Enduroco Pty Ltd v Bus IP Holdings Pty Ltd - [2022] APO 74

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2022] APO 74
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: 23 November 2022

Hearing Date: 29 July 2022, via Video Conference
Further submissions filed 19 September 2022, 30 September 2022, and 13 October 2022

Catchwords: PATENTS – opposition to the grant of the patent under s 59 – regulation 5.23 – information provided by the applicant not considered – novelty – evidence does not establish a lack of novelty – inventive step – claims have an inventive step in light of evidence filed – subsection 60(3) – lack of support – claims lack support – opposition successful – opportunity to amend – parties to bear their own costs

Representation: Counsel for the applicant: Angus Lang
Patent attorney for the applicant: Caleb Maher and Andy Mukherji of Michael Buck IP
Counsel for the opponent: Ian Horak

Patent attorney for the opponent: Robert Finn of 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: 23 November 2022

DECISION

The opposition is successful. The claims lack support.
Subject to appeal, the applicant is given two (2) months from the date of this decision to file amendments that would overcome the adverse finding.
No award of costs. Lack of support arose under subsection 60(3). Parties to bear their own costs.

REASONS FOR DECISION
Background

Australian patent application 2018231941 (the application) in the name of Bus IP Holdings Pty Ltd (the applicant) was filed on 6 March 2018 as PCT application PCT/AU/2018/050205. The application claims priority from provisional application 2017900850 with a priority date of 10 March 2017.
A request for examination was made on 5 September 2019. The application was accepted on 23 September 2019 and advertised on 10 October 2019.
A Notice of Opposition was filed on 10 January 2020 by Enduroco Pty Ltd (the opponent). A Statement of Grounds and Particulars (SGP) was filed on 14 April 2020 (10 April 2020 ans 13 April 2020 being public holidays). Evidence in Support (EIS) was filed on 15 February 2021 following a number of extensions. At the same time, an amended SGP was filed, seeking to add prior art references that were mentioned in the EIS to those already present in the SGP. The amendment to the SGP was allowed on 4 March 2021. Evidence in Answer (EIA) was filed on 14 May 2021. Evidence in Reply (EIR) was filed on 19 July 2021.
On 21 July 2021, the opponent requested a further amendment of the SGP to add prior art references that were mentioned in the EIR to those already present in the SGP. The applicant objected to this amendment on the basis that the new prior art references were being relied upon to establish a lack of novelty and were, effectively, EIS filed out of time. This view was shared by the delegate of the Commissioner, who invited the opponent to comment. Following comment from the opponent, the delegate remained of the view that the amendment would be unduly prejudicial to the applicant, sought further comments from the opponent, and indicated that the amendment would be refused in the absence of further comment.
In response, the opponent filed a further amended SGP on 1 September 2021 further limiting the extent to which the new prior art was relied upon. Notwithstanding negative comments from the applicant, on 19 October 2021 the delegate of the Commissioner allowed the further amended SGP filed on 1 September 2021, but refused the amendment to the SGP filed on 21 July 2021. All references to the SGP are to the information as set out in the SGP filed on 1 September 2021.
Following the hearing of 29 July 2022, on 9 September 2022 I wrote to the parties seeking submissions on matters of concern I had regarding whether the claims met the requirements of section 40 of the Patents Act 1990, where these concerns had not been raised by the opponent. The applicant provided submissions in chief about my concerns on 19 September 2022, the opponent provided submissions in answer on 30 September 2022, and the applicant provided submissions in reply on 13 October 2022.
Applicable Law
The Application was filed after 15 April 2013 and is governed by the Patents Act 1990 (the Act) and Patents Regulations 1991 as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Thus, the standard of proof that applies in the present case is the balance of probabilities.
The Opponent has the onus to satisfy me, on a balance of probabilities, that a ground of opposition to the grant exists. If I am satisfied, I may refuse the application[1] or, where appropriate, give the applicant a reasonable opportunity to amend the relevant specification to remove any ground of opposition[2]. In addition, and particularly relevant to this opposition, when deciding a case, I may take into account any ground on which the grant of a patent may be opposed, whether relied upon or not[3].
[1] The Act, subsection 60(3A)
[2] The Act, subsection 60(3B)
[3] The Act, subsection 60(3)
Regulation 5.23
On 27 October 2021, shortly after the amendment to the SGP was allowed, the applicant indicated that they would file evidence under regulation 5.23. This was filed on 5 November 2021. An initial view of the delegate of the Commissioner was that this evidence could become crucial depending on what the opponent’s case was focussed, and indicated that regulation 5.23 was likely to be invoked.
Following comments from the applicant and the opponent, the delegate of the Commissioner concluded that this matter would best be dealt with in the context of the hearing, leaving it to me to decide whether to permit that evidence in under regulation 5.23.
The regulation 5.23 matter was discussed at the hearing. Following the hearing I wrote to the parties, informing them that the information was not likely to be determinative of the opposition, and thus would not be relied upon under regulation 5.23.
Evidence
EIS comprises:
·A declaration of Danny Milton (Milton 1) dated 15 February 2021, accompanied by exhibits DM-1 to DM-5
EIA comprises:
·A declaration of Joseph Kevin Butterworth (Butterworth 1) dated 14 May 2021, accompanied by exhibit JB-1
EIR comprises:
·A declaration of Danny Milton (Milton 2) dated 19 July 2021, accompanied by Exhibits DM-A to DM-E
The evidence filed under regulation 5.23 comprises:
·A declaration of Joseph Kevin Butterworth (Butterworth 2) dated 5 November 2021.
Danny Milton is a director of the opponent. He states that he has around 20 years’ experience in automotive engineering, including in particular aftermarket 4x4 vehicle conversions[4]. He states that he has been a director of the opponent since April 2012 and, additionally, has, since the late 1990’s been the owner/director of other companies dealing with the design, testing and manufacture of a range of 4x4 conversion products[5].
[4] Milton 1 at [4]
[5] Milton 1 at [5]–[11]
Joseph Butterworth states that he has been involved in four-wheel drive conversions since 2009 and has “worked with Bus IP on 4WD conversions from since 2012”[6].
[6] Butterworth 1 at [4]
Ground of Opposition
The SGP sets out the application is opposed on the basis of:
a)Lack of manner of manufacture;
b)Lack of novelty;
c)Lack of an inventive step;
d)Lack of utility;
e)Secret use of the invention; and
f)Non-compliance with the requirements for clear enough and complete enough disclosure (S 40(2)(a)), lack of best method (S 40(2)(aa)) and lack of clarity and support for the claims (S 40(3))
At the hearing, the opponent narrowed its case to:
(a)lack of novelty;
(b)lack of inventive step – in light of the common general knowledge and certain documents;
(c)lack of manner of manufacture;
(d)lack of utility; and
(e)lack of clarity and support of the claims.
The specification
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[7].
[7] Specification at [003]
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[8]. 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[9]. These shortcomings needed to be overcome.
[8] Specification at [004]
[9] Specification at [005]–[006]
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.”[10]
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.”[11]
[10] Specification at [065]
[11] Specification at [066]
Claims
The specification ends with 20 claims, 4 independent claims and 16 dependent claims. The independent claims are as follows:
Claim 1: 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 16: A kit of parts which can be installed to modify a two-wheel drive vehicle, said two-wheel drive vehicle having at least two rear wheels coupled to a transmission output of the vehicle and two front wheels, each front wheel supported by a steerable independent suspension assembly, the kit 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 adapted 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 18: A method of modifying a two-wheel drive vehicle having at least two rear wheels coupled to a transmission output of the vehicle and two front wheels, each front wheel supported by a steerable independent suspension assembly, the method comprising:
uncoupling each stub axle from the independent suspension assembly;
positioning a front axle assembly comprising respective replacement stub axle assemblies for supporting front wheels of the vehicle;
coupling the independent suspension assembly with the front axle assembly including the replacement stub axle assemblies for supporting a corresponding front wheel; and
mounting and supporting the independent suspension assembly and the front differential assembly on a sub-frame.
Claim 20: A conversion kit comprising the conversion system in accordance with any one of claims 1 to 15.
The full claim set is in the Annex to this decision.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd, Kiefel J identified the person skilled in the art (“PSA”) as:

“… a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention … and may often work in the art with which the invention is connected.” [12]

[12] [2007] FCA 481 at [16]

