Enduroco Pty Ltd v Bus IP Holdings Pty Ltd
[2025] APO 3
•10 February 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2025] APO 3
Patent:2018231941
Title:Modification of a two-wheel drive vehicle for improved ground clearance and/or traction
Applicant:Bus IP Holdings Pty Ltd
Opponent:Enduroco Pty Ltd
Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date: 10 February 2025
Hearing Date: Written submissions completed 13 November 2024
Catchwords: PATENTS - opposition under section 104 after decision under section 59 – converting two-wheel drive to four-wheel drive – allowability under subsections 102(1), 102(2)(a) and 102(2)(b) considered – whether the amendments extend beyond the disclosure as filed – whether the amendments result in a claim that is not within the scope of the claims before amendment – whether as a result of the amendments, the invention is not clearly enough and completely enough described, and whether the claims are not clear and not supported – amendment allowable – costs awarded against opponent
Representation: Patent attorney for the applicant: Michael Buck IP
Patent attorney for the opponent: Davies Collison Cave Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2018231941
Title:Modification of a two-wheel drive vehicle for improved ground clearance and/or traction
Applicant:Bus IP Holdings Pty Ltd
Date of Decision: 10 February 2025
DECISION
The specification would not, as a result of the proposed amendments, claim subject matter that extends beyond the disclosure of the specification as filed. The amendment results in claims that would falls within the scope of the claims before amendment. The amendment does not result in a specification that fails to clearly and completely disclose the invention or lead to the claims lacking support or clarity.
I allow the amendment request of 12 September 2023 and award costs in accordance with Schedule 8 of the Patent Regulations against the opponent.
I refer the matter to the original delegate of decision Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2022] APO 74, to consider final determination of the matter.
REASONS FOR DECISION
BACKGROUND
Patent application AU 2018231941 in the name of Bus IP Holdings Pty Ltd (the applicant) was filed on 6 March 2018 claiming a priority date of 10 March 2017. It was examined and accepted in 2019, before it was opposed under section 59 by Enduroco Pty Ltd (the opponent) on 10 January 2020. That opposition was decided by delegate Greg Powell in 2022[1] where he found that the claims all lacked support and provided an opportunity to file amendments to seek to overcome his finding.
[1] Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2022] APO 74 (the s59 decision)
The applicant initially filed amendments which were considered not allowable by a delegate. On 12 September 2023, the applicant filed amendments that the examining delegate considered were allowable. The opponent filed a notice of opposition under section 104 to these amendments on 16 January 2024, and a statement of grounds and particulars on 16 February 2024. This decision is in relation to the opposition to the allowability of the amendments filed on 12 September 2023.
The only evidence filed regarding this opposition to the allowance of amendments was a declaration filed by the applicant from Edbert Ta, an employee of Bus 4X4 Pty Ltd giving his opinion on the claims and the nature of the amendment. The hearing was conducted by way of written submissions filed by both parties.
SPECIFICATION
The s59 decision by delegate Powell neatly lays out the invention described in the specification. I reproduce paragraphs [20]-[29] of his decision here with footnotes removed:
“The invention relates to the modification of two-wheel drive (2WD) vehicles to increase its ground clearance and/or improve traction by converting the vehicle to a four-wheel drive (4WD) or All Wheel Drive configuration.
The specification notes that 2WD vehicles, particularly buses, vans and trucks were increasingly being used in areas without sealed roads. As such, 4WD and improved ground clearance was desirable.
It was accepted that modification of these vehicles from 2WD to 4WD and improving the ground clearance was known in the art. It was noted that such conversion generally required a replacement front axle assembly, typically including a differential that was coupled with a transfer case assembly which simultaneously distributed power from the engine to the front wheels and the rear wheels. The specification states that presently known methods used a “live axle” design involving a solid front beam design. It is stated that this beam axle design, while providing strength, rigidity, accurate steering and tire-wear control, the arrangement would translate a bump to the other side wheel, which affected steering performance. It was also stated that that converted 4WD vehicles which used a live axle design did not allow any adjustment in camber, caster and wheel alignment. These shortcomings needed to be overcome.
The solution presented in the specification seeks to provide a conversion system (and kit) which modifies a 2WD vehicle with independent front suspension (IFS) to operate as a 4WD and/or has improved clearance while retaining the IFS.
While the figures are, quite frankly, not quality, figures 1 and 2 give an overview of the invention:
Essentially, the system is used to modify a 2WD vehicle 100, with a driven rear axle 120 and IFS, whereby, in one embodiment, a front axle assembly 140, including a front differential housed within the front differential housing 142 to drive the front wheels 190, replaces the existing front axle assembly. The front wheels are mounted to replacement stub axle assemblies 150 to which are mounted the existing IFS 160. The front differential is coupled to a transfer case 130 which is operable to drive the front and rear wheels. The front differential assembly is described as mounted to a sub-frame, which is itself mounted to the chassis 110.
The focus of the specification is on the front axle assembly comprising the replacement stub axle assemblies and the subframe that supports the differential assembly. Figures 4 and 5 provide more detail:
As is clear, the front differential assembly 142 is mounted to a sub-frame 300, which is itself mounted to the chassis 110. The IFS is a double wishbone assembly comprising upper 162 and lower 164 control arms. The upper control arms are coupled 165 to the replacement stub axle assemblies 150 and the chassis 110. The lower control arms 164 are coupled at their outer ends to the stub axle assemblies, with the inner ends mounted to the sub-frame 300.
