second consistory clause above directs the addressee to apply an over moulded retaining portion (which could be reasonably viewed as a casing) to the body of an indicator seemingly before insertion into a cavity, again not touching upon any aspects of degree of encasement of a projecting portion prior to insertion into a cavity. Thus, I do not consider that these consistory clauses add anything to the reading of the specification as filed as a whole in the context of the present amendment, that is above and beyond that discussed with respect to the described embodiments.
I will now turn to the patentee’s argument regarding disclosure of complete encasement and disclosure of partial encasement by way of Figs 4A – 4C. This embodiment shows a TGSI that is mated with a casing that has axially extending slots 73. These axially extending slots serve to facilitate radial displacement outwards of ridges 13" so as to ensure casing engagement and deformation with the wall of the cavity for the purpose of indicator retention. The slots constitute an open “passageway” from the “outside world” through the casing and to the projecting portion. In this embodiment the projecting portion is thus not “completely encased” or in other words, is not enclosed fully by walls on all sides by a case. The patentee’s argument boils down to the following, which involves reference to the application of the Mond Nickel requirements for broad/general disclosure of the claimed feature and the need for consistency between the claims in question and relevant disclosure (their emphasis in italic):
“The invention of each of claims 1 and 23 is broadly (i.e. in a general sense) described in the A1 specification… The Patentee’s ability to refer in the claims to an encasement which is substantial, just as it is not contingent on there being a disclosure of less-than-entire encasement of the projecting portion per se, is not contingent on there being a disclosure of less-than-entire encasement of the projecting portion lengthways; it is contingent on the disclosure of the projecting portion being encased to a large extent, as is consistent with each and every embodiment described and illustrated in the specification.”
and
“Notwithstanding that both of disclosures [referring to complete encasement and being mostly encased by the casing] are present in the original description, the complete encasement in either of the indicators 1 and 1’ is an instantiation of ‘substantial encasement’, so that the description and drawings of each of those indicators along amount to a real and…clear disclosure of substantial encasement of the projecting portion by the casing. The patentee does not seek to incorporate into the claims a specific limitation of which there is no disclosure.”
I agree that Figs 4A – 4C disclose a specific form or type of partial encasement being full lengthwise encasement, where there are slots in the areas away from the ends of the casing. Importantly, this particular embodiment is one in which encasement occurs after insertion of the projecting portion into the ground. It is possible to suggest that a person skilled in the art may apply the teaching of the specification as filed and apply the encasing of Figs 4A – 4C prior to insertion, However it remains that the question before me appears articulable, consistently with how the patentee has done so above, as whether the description of complete encasement along with the partial encasement of Fig. 4C amounts to a general disclosure of substantial encasement prior to insertion (substantial encasement clearly including with its scope encasement along the whole length and also encasement along part of the length of the projecting portion). To address this issue, it is useful for me to turn to examples in the case law of situations where fair basis has been considered comparing claims to a specification, and also where the concept of in-substance disclosure in the context of s102(1) has been addressed.
For there to be a real and reasonably clear disclosure I must look for a disclosure whereby the invention as claimed is broadly, “that is to say in a general sense”, described in the specification as filed[19]. I am mindful that an over-meticulous verbal analysis will not appropriately answer the questions at hand. I am also mindful that where a specification as filed includes a term which is very broad and not exemplified, that term may be regarded as disclosing “in-substance” the meaning that the skilled addressee would have understood at the priority date, based on the common general knowledge in the art[20]. For example, the term “mechanical fastening means” would in substance disclose nuts and bolts or rivets if these were known in the art at the priority date.
[19] Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents(1958) 100 CLR 5
[20] Herchel Smith's Applications (1968) AOJP 774
The following examples are presented in the Patent Examiner’s Manual[21] as involving nuanced consideration of fair basis:
[21] Patent Examiner’s Manual of Practice and Procedure at v Schindler (1997) 39 IPR 29
The title of the specification is “Drainage Cell”. The specification describes a shortcoming in known methods of draining and describes a new device for use as a drainage cell. The Court held that the invention disclosed in the specification was a drainage method (or use of the drainage cell) and not the drainage cell per se, despite some conflicting statements to the contrary. Claims directed to the drainage cell per se were thus not fairly based.
This case illustrates the importance of construing the specification carefully. Even though the drainage cell per se was described in the specification, the emphasis of the description was to the use of the drainage cell for drainage. Consequently, there was only fair basis for the use of the drainage cell.
2. Lockwood v Doric (2004) 217 CLR 274
Latch assemblies commonly have features (i)-(v). The consistory statement refers to locks with the additional feature (vi) of an outside actuator that renders the locking means inactive. The Court held that the consistory clause was supported by those parts of the specification describing features that “generally” or “preferably” existed and which, while explaining the invention in detail by reference to the drawings, stressed that they are merely illustrative of how the invention might be put into effect and were not exhaustive. Hence claim 1 in similar terms to the consistory statement was fairly based.