In Root Quality Pty Ltd v Root Control Technologies Pty Ltd, Finkelstein J stated:

“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.” [13]

[13] [2000] FCA 980 at [70]

In AstraZeneca AB v Apotex Pty Ltd, the High Court additionally noted that:

“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.” [14]

[14] [2015] HCA 30 at [23]

In urging me to prefer the evidence of Mr Milton, the opponent referred to the extensive experience in 2WD to 4WD conversions Mr Milton sets out in paragraphs [4]–[11] of Milton 1. The opponent contrasted this with the evidence of Mr Butterworth where Mr Butterworth’s experience occupies just paragraph [4] of Butterworth 1. That paragraph states:
“I have been a mechanical engineer since 1999. My automotive background has been predominately left to right hand drive steering wheel conversions, but I have been involved with 4WD conversions since 2009. I have worked with Bus IP on 4WD conversions from since 2012.”
The opponent submitted that Mr Butterworth was operating in predominately left to right hand drive steering wheel conversions and, while he would have an understand of the basic mechanical components, there was nothing in the paragraph to show that he had depth of knowledge of 4WD conversions.
The opponent urged me to be careful in accepting the evidence of Mr Butterworth. In their written submissions[15], the opponent indicated that Mr Butterworth was incorrect in his statement that he was not aware of anyone other than the applicant that sold, on a pallet, kits for modifying a 2WD vehicle 4WD conversion. The opponent referred to their evidence which showed that Mr Butterworth had been involved in connection with a 4WD conversion kit supplied by the opponent.
[15] Opponent’s written submissions at [46]
The evidence being referred to is an email chain between Steven Hargreaves (of the applicant), and Scott Isaacs and Evan Isaacs (of Coachworks Pty Ltd), with both Mr Butterworth and Mr Milton (and others) being copied into the emails[16]. The emails are in relation to parts involved in a 4WD conversion. I queried whether the fact that Mr Butterworth was included in the email chain establishes that Mr Butterworth was involved in 4WD conversions and, as someone who is approached to address issues, did have experience in the art. The opponent submitted that, at best, the email showed Mr Butterworth’s involvement in one transaction. They noted, again, the large difference in the level of detail setting out the respective experience in the declarations and submitted that it would be speculation to attribute a great level of expertise to Mr Butterworth.
[16] Exhibit DM-E to Milton 2
The applicant submitted that Mr Milton was not “better qualified” than Mr Butterworth. They submitted that there was “no vice” in Mr Butterworth expressing his experience briefly. They noted that, on the evidence, Mr Butterworth has been undertaking 2WD to 4WD conversions for 13 years. The applicant also submitted that Mr Butterworth’s evidence on the prior art and the specification indicated ample experience.
It seems clear to me that the person skilled in the art would be a mechanical engineer with experience in 2WD to 4WD conversions. While I accept that Mr Milton has put more effort into detailing his experience and Mr Butterworth’s efforts are disappointing, there is nothing in the evidence that I can point to that establishes Mr Butterworth’s unsuitability. In this regard, the evidence could be said to reinforce his suitability. The email chain I referred to above has the following:
“Joe [i.e. Mr Butterworth] has a transfer case similar to those we are currently fitting and is hipping [sic] this direct to Steve for the project. Whilst trying to fit this to the Dodge truck that the original transfer case was taken from he found it does NOT fit and now says that the only units available from now on are similar to the one out of that original truck”,
and
“Joe Butterworth is sending me a transfer case today, it is the one we are using at the moment. Joe is about to send a group email to everyone re the changes we need to make to he [sic] spud shaft if we are to make this change.”
These passages indicate to me that Mr Butterworth is well aware of the process of 4WD conversion and the changes to be made.