There was some focus by the parties [at the hearing] on the sub-frame. As described, the sub-frame is best shown in figure 5C:
The sub-frame 300 is broadly composed of two parts: rear member 305 and front member 307, interconnected by another member 330. Each rear and front member has two opposed ends, 322 and 324 respectively, to which the inner ends of the suspension’s lower control arms are mounted. As is clear, the front member 307 is integrally formed with the differential housing 142. Mounting attachments 310 and 345 allow the frame to be mounted to the chassis. The description states:
‘… the configuration of the sub-frame in combination with the front differential assembly 100 is very important for allowing the kit/system 100 to utilise the existing independent suspension assembly 160 of the vehicle.’
and that:
‘[a]nother significant advantage of the improved kit 100 is that the original suspension assembly of the original 2WD vehicle (pre-conversion) no longer needs to be disposed. Instead, the improved kit 100 utilizes various parts of the original suspension assembly thereby improving utilization of the original parts of the 2WD vehicle whilst providing improved 4WD or AWD capability once the conversion has been completed. The kit 100 has been designed for maximum serviceability through improving and maximizing the use of genuine parts from the original 2WD vehicle.’”
THE AMENDMENT
In the s59 decision it was determined that all of the claims lacked support. It is not before me to determine whether this issue has been overcome, instead I must simply determine if the amendment gives rise to issues under section 102 of the Patents Act. It is easiest at this point to focus upon the independent claims and particularly claim 1. Where required I will introduce other claims. Claim 1 before the delegate in 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.Claim 1 as currently proposed to be amended on 12 September 2023 is as follows with new 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.Various features of new independent claim 1 are elevated from dependent claims that were before the delegate in the s59 decision. New independent claim 13 and 14, being a kit of parts and a method of modifying a two-wheel drive vehicle, are couched in similar terms. Consistent with the delegate’s s59 decision, with a mind to the described and claimed invention the person skilled in the art plainly includes a mechanic/mechanical engineer with experience in 2WD to 4WD conversion.
THE RELEVANT LAW
The application for the patent was filed in 2018, and the amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 therefore apply to the present patent.
The requirements for the allowability of amendments are governed by subsections 102(1) and (2) which state that:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment;
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2), (3) or (3A).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment, the relevant point in time in this case being the accepted application.
GROUNDS OF OPPOSITION
The opponent has submitted that the proposed amendments are not allowable because, as a result of the amendment, the specification would claim matter that extends beyond matter disclosed in the complete specification as filed (subsection 102(1)). They submitted that the amendment leads to a claimed invention not within scope of that prior to amendment (s102(2)(a)), and as a result of the amendment, the specification would not comply with subsection 40(2)(a) resulting in a specification that does not clearly enough and completely enough disclose the invention They also argue that claims would not be clear or supported under subsection 40(3) (s102(2)(b)).
LEGAL PRINCIPLES
Before I discuss the issues, I will briefly set out the legal principles that apply in the present opposition.
s102(1) - Claim or disclose matter that extends beyond that disclosed at filing
Subsection 102(1) was considered by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH[2], where he noted the following:
“First, as has been pointed out, the test is a strict one.
Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.
Third, the required disclosure may be express or implied, but on any view must be clearly and unambiguously so. In this regard, a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.
Fourth, context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application”.
[2] [2020] FCA 328 at [215]-[218]
Thus, the correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn or directly derive from the complete specification as filed[3].
[3] Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [3] [2020] FCA 328 at [202]
s102(2)(a) - Claim would not in substance fall within the scope of the claims before amendment
A useful test for the allowability of amendments under s102(2)(a) is:
“would the amendment make anything an infringement which would not have been an infringement before the amendment?”
This test was suggested in relation to s31(1) of the Patents Act 1949 (UK) in The Distillers Co. Ld.'s Application[4]. Although the wording of s102(2)(a) differs from the wording of the then s31(1) of the British Act, the Commissioner in W.J. Voit Rubber Corp.'s Application (1965)[5], when considering the corresponding provision of the Patents Act 1952, stated:
“the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one”.
[4] (1953) 70 RPC 221 at page 223
[5] AOJP 1752 at page 1754
The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner[6].
[6] [2000] FCA 1918
s40(2)(a) - The invention must be clearly and completely disclosed
In Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd[7] Rofe J referred to the judgement of Burley J in Cytec Industries Inc. v Nalco Company[8] (who in turn had referred to respective decisions of the Patent Office by then delegate Barker[9] Deputy Commissioner McCaffery[10]), presenting the following as guiding the consideration under s40(2)(a):
[7] [2022] FCA 540 at [376] to [378],
[8] [2021] FCA 970
[9] CSR Building Products Limited v United States Gypsum Company [2015] APO 72
[10] Evolva SA [2017] APO 57
“At [143] in Cytec Burley J referred to CSR Building Products in which Dr Barker considered at [95] that assessing whether the disclosure requirement was satisfied involved the following steps:
(1) construe the claims to determine the scope of the invention claimed;
(2) construe the description to determine what it discloses to the person skilled in the art; and
(3) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
At [144] his Honour also added two further steps from Evolva SA [2017] APO 57 at [45]:
(1) Is it plausible that the invention can be worked across the full scope of the invention?
(2) Can the invention be performed across the full scope of the claims without undue experimentation?
The last step aligns with what Jacob LJ described in Novartis AG v Johnson & Johnson Medical Ltd [2010] EWCA Civ 1039 (Novartis) as the heart of the disclosure test:
Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?”
s40(3) - The claim(s) must be supported by matter disclosed in the specification
The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[11]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
[11] [2020] FCA 1477 at [546]-[547]
It is therefore the case that, under s40(3), the matter in a claim of a specification must be supported by an enabling disclosure in the description and any drawings, graphics, photographs and sequence listing (i.e., the body of the specification).
s40(3) - The claim(s) must be clear
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[12]:
“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 the specification”
[12] [2009] FCAFC 70, 81 IPR 228 at [118]-[120]
The requirement for clarity will be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents[13]). Further, “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use” (Flexible Steel Lacing Co v Beltreco Ltd[14]).