It is important to note that the consistory statement on its own did not provide fair basis for the claim. However, as the consistory statement was supported by the rest of the description, there was fair basis in the specification as a whole.
3. PhotoCure v Queen’s University (2005) 64 IPR 314
The patent relates to treatment of skin disorders. The consistory statement refers to a wide range of skin disorders, but the examples are limited to 5 disorders and other uses are only “contemplated”. The Court held that the detailed explanation of the further uses indicated that the treatment was directed more broadly than the 5 examples, and provided fair basis for the wide range of disorders.
This case demonstrates the danger of focussing on one part of the specification alone (in this case the examples).
The examples show that the teaching of the specification as a whole is critical to the approach to fair basis, and that a relevant consistory statement can have an important role to play where its content is supported by the remainder of a specification. In the present case, the described embodiments contain specific teachings of full lengthwise encasement prior to insertion. They also envisage a single situation in which encasement is incomplete, but this is not in the context of application of a casing prior to insertion. There is no explicit mention of the concept of “substantial encapsulation” in the text of the specification as filed, and there is nothing in the figures of the specification as filed which I consider suggests to an addressee the idea of partial lengthwise encapsulation, which I consider within the bounds of the patentee’s meaning of the term “to a great extent”. The relevant consistory statements do not assist in the relevant description of the invention in this case.

Considering the above, I cannot see any general disclosure in the specification as filed of the feature of “substantially encased”. I cannot see any general technical terms in the specification that provide for a real and reasonably clear disclosure of incomplete encasement prior to insertion. That there are specific disclosures within the scope of the idea of “substantial encasement” provided in the specification as filed does not provide for a disclosure of that broad feature itself. On my reading of the specification as filed the invention provides a real and reasonably clear disclosure of the complete lengthwise encasement of the projecting portion by a casing prior to insertion, and in the context of applying a casing prior to insertion, nothing more. Notably, the specification further reinforces the notion of essentiality of full lengthwise encasement where it discusses the benefits of abutment of the underside of the indicator portion with the upper end of a retaining portion, and wherein the underside of the indicator portion defines the extent of a mould used to cast a casing as per the following paragraphs of the specification as filed.
The downwardly facing surface on the retaining portion 9 abuts the upwardly facing surface on the stem 7 to restrain the body 3 from upward movement relative to the retaining portion 9. Similarly, abutment of the downwardly facing surface of the stem 7 with the upwardly facing surface of the retaining portion 9 prevents downward movement of the body 3 with respect to the retaining portion, as does abutment of the upper end of the retaining portion 9 with the underside of the indicator portion 5. Relative movement between the retaining portion 9 and body 3 is thus prevented. [22]
With the body portion 3 arranged upside down, the stem 7 is then centrally positioned in a mould which defines the external configuration of the retaining portion 9/9', the flat underside of the indicator portion 5 abutting a lower end of the mould to close that lower end. Molten plastic is then injected into the space between the mould and the stem, through a suitable opening provided in the mould. The plastic is then allowed to cool and set, whereupon the finished indicator l/1' is removed from the mould. [23]
[22] Specification as filed at page 7 lines 1 – 7
[23] Specification as filed at page 11 lines 21 – 26
There is no real and reasonably clear disclosure of anything but complete lengthwise encasement of the projecting portion by the casing prior to insertion into a cavity, and it logically follows that failure of the specification as filed to use the language of “substantial encasement” in the presence of the limited embodiments means that the claims as proposed to be amended are not, in substance, disclosed in the specification as filed. Following this, to the extent the word “substantially” may appropriately apply, it might be to provide for reasonable manufacturing tolerances to the idea of complete lengthwise encasement (i.e “substantially complete lengthwise encasement”).
Large number of potential variations
The opponent argues:
“Proposed independent claims 1 and 23 explicitly require that the stem of the TGSI (termed ‘projecting portion’ in the claims) is ‘substantially’ encased by the retaining portion. The term ‘substantially’ introduces a very large number of potential variations from the embodiments described in the specification.
For example, the retaining portion may be an annular ring sitting at the top, mid-section or bottom of the stem. As another example, the retaining portion may be a simple square of deformable material that sits on part of the stem surface. Yet another example may be a netting material being disposed about the stem. Another possibility is that a small thimble-like cap placed over the end of the stem functions as the retaining portion. As will be readily appreciated the further possibilities are virtually endless.
It is emphasised that the term ‘substantially’ has a dramatic broadening effect on the claims. That broadening effect has no fetter in the wording of the proposed claims.”
This argument does not add to that already addressed. Whether the amendment broadens the claims is not precisely to the question at hand, and clearly it is the case that this amendment narrows the scope of the claims. Ultimately the same considerations as above apply, and the feature of the amended claims simply represents a broad concept that itself is not in substance disclosed in the specification as filed.