I note the opponent’s admonition to be cautious with Mr Butterworth because he was incorrect when he stated that that he was not aware of anyone other than the applicant that sold, on a pallet, kits for modifying a 2WD vehicle 4WD conversion. However, this does not go as far as the opponent would suggest. As noted by the applicant, Mr Butterworth’s evidence was that he was not aware of another party who sold actual kits, like parts for modifying a two-wheel drive vehicle on a pallet, besides the applicant, and there was no evidence that any palletised kit.
Ultimately, both Mr Milton and Mr Butterworth can reasonably put forward opinions on what may happen in such a 2WD to 4WD conversion process. To the extent that there may be contradictory evidence, I will have regard to available corroborating evidence.
Claim construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[17], the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd:
“… 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.”[18]
[17] [1988] FCA 399; 13 IPR 385
[18] [2009] FCAFC 70; 81 IPR 228 at [118] – [120]
I would also note what was said in Eli Lilly and Company Limited v Apotex Pty Ltd (“Eli Lilly”)[19]:
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
[19] [2013] FCA 214 at [139]
In the present matter there were terms in the claims that are important to the determination of this opposition. These were:
(i)sub-frame
(ii)front axle assembly
(iii)front differential assembly
(iv)independent front suspension/steerable independent suspension assembly
sub-frame
In their evidence, neither Mr Milton nor Mr Butterworth put forward what they understood “sub-frame” to mean in the present application. Moreover, the term is not given any special meaning in the specification. The opponent provided, as D43, an archived version of the Wikipedia entry with respect to “Subframe”. That entry states that:
“[a] subframe is a structural component of a vehicle, such as an automobile or an aircraft, that uses a discrete, separate structure within a larger body-on-frame or unit body to carry certain components, such as the engine, drivetrain, or suspension. The subframe is bolted and/or welded to the vehicle.” (bolding in original)
Clearly, this captures the sub-frame of the present application. However, it must be borne in mind that, as noted by the applicant[20], the sub-frame of the present application is used in the context of a 2WD to 4WD conversion. As such, it does not follow that the sub-frame of the present application can be equated to sub-frames as generally set out in D43. Consequently, I interpret “sub-frame” to be a structural component supplied as part of the conversion process that can be bolted or otherwise connected to the existing structure of the vehicle being converted, which vehicle may, prior to conversion, already possess items that may, strictly speaking, be considered to be sub-frames.
[20] Applicant’s written submissions at [70]
front axle assembly
As with “sub-frame” neither Mr Milton nor Mr Butterworth provide what they understand “front axle assembly” to mean in the present application. Furthermore, the term is not given any special meaning in the specification. In this regard, it is noted that each independent claim defines:
“a front axle assembly comprising spaced apart stub axle assemblies”
Clearly, the claims establish that the stub axle assemblies are part of the front axle assembly. Moreover, it is noted that the claims explicitly define the “front differential assembly” as a separate element which is “adapted to be coupled to the spaced apart stub axle assemblies”. This establishes that, while the differential assembly houses the differential that drives the front axle assemblies, it is not part of it.
The opponent submitted that the front axle assembly, as claimed, could consist of just the spaced apart stub axle assemblies. While, as a matter of pure semantics, this could be true, I take note of the caution in Eli Lilly to “approach the task of patent construction with a generous measure of common sense”.
I note that the opponent supplied, as D39, an archived version of the Wikipedia entry with respect to a “Stub axle”. That article states:
“A stub axle is one of the two front axles that carries a wheel in a rear wheel drive vehicle. The axle is capable of limited angular movement about the kingpin for steering the vehicle. The stub axle consists of wheel bearings which support the wheel hub.
The stub axle is named so because it resembles the shape of a stub, like a truncated end of an axle, short in shape and blunt.” (bolding in original)
Clearly, if the front axle assembly were to consist of only such stub axles, there would be no way to drive the front wheels. The stub axles simply mount the wheels. The PSA would not, in my opinion, reach such a conclusion as to the composition of the front axle. They would conclude that there must be one or more other components that are part of the front axle assembly.
front differential assembly
In his evidence, Mr Milton states that:
“The accepted specification is not clear as to what the ‘front differential assembly’ is. At [065] in the specification, it is stated that ‘[r]eferring to Figures 5B and 5C isolated views of the front differential assembly 140 and the sub-frame 300 are illustrated’, though the reference numeral 140 is otherwise used in the specification to refer to a ‘front axle assembly’, ‘front axle’, ‘front wheel axle’ or ‘frontal axle assembly’ (see at [032], [033], [034], [055], [058], [059], [061], [064], [066]). Later at [065] in the accepted specification, there is a reference to ‘front differential assembly 100’, though the reference numeral 100 is otherwise used in the specification to refer to the system or kit. I would ordinarily assume that a ‘front differential assembly’ includes a housing but there is nothing in the specification that confirms this. Although I think that the kit/system disclosed in the video invariably includes a front differential assembly, regardless of whether (referring to my remarks at [13] above) what houses the differential moving components is a part of it, it is not clear to me that the housing 142 is part of that assembly. Claim 3 mentions a ‘differential housing’ but does not indicate that the housing is part of the front differential assembly, instead stating that the front differential assembly comprises a front differential that is ‘housed in’ that housing. The ‘front differential assembly’ could be, for argument's sake, solely the moving components of the differential, whereby the structure encasing those components and via which they are mounted within the converted vehicle would then form the ‘differential housing’ and ‘sub-frame’ – which, as indicated at [011] and [065] in the accepted specification, can be integrally formed.”[21]
[21] Milton 2 at [16]
Mr Milton is correct that there is inconsistency within the description. The somewhat cavalier use of reference numerals could, in isolation, confuse the reader. However, in the context that the use occurs, it is clear what is being referred to. Nevertheless, it remains to be determined what is encompassed by the phrase in the claims. In this regard, I note paragraph [10] of the specification 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.”
In that light, and given that there is only one embodiment described, consistent with the description (when the context of its use in the description is considered), the front differential assembly is a housing containing a differential.
independent front suspension/steerable independent suspension assembly
Throughout the specification, claims, expert testimony, and submissions it appears that both parties treat the phrase “independent front suspension” and “steerable independent suspension” as synonymous. The words “front” and “steerable” are often omitted, and, when used, only serve to distinguish from the rear suspension. The specification describes the preferred embodiment of the IFS as including a pair of upper arms, a pair of lower arms, a shock absorbing member (equivalent to a resilient shock absorber or strut member), and a bump stop. However, the applicant has not clearly articulated the minimum components of the independent suspension assembly as that phrase is used in the claim.
At the hearing, the opponent suggested that the independent suspension assembly should be read as not limited to all the components, but only certain components. Specifically, during the hearing they argued that, noting the goal of the invention to use the original suspension assembly, since dependent claim 5 provides the feature of a pair of upper arms, claim 1 should be presumed to be only limited to the upper control arms.
The opponent’s argument, as best I can understand is that, since claim 5 defines that “the steerable independent suspension assembly comprises a pair of upper arms”, and a goal of the invention is that original suspension is to be kept, it must be the case, assuming the claims to achieve that goal, that claim 1 must be limited to upper control arms, but no other limitation. This argument is not persuasive. Dependent claims by design add limitations not present in the independent claim, and it is impermissible to constrain the scope of claim 1 by the limitations of claim 5. In addition, the word “comprise” is not used in an exclusive sense in the claims. All that can be said is that claim 1 does not exclude upper control arms.
The applicant stated at the hearing that the steerable, independent suspension assembly formed part of the original vehicle, and the components of the conversion system were required to interoperate with it. They stated that the new stub axle assemblies were to be coupled to the independent suspension. When discussing claim 18, the applicant described the conversion as requiring installation of new stub axles and connecting one end of the control arm to the existing front suspension and the other end of the suspension to the sub-frame. As such, it would seem that the applicant is arguing that the independent suspension assembly, at least when read in context, is not to be read as the complete suspension assembly. Although they do not provide a clear statement of what they consider the correct construction, it appears to be any portion of the independent suspension assembly of the original vehicle.
In the context of the claims, it is clear that the (steerable) independent suspension assembly is an “OEM” part of the converted/modified vehicle. Unfortunately, neither expert witness has provided a clear and unambiguous statement of what they consider this assembly to minimally comprise. Milton refers to D36 as a reference, being a Wikipedia article titled “Independent suspension”, which discusses a wide range of known suspension systems. While neither expert explicitly stated it, all of the discussion from both experts was implicitly directed to double wishbone suspensions. Neither mentioned alternative suspension arrangements.
I assume the intention was that “independent front suspension” is to be read as limited not by any structural feature or configuration, but only in the functional sense that suspension travel on one side is not transmitted to the other side. Such a construction is consistent with the functional language used elsewhere in the claims and with the objectives of avoiding the problems associated with rigid live axle assemblies discussed in the description.
Nevertheless, to my mind, the term “steerable independent suspension assembly” refers to all of the components necessary in the suspension assembly. I do not see how “the suspension assembly” could be read as equivalent to “a suspension component”. Certainly, an assembly must include a plurality of components.
I conclude the steerable independent suspension assembly comprises all of the suspension components necessary for allowing independent suspension travel of the left and right wheels. In a double wishbone suspension system this would be the upper and lower arms and resilient shock absorber. If other suspension systems are used, it would include their constituent elements, e.g., all of the linkages in a multi-link suspension.
Novelty
Novelty Legal Principles
Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).
It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”[22]
This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.[23]
[22] [1977] HCA 19 at [20]; 137 CLR 228 at 235
[23] Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] 91 ALR 513 at 517; 16 IPR 545
Australian courts have often identified the principles of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited[24] as the criteria for determining anticipation by a prior publication. Most relevantly, to anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented.
[24] [1972] RPC 457 at 485 – 486
The disclosure necessary to support the ground of lack of novelty has also variously been described as “planting the flag” (ICI Chemicals & Polymers Ltd. v The Lubrizol Corporation Inc[25]), “the accuracy of a sniper, not the firing of a 12 gauge shotgun” (Apotex Pty Ltd. v Sanofi-Aventis[26]) or “what a prior art document teaches” as distinct from “what might be ‘included’ or ‘encompassed in’ a prior art document” (Sanofi-Aventis Australia Pty Ltd. v Apotex Pty Ltd. (No 3)[27]). These various descriptions of the disclosure necessary to support lack of novelty emphasise that there is a degree of specificity that is required.
[25] [2000] FCA 1349 at [51]; 106 FCR 214
[26] [2008] FCA 1194 at [91]; 78 IPR 485
[27] [2011] FCA 846 at [180]; 92 IPR 320
In their submissions, the opponent relied upon two documents:
(a)a YouTube video entitled “4WD conversions by Advanced 4x4 vans: Overland Expo 2015”, posted on 21 May 2015 – (which was referred to as “D4”); and
(b)an internet forum post entitled “2500/3500 VAN IFS 4WD conversion” on the Diesel Place forum – (which was referred to as “D44” or the “Quigley document”)
“4WD conversions by Advanced 4x4 vans: Overland Expo 2015” – D4
D4 documents a discussion at an event known as the Overland Expo 2015, which appears to be an event at which various companies exhibit goods and services related to what might be termed “adventure travel” (which could include travelling to remote areas to camp or the like). The discussion is between the videographer and a person (Ryan) who had worked on converting a Nissan NV3500 cargo van from 2WD to 4WD.
The contents of the video are discussed in the evidence. Notwithstanding the 8-minute length of the video, only about 7 seconds are relevant to novelty. In those seconds, the camera is oriented in an attempt to capture images of the underside of the front of the van. Mr Milton then uses stills taken from the video and provides his opinion as to what is shown.
Ultimately, to my mind, discussion on D4 came down to one particular question – does D4 disclose a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly?
On this question, Mr Milton referred to the following annotated still of the video:
Mr Milton stated in Milton 1 that D4 disclosed a sub-frame 9 for attachment to a chassis 10 of the vehicle[28]. Mr Milton was of the opinion that the sub-frame mounted and supported the independent suspension assembly, the lower arm of which Mr Milton labelled as 25 in the screen capture, and the front axle assembly, which Mr Milton labelled as 6 in the screen capture.
[28] Annexure DM-2
In Butterworth 1, Mr Butterworth responded stating:
“Mr Milton refers to the annotated screenshot to identify a sub-frame (9). I disagree. I have looked at the annotated screenshot, and item 9, which appears to be pointing to a hole in the chassis, does not identify a sub-frame. I can see a chassis there, and it looks to me like they have attached the independent suspension assembly and the front axle assembly directly to the chassis, not a sub-frame.”[29]
[29] Butterworth 1 at [8]
In response, Mr Milton stated:
“At [8] in his declaration, Mr Butterworth indicates that he disagrees that item 9, shown in one of the screenshots in Annexure DM-2, is a sub-frame, stating that ‘item 9 … appears to be pointing to a hole in the chassis’. The arrow for item 9 points not to the hole but to what is behind the hole, which I consider a sub-frame. Mr Butterworth also states that ‘it looks to [him] like they have attached the independent suspension assembly and the front axle assembly directly to the chassis, not a sub-frame’. I can see from the screenshots that the control arms 25 are mounted to a sub-frame and thus would disagree that the independent suspension assembly has been attached directly to the chassis.”[30] (emphasis added)
[30] Milton 2 at [8]
I noted at the hearing that my first impression was that Mr Milton believed item 9 was referring to the element that contained the hole and that this element was welded to the chassis. However, I noted that Mr Milton’s statement in Milton 2 dispelled that impression. I asked how, given the position taken by Mr Milton, it was possible for D4 to show a sub-frame when it was hidden from view.
The opponent stated that if I was saying that the element containing the hole was not a sub-frame, then I was stating that it was part of the chassis. Noting that I had observed that the element had been welded to the chassis, the opponent believed it was not part of the chassis. However, I noted that the figures of the present application showed something labelled as a chassis having longitudinal bars and transverse bars which were clearly welded together, which meant that elements could be welded to other elements and still be considered part of the chassis and, as such, given the evidence, the element carrying the hole 9 is to be considered part of the chassis.