CONSIDERATION
[13] (1974) 48 ALJR 59
[14] [2000] FCA 890 at [81]
s102(1) – Does the amendment introduce claimed matter extending beyond that disclosed at filing?
“Through the upper and lower arms”
The opponent first argues in relation to the following amended feature:
…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.
They argue that the originally filed description only discloses the stub axle assembly extending through the independent suspension assembly in a very specific manner. They point to paragraph [061] of the specification which says (with the opponent’s emphasis):
“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. Each upper arm 162 comprises a first end and a second end, wherein a first end of the upper arm is adapted to be coupled to an upper portion of the attachment arm 152 of the stub assembly 150 and wherein the second end of each upper control arm 162 is pivotally mounted with respect to the chassis 110.”
They note that the claims refer to upper and lower arms, while the disclosure is narrower, referring to upper ‘A’ shaped upper control arms and lower control arms. They also note that the claims refer to “coupling” whereas this part of the description refers to “engagement”. Ultimately, they submit:
· The limitation relating to “through the upper and lower arms” has been introduced into the claim stripped of its context in the description from which it was drawn.
· The specification does not disclose the stub axle assembly extending through a structure other than the upper ‘A’ shaped upper and lower control arms.
· Adaption for coupling to the independent suspension assembly “through” the upper and lower arms suggests the arms are not part of the independent suspension assembly and, therefore, the amendments are directed to undisclosed matter because the independent suspension assembly previously included those arms.
· Thus, the amendment is directed to matter which extends beyond that originally disclosed.
In response the applicant submits that the application as originally filed contemplates the newly claimed embodiment via paragraphs [014], [015], [061], Figure 6 and original claims 5 and 6, adding that claim 1 has been limited based upon originally filed dependent claims as supported by the description.
Regarding the third point above, on reading of amended claim 1 (and 13) as a whole it is clear to me that the upper and lower arms are part of the independent suspension assembly. The amended claims explicitly include the features:
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;I consider the use of the word “through” in the context of the presently amended claim merely indicates that the connection pathway between the stub axle assembly and the independent suspension assembly includes the upper and lower arms and does not suggest that the upper and lower arms are separate to the independent suspension assembly. With such explicit definition in the claims of the composition of the independent suspension assembly I consider the most appropriate understanding of the word “through” to be along the lines of “by the means or instrumentality of”[15]. I do not consider the claim to suggest that the upper and lower arms are an intermediary part separate from both a stub axle assembly and the independent suspension assembly.
[15] Definition 8. “by the means or instrumentality of” The Macquarie Dictionary, 8th ed.2022, >
Turning to the remaining points raised by the opponent and the response of the applicant I will discuss paragraphs [014], [015], and [061]. Paragraph [061] is already reproduced above and provides discussion relevant to Figure 5 and Figure 6. As pointed out by the opponent, it is clearly a narrower disclosure than the feature of the amended claims whereby the stub assemblies are adapted to be coupled to the independent suspension assembly through the upper and lower arms in that in [061], the upper arms are ‘A’ shaped. Paragraphs [014] and [015] are present in the specification as filed as consistory reflections of claims 5 and 6 as filed and prior to amendment. They read as follows:
In an embodiment, 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 a first end of the upper arm is adapted to be coupled to an upper portion of the stub assembly and wherein the second end of the upper arm is pivotally mounted with respect to the chassis.
In an embodiment, the steerable independent suspension assembly further comprises a pair of lower arms, each lower arm having a first end and a second end, wherein the system further comprises a mounting arrangement such that a lower portion of the mounting arrangement is coupled to the first end of each lower arm and the subframe is adapted to be coupled to the second end of the lower arm.
These embodiments provide for a different disclosure to paragraph [061] of the connection between stub assembly and suspension in that that they articulate that the upper arms are adapted to be coupled to an upper portion of the stub assembly, and that the lower arms are coupled to a mounting arrangement. I note features of the disclosure of original paragraphs [014] and [015] are also present now in independent claim 1 in the following form:
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 armThe question for me to ask is whether the claimed arrangement of a stub axle assembly adapted to be coupled to the steerable independent suspension assembly through (by means of) the upper and lower arms (which form part of the independent suspension assembly), where the upper arm is coupled to an upper portion of the stub axle assembly and the lower arms are coupled to a mounting arrangement, is clearly and unambiguously disclosed in the specification as filed.
I consider the disclosures of paragraphs [014] and [061] clearly outline that the stub axle assembly is adapted to be coupled to an upper arm via means of an upper proportion of the stub axle assembly, paragraph [014] providing disclosure without the ‘A’ shape. Paragraph [015] adds to the disclosure making clear a mounting arrangement is coupled to each lower arm. I do not consider that the amendment adds any new matter in this regard.
“Coupled to”
The opponent next points to the amended claims which define: a transfer case assembly “coupled to the front axle assembly”; a mounting arrangement “coupled to the first end of each lower arm”; and a first end of the upper arm “coupled to an upper portion of the stub axle assembly”.
They contrast this with the language used for other features of the amended claim such as: the front axle assembly “adapted to be coupled to” the independent suspension assembly; the front differential defined as “to be coupled to the spaced apart stub axle assemblies”; and the sub-frame defined as “for attachment to” the chassis of the vehicle.