Intermediate generalisation
The opponent argues:
“The original specification provides disclosure of:
(i)embodiments where the stem is encased for its entire length (for example FIG. 1C, and FIG. 4C), and
(ii)an embodiment where the stem is not encased at all (for example FIG. 2C).
However, there is no disclosure whatsoever of an embodiment that represents an intermediate position between (i) and (ii) whereby the stem is encased for, say, 90% of its length. Such an embodiment represents an impermissible intermediate generalization between embodiments (i) and (ii).
Introduction of the term ‘substantially’ by way of the patentee’s amendment introduces an intermediate generalization that was not present before the amendment. The specification is completely silent as to any embodiment being intermediate to those described at (i) and (ii) above.”
The patentee’s approach to this argument is to point out that prior to Raising the Bar, the relevant law included the concept of an intermediate generalisation. I note that Patent Examiner’s Manual[24] outlines this concept:
In certain circumstances, an amendment of a claim to an "intermediate generalisation" that falls between a general disclosure, and the specific examples described, is allowable. Thus in Matbro Ltd. v Michigan (G.B.) Ltd. (1973) RPC 823, original claim 1 covered shovel loaders in which the steering axis was situated at any point, whether between or outside the front and rear axles. Claim 2 defined a steering axis that was substantially midway between the axles. Amended claim 1 limited the axis to any point between the axles. It was held that the specification as a whole, including original claim 1, in substance disclosed the use of a steering axis which could be situated at any point between the axles and not merely midway as in original claim 2. The amendment was accordingly not an impermissible intermediate generalisation (see also Screen Printing Machinery Ltd's Application (1974) RPC 628).
[24] Patent Examiner’s Manual of Practice and Procedure, >
I again consider the point is already answered by the analysis above. To the extent that the invention in the Matbro Ltd matter constituted an allowable amendment, the opponent pointed to the following observation in that decision where the specification’s disclosure was considered broadly and carefully by Graham J[25]:
“… the writer uses the words ‘in an intermediate section between the two axles’. It is to be noted that the word is ‘section’ and not ‘position’ and this seems to me to be quite appropriate to describe having the axis at positions between the axles which are not necessarily substantially at the midway point.”
[25] Matbro Ltd. v Michigan (G.B.) Ltd. (1973) RPC 823 at page 832, “Matbro Ltd”
There is simply no additional disclosure in the specification as filed to assist the patentee in the manner of the relevant disclosure in the Matbro Ltd matter. The question as to whether the amened feature is disclosed in-substance in the specification as filed is answered as I have discussed above. I find the feature relating to the substantial encasement of the projecting portion by a casing prior to insertion not disclosed in substance in the specification as filed.
“As a result of the amendment”
Under sec 102(1), the clause “as a result of the amendment” prescribes that a proposed amendment is not allowable where that amendment results in a claim to matter not in substance disclosed in the specification as filed. In accordance with this requirement, it is the case that an amendment that does not claim new matter is therefore allowable under this provision.
Prior to amendment the relevant feature was directed to the application of a casing to the projecting portion prior to the receipt of the projecting portion in a cavity. The claim prior to amendment is inclusive of any manner or degree of applying a casing to a projecting portion prior to insertion of the projecting portion into the cavity. In other words, prior to amendment, applying a casing to a projecting portion prior to insertion by either substantially or not substantially encasing the projecting portion are present, and the amendment merely serves to narrow the claim to be limited to substantial encasement.
With this in mind I consider that prior to amendment, the claim already claims matter not in-substance disclosed in the specification as filed for reasons already provided above. The specification as filed does not appear to me to provide a real and reasonably clear disclosure of anything but full lengthwise application of a casing to a projecting portion prior to insertion. As such, the relevant issue does not arise as a result of the amendment.
It follows that I must consider the amendment allowable.
Importantly, my finding points to the likelihood that a fair basis issue has remained present in the application and patent throughout prosecution. In accordance with my considerations earlier as to the potential breadth of claim scope, I will refer the patent to an examiner for further consideration to be given to the grounds of re-examination, including the grounds of novelty, inventive step and fair basis.
CONCLUSION
The amendment does not result in a claim directed to matter not in-substance disclosed in the specification as filed. The issue as to failure to be in-substance disclosed was already present in the claims prior to amendment. Reconsideration should be given to claim construction and other substantive grounds in re-examination.
I allow the amendment.
COSTS
The opposition to the s104 amendments is unsuccessful. The present circumstances are somewhat unusual involving protracted re-examination proceedings and dismissal actions regarding the opposition to the present amendments. While I consider in the present circumstances that I must allow the amendment, there appears to remain significant issues regarding the claims. In this light I make no award of costs.
Dr N. R. Madsen
Deputy Commissioner of Patents