The opponent disagreed with my characterisation that the element carrying the hole 9 was part of the chassis. They noted that, while a chassis could be a number of components welded together, so was the sub-frame of the present invention, and the applicant should have the benefit of any ambiguity in what might be the chassis and what might be the sub-frame. The opponent saw a chassis as a conventional “baseline” of the underside of a vehicle and anything depending from, and not integral with, that baseline was a sub-frame. They noted that the passage cited above shows Mr Milton disagreeing with Mr Butterworth’s assertion that the independent suspension assembly and the front axle assembly were attached directly to the chassis, not a sub-frame, where he said that:
“I can see from the screenshots that the control arms 25 are mounted to a sub-frame and thus would disagree that the independent suspension assembly has been attached directly to the chassis.”
The opponent then submitted that they did not need to rely upon the downwardly-depending structure with the hole. They submitted that it was what was behind that element that supported the lower control arms of the IFS.
I cannot agree with the opponent’s position.
It seems clear to me that, notwithstanding previous comments, the opponent is saying that the element in D4 which contains the hole is not to be equated with the sub-frame of the claims. Whether the element can then be considered to be part of the chassis (as Mr Butterworth believes) is moot however, because it follows from the opponent’s position that D4 does not show a sub-frame as claimed. While it may be the case that a photograph or picture (or video as is the case here) does not need to portray a something which the skilled addressee would be able to be perceive (as per House of Lords in C Van der Lely NV v Bamfords Ltd[31]), it is the case that there is no agreement between the experts as to what D4 discloses.
[31] [1963] RPC 61
Furthermore, and of great importance, is the fact that Ryan, apparently having been intimately involved in the conversion of the vehicle being discussed in the video, does not say in the video that a sub-frame is present. Taking what appears to be the relevant part of the video (at about the 1-minute mark), the conversation is as follows:
Ryan: “…you can just call a dealer and say hey send it to Advanced so they’ll send it to us from the factory. And then once we get it, we, uh, take out all the front end components. We add in our own, you know, IFS differential in the front so that you can actually drive the front wheels. We add a rear transfer case, driveline to tie it all the way together, we put a floor shifter, 4x4 indicator light, and then when it leaves our shop you’ve got a four wheel drive van.
Presenter: What do those parts sourced from? What vehicle are they coming from?
Ryan: It depends. Because …like um, these we had to match the rear axle. A company called American Axle makes the rear axle, so we matched it with a front differential from American Axle; we’ve got to match gear ratios and that kind of stuff. We keep the stock steering and brakes, so that if you got to do regular maintenance on it its easy, we don’t change any of that. The transfer case is made by a company called New Process. New Process does transfer cases in a lot of Nissans, GM (unintelligible). They just, you know, they outsource it and put ‘em in the vehicle. So it’s all standard parts you can find anywhere if you ever got to maintain them they’re easy to do.
Presenter: Wow. That is cool. And I hate to ask a stupid question, but I’ve never seen one of these before. You know you see guys that will rip out the suspension and put in a solid axle with leaf springs or something, but that’s not what you doing right?
Ryan: No, well, um, Nissans we don’t do that, Nissans we’re stuck with the independent suspension, it’s some of the limitations with the frame, but if you look around here, you’ll find some of our vans in Ford and GM; in fact tomorrow we’ll have a Chevy van down here that’s done the solid axle conversion in the front.
As is clear, there is no discussion of a requirement to re-site the IFS. Indeed, it would appear that, given “limitations with the frame”, Ryan was “stuck” with the IFS as supplied.
I cannot find that the claims lack novelty in light of D4, as I am not satisfied that there is a clear disclosure of a sub-frame in D4.
“2500/3500 VAN IFS 4WD conversion” – D44 or “the Quigley document”
D44 is a series of posts forming a thread on a forum hosted by the forum community “Diesel Place”. D44 is composed of pages of various comments and images making up the thread. It is worth noting that some of the images are quite small.
The thread is a discussion, started by the user named “GoneNomad”, about 4WD conversions of a “2500/3500 Van”. It is not entirely clear from the thread the make of the van. While D4 is directed to a Nissan NV3500 van, and both “3500” and “Van” are in the title of the thread, the thread itself does not mention Nissan. Given that Diesel Place is a community “for “dedicated to Chevrolet and GMC diesel truck owners and enthusiasts”, it is likely the van is not the same as that disclosed in D4.
The discussion in D44 is ostensibly to a discussion around differences between what is originally installed in the 3500 van and changes made by a company known as “Quigley” (hence the occasionally reference in evidence to “the Quigley document”) when converting vans from a 2WD to a 4WD vehicle. There are several questions and answers and some comments made by the thread participants. As was noted by the applicant[32], none of the thread participants undertook the modification conducted.
[32] Applicant’s submissions at [48]
It is not the case that the images in D44 are “before” and “after” pictures of the same vehicle. The thread includes comments from GoneNomad such as:
“The 2WD van is my 2010 3500 LMM van”[33]
[33] D44, page 7
[34] D44, page 10
“FWIW, I'm seriously considering not having Quigley do my 4WD conversion.”[34]
As such, there is doubt that the images of a vehicle which has purportedly undergone a 4WD conversion are actually showing a vehicle that has undergone a conversion. However, given the comments, it is reasonable to conclude that these images are post-conversion images.
Like D4, the key consideration was whether D44 disclosed a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly.
As to this question, Mr Milton firstly noted that D44 included the comment that:
“The parts needed from a donor 4WD HD pickup are: Rear torsion bar mount crossmember (will have to be modified or could also make one from scratch), torsion bars, lower control arms, front hubs, transfer case with output shaft yoke, tranny tailshaft housing, front driveshaft, front diff carrier, front axle shafts, and maybe the tailshaft out of the tranny”[35],
specifically highlighting the term “front diff carrier”.
[35] D44, page 11
He then noted that D44 has the comments that:
“Quigley makes a new crossmember to hold the front diff, and it appears to be mounted mainly, if not entirely, to the rear lower control arm mounting bracket.”[36] (my emphasis)
[36] D44, page 14
He also provided an annotated picture of one of the images in the thread:
In Butterworth 1, Mr Butterworth responded stating:
“… Mr Milton refers to page 14 of the blog, where it says, ‘Quigley makes a new crossmember to hold the front diff, and it appears to be mounted mainly, if not entirely, to the rear lower control arm mounting bracket,’ and Mr Milton equates this to the Bus IP sub-frame. I don’t agree that the new crossmember is equivalent to the Bus IP sub-frame. It doesn’t appear to me that the new crossmember is supporting the lower control arm, which is part of the independent suspension assembly. The control arm appears to be mounted straight to the chassis so it is not supported by the crossmember.”[37]
[37] Butterworth 1 at [14]
In Milton 2, Mr Milton responded saying:
“I cannot see how it should be the case that the crossmember, by being mainly/entirely mounted to the bracket, supports the control arm mounted via that bracket. Mr Butterworth also states that "[t]he control arm appears to be mounted straight to the chassis so it is not supported by the crossmember" I disagree with this statement.”[38]
[38] Milton 2 at [18]
The opponent submitted that the crossmember, along with the mounting brackets for the two rear lower control arms attached to the chassis at either end of the crossmember (see annotated image above), collectively, constituted a frame and were, therefore, equivalent to the sub-frame of the claims at the level of generality that was in the claim.