The opponent argues that the proposed amendments allow for an arrangement whereby, for example, the transfer case assembly is coupled to the front axle assembly, but the sub-frame is not necessarily attached to the chassis of the vehicle. Ultimately, the argument goes:
“The specification as filed contains no disclosure of an arrangement in which (as encompassed by claim 1) the transfer case assembly is coupled to the front axle assembly, the front differential is not coupled to the stub axle assemblies and the subframe is not attached to the chassis of the vehicle, noting the specification discloses the differential housing is integrally formed with the sub-frame (see [065]). We submit the claims define an arrangement, which was not disclosed in the specification as originally filed. Therefore, the Proposed Amendments extend beyond matter disclosed in the specification as originally filed in contravention of s 102(1) and should not be allowed.”
In response the applicant simply argues that the person skilled in the art would understand the conversion system to comprise a plurality of components which are coupled in use to various components of the vehicle being modified and that the limitation is simply one of a previous dependent claim.
Claim 1 (and 13) as proposed to be amended is clearly limited in that a transfer case assembly is coupled to the front axle assembly. It is the case, as literally presented in the claim, that the front differential may not be coupled to the stub axle assemblies and the subframe may not be coupled with the chassis of the vehicle. There is plainly disclosure of a transfer case assembly coupled to the front axle assembly in the specification in the figures.
Referring to the s59 decision, delegate Powell identified the front differential assembly as being a housing containing a differential[16]. Paragraph [010] of the specification as filed states:
In an embodiment, the front differential assembly comprises a front differential housed in a differential housing for driving the front wheels, the housing being mounted relative to the sub-frame.
[16] s59 decision at [54]
On my reading, the front differential is a part/component that can be assembled such that it is within the differential housing. The specification as filed[17] refers to the described embodiments as a conversion system/kit and describes the figures as relating to the invention in an installed configuration. It appears plainly logical that the disclosure suggests to the reader that while the figures depict a complete assembly, it is the case that distinct parts may be disassembled as forming parts of that kit and thus not be in a state of active coupling. In other words, a system must inherently be in a state of disassembly before assembly.
[17] Specification at [050]
This approach does not completely address the submission of the opponent. Importantly, the transfer case assembly which transfers transmission output to the front and rear wheels is claimed as being coupled to the front axle assembly, but front differential is not necessary coupled to stub axel assemblies.
I am not convinced that this issue needs to be addressed further because as pointed out by the applicant, the specification as filed discloses the relevant combination of coupling and adaptation to be coupled of the transfer case assembly, sub-frame and front differential assembly in claim 2 as originally filed, and paragraphs [008] and [009] as originally filed which are consistory clauses reflective of that claim as follows (with my emphasis):
In one aspect, the invention provides 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.In an embodiment, the system further comprises: 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.
Thus, I do not see matter added that is not disclosed in the specification as filed.
“Rear wheels”
Under the ground of section 102(1) the last objection of the opponent is that the proposed amendment of claim 14 adds the feature that there are “at least two rear wheels coupled to the rear axle assembly”. They argue that the rear wheels being coupled to the assembly was not explicitly disclosed in the original specification. On this basis they submit the claiming of matter extending beyond the original disclosure.
I consider this submission can be dealt with rather swiftly. Given the present invention is for modification of vehicles such as vans, buses and trucks from 2WD to 4WD, I see no other way for the invention to function aside from coupling wheels to a rear axle assembly. Referring to figures 1 and 2, the rear axle assembly relating to item 120 discussed in the specification includes a rear axle assembly clearly configured in the figures such that it is implied that a wheel can couple thereto. Figure 4 shows wheels mounted on the rear axle assemblies.
It is clear to me that the reader of the specification as filed would know that a rear wheel will couple to the rear axle assembly by means of the part of the rear axle assembly visible at 120 of figure 2. I do not consider the feature represents something that a mechanic or mechanical engineer could not learn or directly derive from the specification as filed.
In conclusion, I do not consider any of the amendments claim matter that extends beyond that disclosed at filing.
s102(2)(a) – Does the scope of the claims after amendment fall outside the scope of the claims before amendment?
“Sub-frame for mounting and supporting the independent suspension assembly and the front axle assembly”
The opponent initially makes reference to the s59 decision of the delegate where he concluded at [178] and [179] of his decision as follows:
“While it is certainly true that American Merriam-Webster Dictionary includes “assist, help” as one definition of “support”, that definition is inconsistent with the use of that term in descriptive context of the present application. Taking the applicant’s definition, they would posit that the claim is intended to define that the sub-frame assists in mounting the IFS and front axle assembly. If that is to the be the definition, then it is curious that the claims states that the sub-frame is “for mounting and supporting the independent suspension assembly and the front axle assembly” and not “for supporting mounting of the independent suspension assembly and the front axle assembly”. Clearly, referring to the Australian Macquarie Dictionary, given the way “supporting” is used in the claim and the description, it undoubtedly means either of the first two definitions given for “support” in the Macquarie Dictionary; viz:
1. to bear or hold up (a load, mass, structure, part, etc.).
2. to sustain or withstand (weight, etc.) without giving way.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.”
In other words, the delegate concluded that the wording “for mounting and supporting the independent suspension assembly and the front axle assembly” was limited to a situation wherein the sub-frame is suitable for direct mounting of the sub-frame to the front axle assembly and the complete suspension assembly. The opponent continues to proffer this construction to the phrase “mounting and supporting” and on this basis would appear to suggest that the additional feature “wherein the sub-frame is adapted to be coupled to the second end of the lower arm [of the independent suspension assembly]” merely narrows the claim (amended feature reproduced below).
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.
With this in mind the opponent poses that to the extent that there may be any change to the understanding of the meaning of the phrase “mounting and supporting” beyond direct mounting of the sub-frame to the front axle assembly, then the claims would fall outside the scope of those before amendment.
In response the applicant points firmly to the rules of construction of patent claims and identifies the importance of reading the specification as a whole and the need to give purposive as opposed to literal construction[18]. They submit:
· Claim 1 should be construed to cover embodiments explicitly recited in the dependent claims if at all possible.
