Enduroco Pty Ltd v Bus IP Holdings Pty Ltd - [2025] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2025] APO 29
Patent Application: 2018231941

Title:Modification of a two-wheel drive vehicle for improved ground clearance and/or traction

Patent Applicant: Bus IP Holdings Pty Ltd

Opponent:Enduroco Pty Ltd

Delegate:Greg Powell

Decision Date: 10 September 2025

Hearing Date: Written submissions filed on 11 June 2025

Catchwords: PATENTS – section 59 – final determination – the amendment has not overcome the ground of opposition of lack of support – no possible amendment could overcome the ground – application refused – no award of costs

Representation: Patent attorney for the applicant: Andy Mukherji and Paul Jones of MBIP
Patent attorney for the opponent: Davies Collison Cave Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018231941

Title:Modification of a two-wheel drive vehicle for improved ground clearance and/or traction

Patent Applicant: Bus IP Holdings Pty Ltd
Date of Decision: 10 September 2025
DECISION

The amendments do not overcome the deficiency identified in Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2022] APO 74. The amended claims lack support. This deficiency cannot be overcome by amendment.
I refuse the application.
I make no award of costs.
REASONS FOR DECISION

Background

Patent application 2018231941 in the name of Bus IP Holdings Pty Ltd (the applicant) was advertised as accepted on 10 October 2019. Enduroco Pty Ltd (the opponent) opposed the grant of the patent. The matter was heard on 29 July 2022. On 9 September 2022, I exercised my power under subsection 60(3) of the Patents Act 1990 (the Act) to take into account grounds of opposition not relied upon by the opponent in their statement of grounds and particulars. I invited the parties to provide comments in regard to non-compliance with section 40. I noted that, in my opinion, the claims lacked support for multiple reasons. Further submissions were filed on 19 September 2022, 30 September 2022, and 13 October 2022. On 23 November 2022 my decision issued finding that the opposition succeeded since the claims lacked support because:
(i)there was no disclosure of a sub-frame for mounting and supporting the independent suspension assembly and/or the front axle assembly; and
(ii)some claims omitted the feature of a transfer case.
That decision was Enduroco Pty Ltd v Bus IP Holdings Pty Ltd[1] (the s59 decision).
[1] [2022] APO 74
In the s59 decision I stated:
“While not certain, it is possible that there is subject matter disclosed in the specification which could be used as the basis to amend the claims to overcome my findings”,[2]
and the applicant was allowed a period of time in which to propose amendments to the claims. The applicant availed themselves of this opportunity, but it proved difficult to arrive at an amended specification that was allowable under s102 of the Act. Statements of proposed amendments were filed on 23 January 2023, 12 July 2023 and 12 September 2023 seeking to achieve allowability. I also observe that, during this process, the examiner issued 3 reports disputing allowability of the amendment, and the opponent provided 4 lots of observations as to why, in their opinion, the amendments were not allowable and/or did not overcome the findings of the s59 decision.
[2] s59 decision at [204]
Notwithstanding the opponent’s observations, leave to amend was granted on 1 November 2023 and the amendment was advertised on 16 November 2023. The opponent then opposed the allowance of the amendment. On 10 February 2025 the Deputy Commissioner issued Enduroco Pty Ltd v Bus IP Holdings Pty Ltd[3] (the s104 decision) allowing the amendment. The Deputy Commissioner then referred the matter to me to consider final determination of this matter. This decision relates to the specification as amended.
[3] [2025] APO 3
The law
It is well established that a decision of a delegate in opposition proceedings is final and determines all the issues arising on the notice of opposition so far as they are capable of determination at the time. The Deputy Commissioner in Novozymes A/S v DSM IP Assets B.V.[4] considered the law on final determinations, and concluded that:
“... I cannot revisit any findings that were part of the original decision, but issues that were not considered in the original decision can be decided (for the first time) in a final determination. However, the decision in the final determination should be consistent with any relevant findings in the original decision.”[5]
[4] [2018] APO 2 (Novozymes)
[5] Novozymes at [21]
In a final determination of an opposition the only issues to be considered are whether the amendments overcome the deficiencies identified in the earlier decisions, and whether the amendments introduce any new deficiencies.
The amendment
Claim 1 that was before me for the s59 decision was as follows:
A conversion system for modifying a two-wheel drive vehicle, the vehicle having at least two spaced apart rear wheels driven by a rear axle assembly coupled to a transmission output of the vehicle and two front wheels, each front wheel supported by a steerable independent suspension assembly, said front wheels not being coupled to the transmission output of the vehicle, the system comprising:
a front axle assembly comprising spaced apart stub axle assemblies for supporting each of the front wheels of the vehicle wherein each stub axle assembly is adapted to be coupled to the steerable independent suspension assembly for supporting a corresponding front wheel of the vehicle;
a front differential assembly to be coupled to the spaced apart stub axle assemblies adapted for driving said front wheels; and
a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly.
The s104 decision allowed the amendments, resulting in the following version of claim 1 (added features underlined):
A conversion system for modifying a two-wheel drive vehicle, the vehicle having: at least two spaced apart rear wheels driven by a rear axle assembly coupled to a transmission output of the vehicle and two front wheels, each front wheel supported by a steerable independent suspension assembly, said front wheels not being coupled to the transmission output of the vehicle,
wherein each of the steerable independent suspension assembly comprises a pair of upper arms, each upper arm having a first end and a second end, wherein the second end of the upper arm is pivotally mounted with respect to the chassis; and
wherein the steerable independent suspension assembly further comprises a pair of lower arms, each lower arm having a first end and a second end;
the system comprising:
a front axle assembly comprising spaced apart stub axle assemblies for supporting each of the front wheels of the vehicle wherein each stub axle assembly is adapted to be coupled to the steerable independent suspension assembly through the upper and lower arms for supporting a corresponding front wheel of the vehicle;
a front differential assembly to be coupled to the spaced apart stub axle assemblies adapted for driving said front wheels; and
a transfer case assembly coupled to the front axle assembly and the rear axle assembly for simultaneously transferring torque from the transmission output to the front and rear wheels respectively;
wherein a first end of the upper arm is coupled to an upper portion of the stub axle assembly;
a mounting arrangement such that a lower portion of the mounting arrangement is coupled to the first end of each lower arm;
a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly wherein the sub-frame is adapted to be coupled to the second end of the lower arm.
Submissions sought
Upon receiving the matter back from the Deputy Commissioner, I wrote to both parties on 15 May 2025. I stated that, in the s59 decision, I had concluded that the claims before me, which defined that the sub-frame was for mounting and supporting the independent suspension assembly and the front axle assembly:
“require(d) that the sub-frame is configured to mount and support both the independent suspension assembly and the front axle assembly, where the front axle assembly comprises the spaced apart stub axle assemblies. That is, the sub-frame is suitable to have both the independent suspension assembly and the front axle assembly each be mounted to, and supported by, the sub-frame.”[6]
[6] s59 decision at [173]
I further noted that in the s59 decision I had stated that:
“the description does not anywhere describe that the stub axle assemblies, or any other part of the front axle assembly, are mounted directly to the sub-frame”,[7]
and that I had then concluded in the s59 decision that:
“Claims 1 and 16 as drafted are limited to (among other limitations) a sub-frame for mounting and supporting the front axle assembly and the compete [independent front suspension] IFS. Consequently, claims 1–17 and 20, and claims 18 and 19 insofar as they relate to the independent suspension assembly, lack support. They are inconsistent with the invention disclosed.”[8]
[7] Ibid at [174]
[8] Ibid at [179]
I noted that amended claim 1 now stated that the sub-frame is:
“for mounting and supporting the independent suspension assembly and the front axle assembly wherein the sub-frame is adapted to be coupled to the second end of the lower arm”.
Kit claim 13 and method claim 14 include essentially the same requirement.
I observed that, while the sub-frame had been limited to requiring an adaptation to allow it to be attached to the second end of the lower arm, this simply provided a limitation to the form of the sub-frame. The limitation had not altered my finding in the s59 decision that the sub-frame had both the independent suspension assembly and the front axle assembly directly mounted to, and supported by, it. I noted that, in the s104 decision, the Deputy Commissioner had stated:
“In the present matter I accept the construction arrived at by the delegate in the s59 decision. Claim 1 is clear prior to amendment and is limited to (among other limitations) a sub-frame for mounting and supporting the front axle assembly and the compete IFS. In other words, it is limited to direct mounting and support. After amendment the relevant feature remains in the claim being a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly. The claim is further limited by amendment to include the feature wherein the sub-frame is also adapted to be coupled to the second end of the lower arm. I do not see this additional feature as modifying the scope of the term present in the original claim.
Therefore, I do not consider the amendment falls outside the scope of the claims before amendment regarding mounting and supporting to the sub-frame.”[9] (my emphasis)
[9] s104 decision at [53]–[54]
I concluded that, in my opinion, the claims remained deficient after amendment. They lacked support. I referred to this paragraph of the s59 decision:
“Both parties agreed that direct mounting/attachment of the front axle assembly to the sub-frame would render the suspension inoperable. The applicant argued that, since such a result is a foolish result, the claim should be construed differently, and advances the correct construction as facilitating the means for the components to be mounted and supported. However, I do not understand how it can be said that a sub-frame suitable for mounting the front axle assembly does not require some means of mounting the sub-frame to the front axle. A purposive construction cannot resolve an inherently inconsistent claim. Claims 1 and 16 as drafted are limited to (among other limitations) a sub-frame for mounting and supporting the front axle assembly and the compete IFS. Consequently, claims 1–17 and 20, and claims 18 and 19 insofar as they relate to the independent suspension assembly, lack support. They are inconsistent with the invention disclosed.”[10]
[10] s59 decision at [179]
I then stated that, in my opinion, this deficiency could not be overcome by amendment. I observed that, prior to amendment, the claims required both the suspension and the front axle assembly to be directly mounted to the sub-frame. This was inconsistent with the description. However, to remove the inconsistency, the claims – after amendment – would need to define something other than the direct mounting of both the suspension and the front axle assembly to the sub-frame. This could only be achieved by removing the feature of direct mounting. However, such an amendment would result in the amended claims falling outside the scope of the claims before amendment.
I stated that I intended to refuse the application and sought submissions from the parties.
Submissions
Only the applicant provided submissions on 11 June 2025. They maintained that the lack of support could be overcome by an amendment. To this end, they proposed amending claim 1 (and, in a similar manner, claims 13 and 14) as follows (proposed addition is underlined):
“A conversion system for modifying a two-wheel drive vehicle, the vehicle having:
…
a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and indirectly the front axle assembly wherein the sub-frame is adapted to be coupled to the second end of the lower arm.”
The applicant made submissions on two alternate points:
(i)the proposed amendment narrowed mounting to indirect only; and
(ii)the proposed amendment would correct an obvious mistake.
Indirect mounting
The applicant submitted that, as a matter of plain English, the subframe supported the front axle assembly either directly or indirectly. No other arrangement was possible. The applicant stated that, as “direct” was not present in the claims, the manner of support was unqualified. While I had found that direct mounting was not described, the applicant submitted that the proposed amendment removed this option, narrowing the claim and avoiding the lack of support.
The applicant submitted that:
“[c]ommon sense dictates that, when read as a whole, the specification requires that the sub-frame indirectly supports the front axle assembly. That is direct support of the front axle assembly is nonsensical and inoperable. The purpose of the proposed amendment is to restrict the language of the claim such that it excludes the nonsensical construction.”
The applicant then stated:
“Accordingly, we request the Delegate to favourably reconsider his position.”
Obvious mistake
In the alternative, the applicant submitted that the proposed amendment constituted the correction of an obvious mistake because it would be apparent to the person skilled the art that the unqualified language in the claims was obviously a mistake. The applicant referred to the following evidence given by Edbert Ta for the opposition to the amendments:
“In this regard, the function of the sub-frame 300 can be understood by visualising a scenario where the sub-frame 300 was not included in the conversion system 300 [sic – 100]. If we look at Figure 6 of the ‘941 Application, the first end of the lower control arm 164 is coupled to the mounting bracket 167 and the second end of the control arm 164 is coupled to the sub-frame 300. If the sub-frame 300 was removed, the lower control arm 164, particularly the second end of the lower control arm 164 would be unsupported and simply hang in the air. Therefore, the conversion system of the '941 Application provides for mounting and supporting of the OEM IFS and in particular the OEM lower control arm 164 of the OEM IFS 160. If subframe 300 were to be removed, lower control arm has no pivot point.
…
The stub axles 150 (which are also a part of the front axle assembly 140) are also supported by the subframe 300. Paragraph [061] states: ‘The independent front suspension assembly 160 is coupled to the stub axle assemblies 150 provided at either end of the front axle assembly 140. The stub axle assembly 150 engages the independent suspension assembly 160 through the upper ‘A’ shaped upper control arms 162 and lower control arms 164.’
Consequently, the stub axle assemblies 150 are mounted to, and supported, by the ends of the upper and lower control arms 162 and 164 of the independent suspension assembly 160. Since the lower control arms are mounted to the sub-frame 300, it follows that the stub axle assemblies 150 are supported by the sub-frame 300 via the mounting of the lower control arms 164.
…
Indirect mounting and supporting of the stub axles 150 on the sub-frame 300 is achieved via the lower control arms 164.”[11]
[11] Section 11.3 of declaration by Edbert Ta dated 16 July 2024 filed for the s104 opposition
The applicant submitted:
“It is readily apparent to the skilled addressee, as exemplified by Mister Ed Ta, who submitted a Declaration on behalf of the applicant, that the unqualified language in the claims: ‘…a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly…’ is obviously a mistake as it leads to an absurd result where the front axle assembly is left swinging in the breeze.”
The applicant also pointed to ToolGen Incorporated v Fisher (No 3)[12], in which Nicholas J quoted with approval the following from Holtite Ltd v Jost (Great Britain) Ltd[13]:
“In the context of correcting it, the natural meaning of the expression ‘obvious mistake’ is that: what must be obvious is not simply that there has been some mistake but also what the mistake is and what is the correction needed. But the correction needed does not fail to be obvious merely because, as a matter of drafting, there is more than one way of expressing it without affecting its meaning. Furthermore, having regard to the function of the specification as a warning to the public of the limits of the monopoly claimed, the mistake must be apparent on the face of the specification itself to an instructed reader versed in the particular art to which the invention relates.”[14]
[12] [2024] FCA 539 (ToolGen)
[13] [1979] RPC 81 (Holtite)
[14] ToolGen at [20]
The applicant submitted that the claim covering the direct mounting of the front axle assembly to the sub-frame, which was plainly inoperable, was the mistake that was obvious to the person skilled in the art. In relation to the correction being readily apparent to anyone, more particularly the person skilled in the art, the applicant submitted:
“In relation to the correction needed, there are only two ways one apparatus can be mounted and supported on another. That is the consequence of both logic and the plain meaning of the words of the claims, as well as the language of the specification as a whole. That is one apparatus must be mounted either directly or indirectly on the other. As mounting the first apparatus (the front axle) directly on the second apparatus (the sub-frame) renders the system inoperable, the correction necessary immediately presents itself: the mounting is indirect.”
Consideration
Indirect mounting
In their submissions I believe that the applicant has misunderstood the nature of a final determination.
In a final determination, any findings made in the original decision cannot be revisited (see, for example, Novozymes – referring to R v Smith; Ex parte Mole Engineering Pty Ltd[15], Iluka Midwest Ltd v Technological Resources Pty Limited[16], Iluka Midwest Ltd v Technological Resources Pty Limited[17] and Merck Sharpe & Dohme (Australia) Pty Ltd v Genentech Inc[18]). My finding that the claims only encompass direct mounting and supporting stands, and the final determination proceeds in a manner consistent with this finding. That is, I cannot, as requested by the applicant, “reconsider my position”. My findings can only be overturned by appeal.
[15] [1981] HCA 25
[16] [2002] FCA 49
[17] [2002] FCA 1233
[18] [2016] FCA 324