At the hearing, I questioned the inclusion of the brackets as part of the sub-frame. I noted that the brackets were called “lower control arm supporting brackets”, which suggested the brackets supported the control arm. I noted that the claim required a sub-frame “for mounting and supporting” the IFS and front axle assembly, while it appeared that the opponent was submitting that, because the sub-frame and the IFS assembly were mounted to the same bracket, that meant the sub-frame was mounting and supporting the IFS. The opponent submitted that the label given to the brackets in D44 was not helpful in relation to the claims. The opponent submitted that, regarding the specification of the present application, “sub-frame” would be readily understood to include the crossmember, and the mounting brackets at either side, of D44.
The applicant submitted that D44, in the paragraph quoted at [91] above, states that Quigley makes a new crossmember, but says nothing about new mounting brackets and the passage could be said to be referring to existing brackets. The applicant also noted that the crossmember was stated in D44 to “hold the front diff” and not the suspension control arms as was required by the present application. The applicant also submitted that Mr Milton was referring to the crossmember as being equivalent to the sub-frame of the claims, since, in the passages he quoted, the focus was on supporting the front differential and, thereby, the front axle assembly. The applicant was of the opinion that the brackets were contiguous with the chassis, and, therefore, the crossmember was bolted to the chassis. The applicant also noted that the other arm of the lower control arm was shown in D44 as being mounted to another part of the chassis. This mounting point is visible in the image at [92] above as the silver bolt in the black component that is more or less on the same horizontal line as the words “[sub-frame for attachment to a”.
As such, noting that the claims required the sub-frame:
a)not be an existing component;
b)not be the same as the chassis; and
c)must mount the independent suspension,
and noting that:
a)the mounting brackets were not stated in D44 as being something added during the conversion and, therefore, were an existing component;
b)the brackets were contiguous with the chassis; and
c)the independent suspension was not mounted solely by the combination of crossmember and brackets, but also by another part remote from them,
the applicant concluded that D44 did not disclose the sub-frame of the claim.
In reply, the opponent directed my attention to a series of figure in D44 which they submitted showed the addition of mounting brackets as part of the conversion and, therefore, the brackets could be considered part of the sub-frame.
I cannot agree with the opponent.
In my opinion, the crossmember of D44 falls within the scope of the term “sub-frame” in the claims. However, as to whether D44 disclose what is claimed, the evidence does not assist the opponent. Mr Milton’s disagreement with Mr Butterworth is with Mr Butterworth’s statement that the crossmember is mounted to the chassis. It is clear that Mr Milton views the crossmember as being mounted to the brackets. Mr Milton does not mention the brackets when discussing the sub-frame of the claims. That position comes solely from the submissions. His focus is solely on the crossmember.
Moreover, it is simply not clear that the brackets mentioned in D44 are new components. The page that I was referred to is this:
As is clear, figures are small, and the page says nothing about conversion. Indeed, the page seems to be addressing something about the differences between frame sections of a 2500/3500 van and a 2500/3500 pickup truck. This suggests to me that what the figures show are elements of an existing frame. To the extent that there might be small items of the figures that could be said to be brackets that are being added, they appear to be brackets being added during the construction of an existing frame, prior to conversion.
I cannot find clear and unmistakeable directions in D44 that lead to a conclusion of anticipation. Hence, I cannot find that the claims lack novelty in light of D44.
Inventive step
The law
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:
For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
Subsection (3) prescribes the information that may be considered as:
The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available, and information made publicly available through doing an act.
Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd[39] a problem-solution process was set out when Aickin J stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
[39] (1981) 148 CLR 262
Nevertheless, the use of the problem-solution approach is not universal. When an invention does not solve or address a particular problem, the use of the problem solution approach would not be appropriate. Moreover, the Full Bench of the Federal Court in AstraZeneca AB v Apotex Pty Ltd[40] (“AstraZeneca”) effectively stated that, when formulating the problem, it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
[40] [2014] FCAFC 99 at [202]-[203]
In Aktiebolaget Hassle v Alphapharm Pty Ltd[41] (“Alphapharm”), the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd where Graham J posed the reformulated Cripps question:
“Would the notional research group at the relevant date, in all the circumstances, … directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?” [42]
[41] [2002] HCA 59
[42] [1970] RPC 157 at [187]
However, the opponent submitted that the reformulated Cripps question in Alphapharm was however not of universal application. The opponent noted that, in Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited the Court stated:
“For there to be an inventive step, there must be some difficulty overcome or some barrier crossed.”[43]
Notwithstanding this though, the opponent did not eschew the approach set out in the Cripps question.
[43] [2013] FCA 163 at [95]
In the present case, the opponent contended that the claims lacked inventive step in light of the common general knowledge (CGK). The opponent also submitted that the invention so far as claimed lacked an inventive step on the basis of the CGK in combination with the disclosure of D4 or D44.
Problem to be addressed
Neither party provided submissions on what problem was being addressed. Moreover, neither Mr Milton nor Mr Butterworth acknowledge any problems in the art. Instead, the specification indicates that 2WD vehicles, particularly buses, vans and trucks were increasingly being used in areas without sealed roads and, as such, 4WD and improved ground clearance was desirable. However, while the specification notes that modification of these vehicles from 2WD to 4WD and improving the ground clearance was known in the art, these conversions, as presently known, used a “live axle” design involving a solid front beam design, and more vehicles had an IFS. The solution presented in the specification is directed to conversion of a 2WD vehicle with independent front suspension (IFS) to operate as a 4WD and/or improved clearance.
In the circumstances, the problem to be addressed is conversion of a 2WD vehicles with IFS so that it possesses 4WD.
Common general knowledge
In Minnesota Mining & Manufacturing Co. v Beiersdorf (Australia) Ltd Aickin J stated:
“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.” [44]
[44] [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292
In Alphapharm at [31], it was indicated that information should not be treated as part of the common general knowledge “in the absence of evidence of its general acceptance and assimilation”.
In the EIS Mr Milton provided a table[45] listing features recited in the claims of the accepted specification and provided references to documents allegedly showing the same feature. With the exception of claims 14 and 15 and the features of claim 18 of uncoupling the stub axles from the independent suspension assembly and coupling the independent suspension assembly with the front axle assembly to support a corresponding front wheel, Mr Milton’s opinion was that the corresponding feature was within the general body of knowledge available to all in the trade before the earliest priority date. For clarity, contents of this table for claim 1 were as follows:
[45] Exhibit DM-5 to Milton 1
The contents of this table were not disputed by Mr Butterworth apart from his comment:
“In 1.5 of the comparison document DM-5, Mr Milton states that D43 discloses a sub-frame. I disagree. I have reviewed D43, which is an archived webpage from Wikipedia defining a Four Wheel Drive, and there is no mention of a sub-frame. Further, it is my experience with 4WD conversion vehicles that a sub-frame is not necessary for all types of vehicles. A subframe is typically used only for raising, or lifting, the vehicle.”[46]
[46] Butterworth 1 at [18]
I have already mentioned D43 above and noted that it describes sub-frames. It was clear to all parties that Mr Butterworth had mistakenly viewed D42 before making this statement. Nevertheless, it is clear from the last sentence of this paragraph that Mr Butterworth is aware of sub-frames.