· The applicant’s interpretation should be preferred because it makes sense in relation to dependent claims and is consistent with the description.
· The opponent’s interpretation fails to consider dependent claims and is non-sensical.
· A person skilled in the art would prefer the applicant’s interpretation in purposively considering the claims and reading them as a whole.
· Specifically, they argue that the simplest approach to construe claim 1 as originally accepted is that it covers two embodiments being: a first embodiment involving direct coupling to the front axle assembly; and a second embodiment involving indirect coupling to the front axle assembly (consistent with previous dependent claim 5 and 6 which involved the sub-frame coupling to the front axle assembly via the lower arm of the front suspension).
· The applicant adds that a common-sense approach should be taken to reject the absurd construction for claim 1 of an invention that is contrary to the description, dependent claims and drawings.
[18] Décor Corporation Pty Ltd v Dart Industries Inc 13 IPR 385
I appreciate the applicant’s reference to the rules of construction as inclusive of the ideas of reading the specification as a whole and taking a purposive approach to construction. A helpful detailed summary of the rules of construction is provided by the Full Court of the Federal Court in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag[19], citing with approval from an earlier decision:
[19] [2008] FCAFC 121
“In Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331, Hely J considered at length the approach to construction of a specification and, in particular, the circumstances in which uncertainty might lead to invalidity. At [71]-[78] his Honour identified the following principles:
·The monopoly must be defined in a way that is not reasonably capable of being misunderstood.
·In determining the nature and extent of the monopoly claimed, the specification must be read as a whole, but recognizing that the parts have different functions. The claims mark out the legal limits of monopoly. What is not claimed is disclaimed. The specification describes how to carry out the process and the best method known to the patentee of doing so.
·Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by a claim by adding glosses drawn from other parts of the specification. If a claim is clear, it is not to be varied, qualified or made obscure by statements found elsewhere in the document.
·It is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. When the language of the claims is obscure or doubtful such doubts may be resolved by reference to the specification.
·It is not necessary that the claims be construed without reference to the body of the specification in order to see whether there is any ambiguity. The document is construed as a whole. If the specification demonstrates an intention that words used elsewhere have a particular meaning, effect should be given to such a ‘dictionary.”
Clearly present along with the need to read the specification as a whole and consider purposive construction is the requirement that one not modify the boundaries of a monopoly fixed by a claim by adding glosses drawn from the specification. A clear claim must remain clear and cannot be varied by the contents of the specification.
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.
Claims 1 and 13 – Antecedent to the upper arm
The opponent submits in relation to the feature “wherein a first end of the upper arm is coupled to an upper portion of the stub axle assembly”:
“There is no antecedent for ‘the upper arm’, [which] results in the claim being unclear whether ‘the upper arm’ is an upper arm of the independent suspension assembly previously recited in the claim (which can be construed to be an OEM [Original Equipment Manufacturer] assembly). To the extent that the amendments result in proposed claims 1 and 13 not requiring that the entirety of the OEM independent suspension assembly be re-used, this would result in proposed claims 1 and 13 not falling within the scope of the claims of the B2 Specification, which we submit did require that the entire OEM independent suspension assembly be re-used.”
Firstly, I see nothing in claims 1 and 13 prior to amendment which requires an entire OEM independent suspension assembly as such to be re-used. The wording of claim 1 (also reflective of claim 13 prior to amendment), which was the claim considered by the delegate in the s59 decision, includes steerable independent suspension assemblies and adds that stub axle assemblies are adapted to be coupled to the steerable independent suspension assemblies in addition to a sub-frame for mounting and supporting the independent suspension assembly. There is nothing in the claim prior to amendment which describes the structure of the independent suspension assembly or a particular suspension assembly’s re-use other than the fact that the suspension assemblies are part of a 2WD vehicle that is to be converted.
The amendment adds that the steerable independent suspension assembly comprises a pair of upper arms and a pair of lower arms, and that a first end of the upper arm is coupled to an upper portion of the stub axle assembly. I see no other sensible construction to apply to this reference to “the upper arm” than constituting a reference to one or both of the pair of upper arms of each assembly. The same wording was present in dependent claim 5 prior to amendment as follows with my emphasis:
A system in accordance with any one of the preceding claims 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 a first end of the upper arm is adapted to be coupled to an upper portion of the stub assembly and wherein the second end of the upper arm is pivotally mounted with respect to the chassis.
The amendment is clearly narrowing of previous independent claims in characterising coupling to the independent suspension assemblies of a to-be-converted 2WD vehicle, and as such, it is clear to me that the amended claim does not fail s102(2)(a).
s102(2)(b) – Does the amendment introduce an issue of non-compliance under s40(2) or s40(3)?
s40(2)(a) – Clear enough and complete enough description
Under this basis, the opponent argues the following:
·“The manner of coupling the transfer case to the front axle is a relevant range for the purposes of s40(2)(a), because it is essential to the working of the invention and is core to the inventive concept of the claimed invention… Therefore, as a result of the Proposed Amendments, claims 1 and 13 define an embodiment falling within a ‘relevant range’ of the invention that is not enable by the specification.”
·“The interface between the suspension and the axle assemblies goes to the core of the presently claimed invention and is what enables [the] invention to deliver the advantage [of] re-using as many OEM components as possible. Accordingly, the range of ways the mounting arrangement can be implemented in the claimed invention constitutes a ‘relevant range’ in the sense described in Jusand v Rattlejack[[20]]. We submit that the breadth of the claim exceeds the technical teachings of the specification in that it encompasses a range of functionally possible mounting arrangements but does not teach any principle of general application that would enable such a broad range of possible mounting arrangements.”