In my s59 decision I found that the language of the claims limited the sub-frame to be configured for direct mounting and supporting of both the independent suspension assembly and the front axle assembly. That is, contrary to the applicant’s submissions, and notwithstanding the absence of “direct” in the claims, my finding was that the claims did not include both direct and indirect mounting within their scope. They only included direct mounting. The amendment proposed by the applicant proceeds on a mistaken assumption. Moreover, changing the mounting arrangement in the claims from the direct mounting arrangement that I found to exist to an arrangement which is not direct would clearly place the scope of the claims outside the scope that exists now. Such an amendment would not be allowable.
Obvious mistake
In relation to this ground, I do not consider that Mr Ta’s evidence, as highlighted by the applicant, supports the interpretation the applicant has attributed to it. In my view, Mr Ta’s evidence stands for the unremarkable proposition that, if the sub-frame was missing, the lower control arm would be unsupported. However, the claims do not contemplate a missing sub-frame and, as such, the front axle assembly is not “left swinging in the breeze”. Mr Ta states that the front axle assembly is indirectly supported by the sub-frame, as indicated in the final sentence of the quoted passage above. Be that as it may, this evidence does not reveal any error in the claims. Indeed, Mr Ta’s interpretation might even raise the question: “By what is the front axle assembly indirectly supported by the sub-frame?”. Regardless, the claims remain clear and bear the construction I adopted in the s 59 decision. To my mind the applicant’s argument seems somewhat academic. Moreover, the obvious correction proposed by the applicant finds no support in the evidence it relies on. I cannot identify the evidence that supports this conclusion.
Neither the nature of the alleged obvious mistake nor the proposed correction is, in my view, sufficiently clear or self-evident to meet the criteria set out in Holtite. I note that the paragraph in Holtite from which the applicant drew its quoted passage also includes the following:
“An amendment, if allowed, is retrospective to the date of filing the complete specification. So, with one exception, an amendment which enlarged the limits of the scope of the invention claimed would make actionable, ex post facto, what at the time when it was done the doer had no reason to suppose amounted to an infringement of the patentee’s rights. An amendment that would have this effect is what is forbidden by the section. The one exception is where the amendment is for the purpose of correcting an ‘obvious mistake’; but this exception is not in conflict with the policy disclosed by the remainder of the section, since if the mistake was obvious, it cannot have misled.” (my bolding)[19]
[19] ToolGen at [20]
Thus, an obvious mistake cannot mislead the reader, as the reader would recognise both the existence of the error and what was intended instead. I found the claims to be clear and to convey a definite meaning. The fact that this meaning differs from what is described in the remainder of the specification does not, in and of itself, indicate the presence of an error. It simply means the claims lack support. To suggest otherwise equates a lack of support with an obvious error.
Viewed from another perspective, this alternative submission by the applicant is essentially saying that no one reading the claims would conclude that direct mounting was intended, but would naturally arrive at the applicant’s interpretation. But I did conclude that direct mounting was intended. Indeed, I reached this conclusion having considered whether indirect mounting was being claimed[20]. This means that I did not recognise the existence of any error, or its correction; in the terms of Holtite, I was misled. Accordingly, even if there errors in the claim, those errors do not meet the criteria as set out in Holtite.
[20] s59 decision at [175], [178]
Outcome of consideration
Any amendment that would limit the claims to something other than direct mounting would necessarily fall outside the scope of the original claims and, therefore, be non-allowable. However, as established by the s59 decision, the claims’ lack of support could only be addressed by removing the requirement for direct mounting – an amendment that is impermissible under Australian patent law.
Moreover, the amendment to remove direct mounting could not be seen as correcting an obvious mistake. Whatever errors there may be in the claims, they are not “obvious” ones.
I therefore agree with the Deputy Commissioner’s observation at [99] of the s104 decision:
“I do not see how the applicant may amend the specification to overcome this finding of the delegate and comply with s102(2)(a)”.
I communicated these findings to the parties on 7 August 2025 and, once again, indicated that I intended to refuse the application. I invited the parties to request to be heard. The applicant responded to my letter on 22 August 2025 saying:
“We advise that the Applicant does not wish to be heard in relation thereto.
Accordingly, we request that you issue your decision in this matter.”
I received no response or request from the opponent.
Final determination
The amendments filed after the s59 decision have not removed the ground of lack of support. Moreover, there is no allowable amendment which could remove this ground.
In the circumstances, I will refuse the application.
Costs
No party made any submission as to costs. No evidence has been filed, and no hearing has been held. As such, there is no action which could attract an award of costs. Therefore, I make no award of costs.
Greg Powell
Delegate of the Commissioner of Patents