As such, there seems to be little doubt that the components listed in the third column of the table, considered individually, were well known in the art. However, care must be taken here since there is a difference between the wording in the second and third columns with the result that it is not a given that the features as claimed are CGK.
For example, column 3 indicates that “front axle” is CGK and provides references to page 23 of D47, D32 and D39 as support for this. However, as is clear from above, the second column does not merely recite “front axle”. Rather, it recites:
“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”
In this regard, (i) page 23 of D47 describes a “front drive axle” which might also be said to describe a stub axle, but says nothing about whether the stub axle is considered part of the “front axle assembly”, or IFS, (ii) D32 is a Wikipedia entry titled, and describing, an “Axle”, but says nothing of IFS or stub axles, and (iii) D39 is a Wikipedia entry titled “Stub axle” but does not mention whether it can be considered to be part of a “front axle assembly” and does not state that it is attached to the IFS.
In a similar way, and of importance in this opposition, column 3 indicates that a “sub-frame” is CGK and provides a reference to D43. However, the claims do not define a sub-frame per se. As seen in column 2, the claim defines a sub-frame that mounts and supports the independent suspension assembly and the front differential assembly.
Inventive step in the light of the common general knowledge alone
Ultimately, as was the case for novelty, the principal area of discussion was whether the sub-frame, as it was defined in the claims, was CGK. The opponent submitted that the evidence identified each feature of the claims as part of the common general knowledge at the priority date. However, I would reiterate the concerns I have just set out about this evidence from Mr Milton.
For the sub-frame, the opponent referred to D43 and noted that it stated:
“There are generally three basic forms of the subframe.
1.A simple ‘axle’ type which usually carries the lower control arms and steering rack.
2.A perimeter frame which carries the above components but in addition supports the engine.
3.A perimeter frame which carries the above components but in addition supports the engine, transmission and possibly full suspension. (As used on front wheel drive cars)”
The opponent submitted that what a sub-frame was used for, which typically included mounting/supporting an independent suspension assembly or front axle assembly (comprising replacement stub axle assemblies) was the use put forward in the present application. The opponent submitted that the sub-frame of the present application was given no special meaning and did not serve a purpose other than those for which it was well known.
The opponent also submitted that a “complementary” part of their case was the apparent advantage of the sub-frame in that it provided lifting. In the opponent’s opinion it was known that it was desirable to lift a 4WD, that this was not an unusual desire, and it was well known to use a sub-frame in that context. They relied heavily upon the final sentence of paragraph [18] of Butterworth 1, which I have already set out in [117] above, noting that Mr Butterworth admitted that a sub-frame is typically used only for raising, or lifting, a vehicle.
The opponent submitted that, as such, this admission established that a sub-frame was known and typically used in vehicle conversions or modifications, and the PSA would use a sub-frame as a matter of routine in the manner it was usually used in – that is, to mount the lower control arms/full suspension and the transmission.
The applicant submitted that the evidence did not establish that the provision of a sub-frame was CGK in a conversion. They submitted that there was not a single example in the evidence of any 2WD to 4WD conversion that included a sub-frame. The applicant noted that the evidence showed that this area was a well-developed field which had existed for very many years, with challenges being known. They placed particular emphasis on the fact that no person had provided a single example of the use of a sub-frame for 2WD to 4WD conversion. The applicant stated that I should not be quick to conclude that the provision of a sub-frame was an obvious thing to do based on a single sentence of Mr Butterworth saying, in highly ambiguous and generalised terms, that a sub-frame is typically used for lifting a vehicle. The applicant was of the opinion that, if such an act were typical in this context, there would have been at least one example, and there wasn’t.
I agree with the applicant. I will discuss this in relation to the independent claims.
Claims 1 and 16
While I accept that sub-frames are known, it could possibly be said from the evidence on file that the use of sub-frames during the manufacture of a vehicle was CGK, but nothing more. In my opinion, the evidence does not establish that the provision of a sub-frame as part of a 2WD to 4WD conversion was CGK. It certainly cannot be said that the provision of a sub-frame and the “mounting and supporting the independent suspension assembly and the front axle assembly”[47] on that sub-frame was CGK.
[47] Claim 1 for example
In this regard, DM-5 to Milton 1 states that D39 establishes that sub-frames are CGK. However, as I have noted at [119] above, the wording in the claim and the wording in the table of DM-5 are often different. This is the case here. Stating that a “sub-frame” is CGK, does not establish as CGK that “sub-frame as part of a conversion” is CGK. Indeed, in Milton 1 there is no mention from Mr Milton of the use of sub-frames in a conversion, whether this was his own work or the work of others. This is despite Mr Milton’s 20 years of experience in conversions, as well as having “seen the accepted specification prior to preparing this comparison document”[48] before setting out what was CGK.
[48] Milton 1 at [18]
Furthermore, while Mr Milton has stated that D4 (and D44) disclosed a sub-frame, I note that, in D4, when stating what was added in during the conversion, despite being intimately involved in the conversion of the vehicle being discussed in the video, the convertor (Ryan) does not say in the video that a sub-frame is added.
To my mind, the lack of any mention by Mr Milton that he used sub-frame in conversions, and the lack of any mention by Ryan of the use of sub-frames during the conversion discussed in D4 are quite telling.
Moreover, D44 does not stand for the proposition that sub-frames are added as a matter of routine. It could be said that a sub-frame (in the sense that I have interpreted the scope of that term – see [46] above) was installed in the instance set out in D44, but it can go no further than that. There is certainly nothing in D44 that establishes the addition of a sub-frame as a long-standing, wide-spread practice in the conversion art.
Claim 18
Turning to the use of sub-frames when lifting a vehicle, which the parties said was the focus of claim 18 of the present application (of which I will have more to say later in this decision), the opponent’s one point of focus here was the final sentence of paragraph [18] of Butterworth 1. As already set out above, this sentence is:
“A subframe is typically used only for raising, or lifting, the vehicle.”
At this point I will mention that Mr Butterworth sought to qualify this statement in Butterworth 2 by stating that the invention as presented in the present application was to achieve “highly significant lift”[49]. However, whether this qualification is present or not, the outcome is the same. As such, as noted at [11] above, I declined to admit Butterworth 2.
[49] Butterworth 2 at [10]
In any event, taking the statement made at paragraph [18] of Butterworth 1 as generally true, and assuming all other features of the claim are present in the CGK, the claim is not anticipated. This is because the claim, at the relevant portion, states that what is to be done is:
“mounting and supporting the independent suspension assembly and the front differential assembly on a sub-frame” (my emphasis)
There is no evidence to establish that the PSA, having installed a sub-frame to achieve lift, would, as a matter of routine, then proceed to take the emphasised features and mount them to, and support them by, the sub-frame. Consistent with what I have noted above, stating that a “sub-frame” is CGK (as is the case in DM-5), does not establish that a “sub-frame as a mounting and supporting element for an IFS assembly and a front differential assembly to supply lift” is CGK. Nothing like this is mentioned in the evidence as being the usual practice.
Inventive step in the light of the common general knowledge alone – conclusion
It follows that, based on the evidence provided, I cannot find that the invention claimed in the independent claims lacks an inventive step in light of CGK. It follows that I cannot find that the dependent claims lack an inventive step in light of CGK.
Inventive step in the light of the common general knowledge in combination with prior art information
In addition to a lack of inventive step in light of CGK, the opponent also submitted that the claims lacked an inventive step in light of either of D4 or D44, when those documents were combined with the CGK. This matter can be dealt with succinctly.
Inventive step in light of D4
As is clear from the discussion under “Novelty” above, D4 does not disclose a sub-frame. I have already concluded above that the evidence does not establish that the provision of a sub-frame as part of a 2WD to 4WD conversion was CGK. I have also concluded that the provision of a sub-frame and the “mounting and supporting the independent suspension assembly and the front axle assembly”[50] on that sub-frame was CGK. Consequently, it cannot follow that the PSA, in seeking to solve the problem of conversion of a 2WD vehicles with IFS so that it possesses 4WD, would, as a matter of routine, firstly provide a sub-frame and, secondly, proceed to mount the independent suspension assembly and the front axle assembly to, and support them with, the sub-frame.