[20] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178
I will deal with these submissions swiftly. Firstly, and most importantly, there is no evidence before me to suggest that the person skilled in the art would not be able to perform the relevant aspects of the claim without undue burden and without needing inventive skill. Secondly, the feature of merely coupling the transfer case to the front axle was present in dependent claim 2 prior to amendment, and features related to general mounting of suspension to axle assemblies were present in the claims prior to amendment. As a result, if there were an issue in accordance with s40(2)(a), then it would not arise through the amendment.
s40(3) - Support
Under this basis the opponent argues that none of the claims define an invention consistent with the aspect of the invention described at paragraph [008]. They add that paragraph [027] defines another aspect of the invention but the claimed invention does not accord with this statement either. On this basis the opponent generally submits that there is no conformity between the invention described and the invention claimed and therefore there is no support for the claimed invention.
Fundamentally, features added by amendment (aside from the wording “through the upper and lower arms”) were already present in the dependent claims and formed part of the claimed invention via combinations of dependent claims with independent claims. I simply cannot see how there could be any new issue of support arising from these amendments. Regardless, no basis has been put to me as to why different features described across the specification cannot be brought together to form an invention narrower in conception than the original consistory descriptions at paragraphs [008] and [027]. The opponent’s case under this ground fails.
s40(3) – Clarity
The opponent’s mode of attack under this ground is to raise a multitude of issues of clarity against the amended claims. They submit that there is a litany of inconsistencies in the amended claims and as a result the person skilled in the art would not be able to discern the nature of the invention. This itself is an odd proposal, and instead I consider that a decision as to clarity of the claims should be made against particular issues identified. As such, I will address each of the issues taken by the opponent individually.
Firstly, the opponent argues:
“In claim 1, after the words ‘the system comprising’, there is a list of components, which appear to be comprised in the system. Similarly, in claim 13, after the words ‘the kit comprising’, there is a list of components, which appear to be comprised in the kit.
In each of these lists, the word ‘and’ is included between the clause introducing the ‘front differential’ and the clause introducing the ‘transfer case assembly’. However, the word ‘and’ is not present before ‘mounting arrangement’ and ‘sub-frame assembly’. This results in uncertainty as to whether the ‘mounting arrangement’ and ‘sub-frame’ defined thereafter (amongst other components), form part of the claimed ‘system’ or ‘kit’, respectively.”
I see this submission going nowhere. The claims are directed to a system comprising listed features or a kit comprising listed features. While the word “and” is only present in one of the locations, I see no reasons to consider that the absence of the word at other points suggests the mounting arrangement and sub-frame are not part of the system or kit. Plainly they are, and it makes no sense for those parts to not be part of the system or kit. They are individual parts that indubitably enable conversion of the two-wheel drive system. This is their clear purpose.
Secondly, they submit:
“…each of claims 1 and 13 initially recite that ‘each of the steerable independent suspension assembly [sic] comprises a pair of upper arms’. The claims subsequently recite (as a singular item) ‘the steerable independent suspension assembly further comprises a pair of lower arms’. The grammar in these clauses makes it unclear whether there is one or more steerable independent suspension assemblies being defined as part of the claimed subject matter. In particular, it should be noted that ‘a steerable independent suspension assembly’ is introduced into the claim indirectly as something to support each front wheel. However, the claim is unclear whether it is one steerable independent suspensions assembly supporting both front wheels or if it is two steerable independent suspensions assemblies supporting one front wheel each.”
Given the nature of the invention, I consider this issue is easily resolved. It would be absurd for a vehicle to have one steerable independent assembly to support both front wheels. While there is a use of singular terms, it must be the case that there are two “matching” steerable independent suspension assemblies supporting one front wheel each.
Thirdly they note:
“Furthermore, in the clause ‘wherein a first end of the upper arm is coupled to an upper portion of the stub axle assembly’ recited in each of claims 1 and 13, a singular upper arm is referred to. It is not clear if this is a reference to one of the upper arms recited earlier in the claims (forming part of the steerable independent suspension assembly) or if this is in fact a new upper arm forming part of the system or kit, respectively. Even if it is found that incorporation of the article ‘the’ before ‘upper arm’ means that it must be one of the upper arms previously recited in the claims that is being referred to, there is no way for a person skilled in the art to discern which of the pair of upper arms previously mentioned in the claims is the subject of this clause. This is especially so, because it is not clear in the claims whether there is one or two steerable independent suspension assemblies as previously mentioned.”
As above, I consider there to be two independent suspension assemblies supporting one front wheel each. Furthermore, I also note that this relevant singularly worded feature was present in claim 5 prior to amendment as it appears in claim 1 as proposed to be amended, and thus any issue does not arise as a result of the amendment. Regardless, I see no reason to view this as a new upper arm and, to the extent there is any confusion, the specification is clear as to the presence of upper arms only as part the steerable independent suspension assemblies. Worded in the singular, I consider that the wording requires that either or both of the upper arms of each suspension assembly is coupled to an upper portion of one of the stub axle assemblies.
Fourthly, the opponent submits, similar to above, that:
“…each of claims 1 and 13 recite ‘wherein the sub-frame is adapted to be coupled to the second end of the lower arm’, whereas earlier in the claims a ‘pair of lower arms’ is recited. As with the reference to the singular upper arm, this clause is also unclear as to whether it is one of the lower arms previously recited in the claim or a new lower arm forming part of the system or kit, which is being referred to.”
To be brief, I consider this issue is resolved identically to my understanding above. There is no new lower arm, and the wording requires that the subframe is adapted to be coupled to the second end of either or both of the lower arms of each suspension assembly. No issue can arise as a result of this amendment as the feature was present in unamended claim 6.