The claims do not lack an inventive step in light of D4.
[50] Claim 1 for example
Inventive step in light of D44
I have already found that D44 discloses providing a crossmember, and that this crossmember can be considered to be a sub-frame, as I have interpreted that term, supplied in the process of a 2WD to 4WD conversion. However, once again, the claims require more than the plain step of provision of a sub-frame. They require the provision of a sub-frame with a capability of mounting and supporting the IFS, at the very least. D44 discloses that the crossmember is mounted to the lower control arm supporting brackets, and the brackets support the lower control arm of the independent suspension, not the crossmember. That is, D44 actively teaches away from the clamed solution of having the crossmember (i.e. sub-frame) mounting and supporting the IFS. There is nothing in the evidence that establishes that the PSA would, as a matter of routine modify, the approach shown in D44 and mount the IFS to the crossmember.
The claims do not lack an inventive step in light of D44.
Inventive step in the light of the common general knowledge in combination with prior art information – conclusion
It follows that, based on the evidence provided, I cannot find that the invention claimed in the independent claims lacks an inventive step in light of D4 or D44 when either is combined with CGK. It follows that I cannot find that the dependent claims lack an inventive step in light of D4 or D44.
Inventive step – overall conclusion
The opponent has not made out this ground of opposition.
Manner of manufacture
The opponent submitted that the claims were directed to components that were known to be suitable for driving the front wheels of, and/or raising, a vehicle with IFS. The opponent noted Commissioner of Patents v Microcell Ltd (“Microcell”) where it was held at:
“We have in truth nothing but a claim for the use of a known material in the manufacture of known articles for the purpose of which its known properties make that material suitable. A claim for nothing more than that cannot be subject matter for a patent and the position cannot be affected either by the fact that nobody thought of doing the thing before, or by the fact that, when somebody did think of doing it, it was found to be a good thing to do”[51],
and alleged that the claimed invention did not satisfy the threshold requirement for an invention, because taking existing components and making them available in a kit was not a manner of manufacture. They submitted that this was nothing more than use of components known already in the art for their known purpose.
[51] [1959] HCA 71 at [15]; (1959) 102 CLR 232 at [251]
The applicant submitted that the opponent’s reliance on Microcell was misconceived. They noted that, notwithstanding that Microcell sets out a principle that a claim which is for nothing but the new use of a known substance whose known properties make it suitable does not constitute a manner of manufacture, they noted that N.V. Philips Gloeilampenfabrieken and Philips Lighting Pty Limited v Mirabella International Pty Ltd[52] (“Philips”) and Bristol‑Myers Squibb Co v F H Faulding & Co Ltd[53] (“Bristol-Myers”) had set out that the principle only applies where it can be said that there is an admission of lack of novelty or inventive step on the face of the specification. The applicant submitted that there was no such admission.
[52] [1995] HCA 15, (1995) 183 CLR 655
[53] [2000] FCA 316
I do not consider that the opponent has made out their case.
The “threshold of inventiveness” test set out in Philips was confirmed by Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd[54]. The High Court in Philips stated that manner of manufacture can be a threshold question:
“if it is apparent on the face of the specification that the quality of inventiveness necessary for there to be a proper subject of letters patent under the Statute of Monopolies is absent, one need go no further”[55]
[54] (1998) 152 ALR 604, (1998) AIPC 91-401
[55] [1995] HCA 15 at [9]
In Bristol-Myers the majority summarised the effect of the Philips case as follows:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non-inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
With regard to what is encompassed by the phrase “on the face of the specification”, it must be noted that the court in Bristol-Meyers continued on from the above passage to say:
“Some elaboration, however, is required in relation to what the specification reveals as “known”. If a patent application, lodged in Australia, refers to information derived from a number of prior publications referred to in the specification or, generally, to matters which are known, in our view the Court - or the Commissioner - would ordinarily proceed upon the basis that the knowledge thus described is, in the language of s 7(2) of the 1990 Act, part of “the common general knowledge as it existed in the patent area”. In other words, what is disclosed in such terms may be taken as an admission to that effect. In substance, we think, that is what happened, both in Microcell and in Philips.”[56]
[56] [2000] FCA 316 at [30]
As I understand this statement, the assessment of whether the invention passes the threshold of inventiveness is done in light of the prior knowledge (which can be considered to be the CGK) as revealed by the specification. Evidentiary references would seem to play no part in this assessment. It seems apparent that the range of the enquiry cannot be extended beyond the content of the specification. To introduce extraneous evidence as to CGK seems to trespass into the decision to be made in relation to section 18(1)(b)(ii).
This approach is supported in Apotex Pty Ltd (formerly GenRx Pty Ltd) v Sanofi‑Aventis where it was said:
“… In NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 at 664 the High Court quoted with approval the following passage from the NRDC Case 102 CLR 252 at 261–262 per Dixon CJ, Kitto and Windeyer JJ:
“the Commissioner may properly reject a claim for a process which is not within the concept of a “manufacture”. But the case cited [i.e. Microcell] shows also that even if the process is within the concept the Commissioner is not bound to accept the allegation of the applicant that it is new, if it is apparent on the face of the specification, when properly construed, that the allegation is unfounded”.
The latter decision has subsequently been discussed by the High Court in Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171, particularly at [36]–[40] per Brennan CJ, Gaudron, McHugh and Gummow JJ and in Lockwood Security Products 235 ALR 202; (2007) 81 ALJR 1070 at [106]–[107]. It is made clear that external evidence cannot be relied upon.”[57] (my emphasis)
[57] [2008] FCA 1194 at [119]–[120]
Taking what is in the specification, the claimed invention meets the threshold requirement. I can discern nothing which shows that the claimed invention lacks an inventive step.
Furthermore, if this approach is not correct, and evidence of what is CGK can play a role in assessing whether the invention passes (or does not pass) the threshold of inventiveness, then my decision remains the same. At the very least, the opponent’s evidence does not establish that the sub-frame that forms part of the conversion system/kit, possessing the capability that is defined, was CGK in the art of vehicle conversions.
On the evidence before me, I cannot find that the claims do not define a manner of manufacture.
Lack of utility and lack of clarity and support
The opponent sought to rely upon their written submissions for these remaining grounds. Those written submissions were:
“Other Grounds of Invalidity
The Opponent also relies upon inutility as reflected in paragraph 4.1 of the Amended Statement of Grounds and Particulars. In particular, the promise of the invention is not met by claim 18, which does not inevitably provide either or both of improved clearance and improved traction.
The Opponent submits that claim 1 and claims appended to it lack clarity and support, and do not define the invention. In particular, as best understood these claims encompass the componentry in question in an existing vehicle.
The Opponent further contends that the term “front differential assembly” lacks clarity for the reasons discussion by Mr Milton in Milton #2 at [16].”[58]
[58] Opponent’s written submissions at [114]–[116]
Inutility
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be useful. Moreover, in Apotex Pty Ltd v AstraZeneca AB (No 4) Jagot J pointed out that lack of utility requires evidence, not just speculation:
“Ultimately, an asserted lack of utility must be established by appropriate evidence, not be mere speculation that the invention will not work or meet the promise set out in the specification.”[59]
[59] [2013] FCA 162 at [352]
Paragraph 4.1 of the SGP states:
“The alleged invention lacks utility by failing to meet the objective(s) thereof identified in the specification. It is stated at [001] in the specification that “[t]he present invention relates to the modification of a two-wheel drive vehicle by increasing the ground clearance of the vehicle and/or improving traction of the vehicle by conversion of the vehicle to a four wheel drive vehicle”. For example, nothing recited in claims 18 and 19 necessarily results in either increased ground clearance or conversion to a four-wheel drive vehicle.”
This is the only evidence that addressed this ground.