Fifthly, the opponent notes that claims 1 and 13 define a transfer case, mounting arrangement and upper arm as being “coupled” to respective parts. They add that, by contrast, the front axle assembly, front differential, and sub frame are to be coupled/for attachment. They argue that:
“The inconsistent reference to a definite coupling/attachment and an adaptation for coupling/attachment results in uncertainty as to whether relevant components must be connected for there to be infringement of the claim. In particular, it should be noted that each of claims 1 and 13 recites that the transfer case assembly is ‘coupled to the front axle assembly’ and that the front differential assembly is only ‘adapted to be coupled to the spaced apart stub axle assemblies’, wherein the stub axle assemblies form part of the front axle assembly. The specification describes that the transfer case assembly is coupled to the front axle assembly via a propeller shaft and the front differential (see [058]). Therefore, there is an apparent inconsistency in the claims in that the transfer case assembly is coupled to the front axle assembly, but the front differential is not defined as necessarily being coupled to the front axle assembly. It is not disclosed in the specification how the transfer case assembly can be coupled to the front axle assembly without being coupled to the front differential.”
I do not consider the above represents an issue of clarity. The words of the relevant features are plainly clear, and I see no reason why a person skilled in the art would not understand the scope of, for example, coupling vs suitability for coupling. How this is achieved is not a question of clarity but a question that would best be considered in the context of enablement, noting there is no evidence before me as to lack of enablement. Additionally, as noted earlier, as a matter of logic, if the transfer case assembly is coupled to the front axle assembly, then the limitation of the front differential assembly as being “to be coupled” to stub axles assemblies can necessarily be read down to be limited to active coupling.
Sixthly, the opponent argues:
“…each of claims 1 and 13 initially refer to ‘the chassis’ (‘…wherein the second end of the upper arm is pivotally mounted with respect to the chassis…’) and then subsequently refer to ‘a chassis’ (‘…sub-frame for attachment to a chassis of the vehicle…’). This makes it ambiguous whether the chassis of the vehicle is being replaced as part of the system or kit of claims 1 and 13, respectively. This is made particularly ambiguous, because it is also uncertain whether the sub-frame forms part of the system or kit defined in claims 1 and 13, respectively.”
The conversion system and kit as claimed are clearly for modifying a vehicle. A vehicle includes a chassis. I have already concluded above that the sub-frame is part of the conversion system and kit. Whether a chassis is being replaced or not is irrelevant to the clarity of the claims. The claimed features initially refer to “the chassis” in the preamble and as far as I am concerned, I see this as the same chassis that is referred to later in the claim in respect of the sub-frame for attachment to a chassis of the vehicle. The claim includes a subframe for attachment to a chassis, wherein that chassis has upper arms of a steerable independent suspension assembly pivotally mounted thereto. I do not see the system or kit as including a chassis; instead the chassis is part of two-wheel drive vehicle that can be converted by a particular system or kit.
Seventhly, the opponent notes that there is no antecedent for “the rear axle assembly” in claim 13 and that it is not clear whether the rear axle assembly is part of the vehicle before modification or part of the claimed kit of parts. In this regard, the preamble to the claim identifies a two-wheeled vehicle which must necessarily include a rear axle assembly. I see no reason for the rear axle assembly to be considered as a part of the kit of parts.
Eighthly the opponent argues:
“The preamble of claim 1 refers both to ‘a conversion system’ and to ‘a vehicle’. The recitation of features of the vehicle (including wheels thereof) is separate both from the preamble and from the recitation ‘wherein each of the steerable independent suspension assembly comprises a pair of upper arms…wherein the second end of the upper arm is pivotally mounted with respect to the chassis’ (claim integer 1.3). To what integer(s) the word ‘wherein’, at the beginning of claim integer 1.3, applies is not clear. It could apply to the conversion system (meaning ‘in which conversion system’) or it could apply to the vehicle (meaning ‘in which vehicle’). The same is true for the word ‘wherein’ commencing claim integer 1.4.
Accordingly, it is not clear whether the Proposed Amendments result in the steerable independent suspension assembly being a feature of the claimed conversion system or the vehicle to which the conversion system is to be suited to modify. We submit that on this basis the Proposed Amendments result in it not being possible for a person skilled in the art to determine what forms part of the claimed conversion system and therefore what would infringe proposed claim 1.”
Claim 1 is a conversion system for modifying a two-wheel drive vehicle. The claim then defines the vehicle as 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;This is following by the claims then introducing “the conversion system comprising” various features. Thus, the conversion system comprising various components must be suitable for modifying a two-drive vehicle characterised by the features I have identified above. The independent suspension assembly is thus a feature of the vehicle being modified.
Ninthly, the opponent argues:
“Each of proposed claims 1 and 13 recite that ‘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’. It is not clear what ‘coupled through the upper and lower arms’ means. The term ‘coupled through’ is not defined in the specification and it is not apparent what such a turn a phrase would mean.”
I have already construed this term “coupled through” earlier. I construed this feature to be directed towards each stub axle assembly being adapted to be coupled to the steerable independent suspension assembly by means of the upper and lower arms of the independent suspension assembly.
Tenthly, the opponent submits:
“Claim 14 is proposed to be amended to recite a ‘replacement front axle assembly’. The term ‘replacement front axle assembly’ is not used in either of claims 1 and 13. This results in uncertainty in relation to claims 1 to 13, regarding whether the front axle assemblies referred to in those claims are OEM axle assemblies or non-OEM replacement front axle assemblies. Therefore, the amendment gives rise to a claim which lacks clarity…”
Claim 14 as proposed to be amended is as follows with additions underlined:
A method of modifying a two-wheel drive vehicle having at least two rear wheels coupled to 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 wherein each of the steerable independent suspension assembly of the vehicle 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 method comprising:
uncoupling each stub axle from the independent suspension assembly;
positioning a replacement front axle assembly comprising respective replacement stub axle assemblies for supporting front wheels of the vehicle by coupling the respective stub axle assemblies with the upper and lower control arms;
coupling a transfer case assembly to the replacement front axle assembly and the rear axle assembly of the vehicle for simultaneously transferring torque from the transmission output to the front and rear wheels respectively
coupling the independent suspension assembly of the vehicle with the replacement front axle assembly including the replacement stub axle assemblies for supporting a corresponding front wheel wherein a first end of each of the upper arms of the vehicle is coupled to an upper portion of a corresponding replacement stub axle assembly; and
mounting and supporting the independent suspension assembly and the front differential assembly on a sub-frame by coupling a lower portion of a mounting arrangement to the first end of each lower arm of the vehicle and by coupling the sub frame to the second end of the lower arms.Claim 14 is to a method of modifying a two-wheel drive vehicle which makes clear that the font axle assembly is a replacement front axle assembly. I consider this must be a replacement of the previous front axle assembly of the two-wheel drive vehicle that is being modified. I cannot see how this feature in claim 14 can render claims 1 and 13 unclear. It is the case that the front axle assembly of claims 1 and 13 is part of the conversion system and kit but is not explicitly worded as a “replacement” front axle assembly. However, as a matter of logical construction of these claims the front axle assembly must be a replacement for whatever front axle assembly might be present in an unmodified 2WD vehicle.
As an eleventh point the opponent submits:
“In claim 14, as proposed to be amended there is no antecedence for ‘the front differential assembly’ or ‘each stub axle’. The ‘front differential assembly is first referred to in claim integer 14.9 and so has no antecedence. Therefore, it is not clear which front differential assembly is being referred to. Similarly, ‘each stub axle’ assembly is referred to in claim integer 14.5, but there is no prior reference to there being any stub axle assemblies in proposed claim 14. Moreover, at claim integer 14.6, ‘replacement stub axle assemblies’ are referred to and not replacement stub axles. Therefore, it is not clear which stub axles were originally being referred to and if prior to the method step mentioned in claim integer 14.6 whether there were in addition to the OEM stub axles also OEM stub axle assemblies, which are replaced in the method step of claim integer 14.6 with non-OEM stub axle assemblies.”
I agree there is no earlier reference to a front differential assembly. I see no other resolution to this than to view “the front differential assembly” merely as “a front differential assembly”. While there is no earlier reference to each stub axle it is clearly the case that a two-wheel drive vehicle possess two front stub axles that the independent front suspension assembly must be uncoupled from before positioning a replacement front axle comprising stub axle assemblies. It is clear that previous stub axles must be uncoupled and that the replacement front axle comprises stub axle assembles.
As a twelfth point, the opponent continued:
“At claim integers 14.2 and 14.3 respectively ‘a pair of upper arms’ and ‘a pair of lower arms’ are recited. However, at claim integer 14.6, ‘the upper and lower control arms’ is recited. It is not clear whether ‘the upper and lower control arms’ recited at claim integer 14.6 are the same as ‘the upper and lower arms’ recited earlier in claim 14.”
I see no other construction than the upper and lower control arms recited at claim integer 14.6 are the upper and lower arms recited earlier. The specification does not suggest a second set of arms.
As a thirteenth point, the opponent states:
“After claim integer 14.4, which recites ‘the method comprising’, claim 14 appears to list various steps relating to the method. However, claim integer 14.7 does not terminate with a semi-colon or other punctuation mark, making it unclear whether the clause recited in claim integer 14.7 is connected to the clause in claim integer 14.8.
I consider this submission is nothing more than a phantasm of an issue. The layout of the claim clearly distinguishes these elements of the claim, and it is abundantly clear that punctuation has simply been left out.
Finally, the opponent submits:
“Like proposed claims 1 and 13, proposed claim 14 recites ‘a mounting arrangement’. Therefore, for similar reasons discussed above in relation to the ‘mounting arrangement’ recited in proposed claims 1 and 13, proposed claim 14 would not comply with section 40 of the Act and the Proposed Amendments should not be allowed.”
For reasons already provided, I am not satisfied that anything in relation to “a mounting arrangement” renders the claim unclear. To the extent that this argument may relate to other grounds under section 40 discussed earlier, I also refer to my earlier analysis under those grounds.
I consider that, as a result of the amendments, a clarity issue does not arise.
CONCLUSION
The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed. The amendment results in a claim that in substance falls within the scope of the claims before amendment. The amendment does not result in a specification that fails to clearly enough and completely enough disclose the invention or lead to the claims lacking support or clarity.
I therefore allow the amendment of 12 September 2023.
FINAL DETERMINATION CONSIDERATIONS
In the s59 decision, delegate Powell found that all of the claims lacked support in relation to the feature of a subframe for mounting and supporting the independent suspension assembly and the front axle assembly. I refer to his conclusion above at paragraph 47.
The present amendment adds to the relevant feature in claim 1 as follows:
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.
On my reading the addition of the subframe also being adapted to be coupled to the second end of the lower arm does not displace the meaning of the previous feature as adopted by the delegate in his s59 decision. The amendment simply appears to add further narrowing features to the claimed invention.
On the information before me, I do not see how the applicant may amend the specification to overcome this finding of the delegate and comply with s102(2)(a), however this is ultimately a matter for determination by the delegate. At this point, I do not see it appropriate for me to provide a further opportunity to amend. Consequently, I refer the matter to the original delegate to consider the steps that are appropriate in finally determining the matter.
COSTS
The opposition to the s104 amendments is unsuccessful. On this basis I consider it appropriate to make an award of costs against the opponent.
Dr N. R. Madsen
Deputy Commissioner of Patents
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