The SGP speaks of the invention resulting in “increased ground clearance”. Moreover, the parties before me were insistent that claim 18 was directed to improving ground clearance. However, looking more closely at the language of claim 18, I note that:
(a)the vehicle to be modified is defined in terms of being “a two-wheel drive vehicle having “at least two rear wheels coupled to a transmission output of the vehicle”, and
(b)a front differential is mounted to a sub-frame.
As such, ignoring the superfluous “at least” in the claim, the vehicle to be modified is limited to being rear-wheel drive 2WD and the front differential must be a new component introduced by the method, as the vehicle prior to conversion would have had no need for a front differential. This is the provision of 4WD capability. Claim 18 is not limited to improving ground clearance.
In any event, regardless of the result that claim 18 is seeking to achieve, Mr Milton provided no evidence that, in implementing this claim, he would produce something which would not provide either benefit. This reduces the opponent’s case one of mere speculation that the invention will not work.
This ground of opposition fails.
Lack of clarity and support – claim 1
In the SGP, under the heading “Claims not clear, succinct or supported by matter disclosed in the specification”, the following particular is raised with respect to claim 1:
“In claim 1, the language “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” is unclear. It is not clear whether the “rear axle assembly” is part of the vehicle pre-conversion and, if it is, whether it is a vehicle which is original (“original vehicle”) or a vehicle resulting from installation of particular (but not all) componentry of the system (“intermediate vehicle”). It is also not clear whether “coupled to a transmission output of the vehicle” describes the rear axle assembly or the rear wheels. It is also not clear whether the “steerable independent suspension assembly” is part of the vehicle pre-conversion and, if it is, whether the vehicle is an original vehicle or an intermediate vehicle.”
I cannot see a nexus between what was set out in the SGP and what was set out in the opponent’s written submissions. The opponent is seeking to argue a case that was not set out in the SGP. In any event, even accepting that the claims encompass componentry residing in an existing vehicle, I fail to see how the claims must necessarily lack clarity and support. There is nothing in the specification that states that, to the extent that there are components in the claim that are the same as those in existing vehicles, those components are not to come from other vehicles.
Clarity – front differential assembly
I have already discussed this term in [52]–[54] above. As I was able to construe this term, it follows that the opponent’s argument is moot.
Lack of utility and lack of clarity and support – conclusion
The opponent has not made out this part of its case.
Subsection 60(3) – section 40 – lack of support
As noted above, I had a number of concerns with respect to the claims under section 40; specifically subsection 40(3). On 9 September 2022, I exercised my power under section 60(3) of the Act to take into account grounds of opposition not relied upon by the opponent in their statement of grounds and particulars. Here I invited the parties to provide comment in regard to non-compliance with Section 40. I noted that, in my opinion, the claims lacked support for the following reasons:
(i)that the claimed feature of the sub-frame mounting and supporting the independent suspension assembly and the front axle assembly was inconsistent with the disclosed invention;
(ii)that an integrated differential housing and sub-frame was required to achieve the benefit of using the existing independent suspension assembly of the vehicle, and this was missing from the claims;
(iii)that a mounting bracket was essential to maintain the same (or close to the same) travel length of the shock absorbing member to achieve the goal of re-using the existing suspension assembly, and this was missing from the claims;
(iv)that new mounting saddles were required to provide lift at the rear axle to mount the leaf springs above the rear axle, and this was missing from the claims did not include feature of a mounting saddle to mount the rear leaf springs above the rear axle, they lacked support, and
(v)that a transfer case, and the associated driveline items, to transmit power to the front differential would appear to be essential in a 2WD to 4WD conversion system and kit have since these elements would not be present in the 2WD vehicle, and the claims did not include this feature.
The applicant provided submissions in chief about my concerns on 19 September 2022 (Applicant post-hearing submission in chief), the opponent provided submissions in answer on 30 September 2022 (Opponent post-hearing submission in answer), and the applicant provided submissions in reply on 13 October 2022 (Applicant post-hearing submission in reply).
Support – Legal principles
Subsection 40(3) as amended by the Raising the Bar Act states:
The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The requirement of support can be summarised as requiring that the scope of the claims “should correspond to the technical contribution to the art”.[60] This has been more fully explained as follows:
“the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in decision T 26/81, the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention.”[61]
[60] Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 at 659.
[61] Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 at 659-660 (citations omitted)
In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) (Merck), Burley J explored the requirement of support:
“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 breadth of the monopoly claimed.”[62]
[62] [2020] FCA 1477 at [546]-[547]
In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following test in order to determine whether a claim is supported by the description.
·Construe the claims to determine the scope of the invention as claimed,
·Construe the description to determine the technical contribution to the art, and
·Decide whether the claims are supported by the technical contribution to the art.
mounting and supporting the independent suspension assembly and the front axle assembly
As has been discussed above, the claims require 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. Moreover, as noted above, the front axle assembly may include more elements than just the stub axle assemblies, but it does not include the front differential. The independent suspension assembly is a functional definition and comprises all of the elements necessary to provide independent suspension operation. It is not a suspension component, but rather the whole assembly. It is inclusive of any form of independent suspension.
On the other hand, as is clear from above, 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. Nor is it clear how they could be, since direct mounting/attachment of the front axle assembly to the sub-frame would render the suspension inoperable. Instead, the stub axle assemblies are mounted to, and supported, by the ends of the upper and lower control arms of the independent suspension assembly. Moreover, as is also clear from above, there is no description of the complete independent suspension assembly being mounted to the sub-frame. As far as I can ascertain, the lower control arm of the IFS is mounted to the sub-frame while the upper control arm of the IFS is mounted to the chassis.
The applicant noted the lack of disclosure in the description of the stub axle assemblies being mounted directly to the sub-frame and the complete independent suspension assembly being mounted to the sub-frame. The applicant submitted that this was not unusual because, in their submission, the claims did not claim these features. They submitted that the claim only required that the sub-frame must be suitable for mounting and supporting the independent suspension assembly and front axle assembly, and that it was not a requirement that the independent suspension assembly and front axle be directly mounted to and supported by the sub-frame. Rather, the sub-frame must facilitate the means for such components to be mounted and supported. The applicant stated that the Merriam-Webster Dictionary define “support” as “assist, help”. They also submitted that Merriam Webster defined “mount” as “to attach to a support” and the PSA would interpret mounting to include some manner of attaching between the things being mounted. The application was of the view that, in light of the definition of “support” they provided, something may support another thing without being directly attached.
The opponent submitted, in essence, that the wording of the claim encompassed the mounting and supporting of the complete IFS and front axle assembly to be direct. As this was not disclosed, the claims lacked support.
I am not convinced by the applicant’s submissions.
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.
front differential and sub-frame
I noted in my request for further submissions that the specification taught a custom sub-frame which was integral with the front differential housing. I observed that the specification specifically stated that:
“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”[63],
and that Butterworth 1 also highlighted that the “custom housing that mounts to the chassis and the lower control arms”[64], which must be a reference to the integrally formed sub-frame and differential housing, is a very significant technical contribution of the present application. I observed that most claims made no reference to an integrated differential and sub-frame and that claims 3 and 18 appear to directly contradict the integral housing and sub-frame, as they specify “the housing being mounted relative to the sub-frame” and “mounting and supporting … the front differential assembly on a sub-frame” respectively.
[63] Description at [065]
[64] Butterworth 1 at [15]
The applicant submitted that, while some embodiments of the present invention employed a sub-frame which was integral with the front differential housing, this was not necessary to realise the benefits of the invention. They noted that paragraph [70] of the description stated:
“Unlike the previously described embodiment (which relates to a 4WD or an AWD conversion system), the transfer case assembly 130 does not need to be installed for undertaking the installation of the lift kit 100’. In further improvements, users of the lift kit 100’ may upgrade their lifted vehicles further by installing the transfer case assembly 130 and the front differential 144 with the associated front and rear drive shaft assemblies to simultaneously provide torque to the front and rear wheels of the vehicle.”[65] (emphasis in submission)
[65] Applicant post-hearing submission in chief at page 9
The applicant submitted that, accordingly, the technical contribution resided in the sub-frame and its benefits, and not any integral nature of the sub-frame and front differential housing.
The opponent, in essence, submitted that the sub-frame in the claims travelled far beyond the technical contribution in the quoted description passage. The opponent states, inter alia:
… “the Applicant in its description identifies a particular feature as being essential to the operation of the “invention”. It expressly indicates that the inventive concept consists of having the frame and differential in a particular configuration. To go beyond the concept in question results in non-compliance with section 40.”[66]
[66] Opponent post-hearing submission in answer at [33]
I have sympathy for the applicant’s position. I firstly note that the language of the specification is that the integral nature is “very important”. This is not necessarily “essential” as used by the opponent. While this might seem to be a quibbling semantic argument, when coupled with the applicant’s observations on paragraph [70], I am prepared to accept that it is not the case that the sub-frame must be integral with the differential housing. Consequently, I do not maintain my original position.
mounting bracket
I noted in my request for further submissions that it appeared that the presence of the mounting bracket (element 167 in the figure above) was a critical technical contribution to achieve the promised benefits of the claimed invention. I stated that the mounting bracket appeared to be required to allow the shock absorbing member (element 160) to maintain the same (or close to the same) travel length, which appeared necessary to achieve the goal of re-using the existing suspension assembly (as noted in paragraphs [059] and [065] of the specification) after the mounting point of the lower control arm of the IFS was dropped.
The applicant submitted that:
“… the mounting bracket ‘advantageously’ configured to maintain the travel length of the shock absorbing member. This is an added advantage, not a required advantage.”[67]
[67] Applicant post-hearing submission in chief at page 10
They submitted that there was more than one way to alter the travel length of the shock absorber beyond the use of the mounting block and that:
“… a PSA would readily understand that in many instances, the travel length of the shock absorber may be varied by other known methods. For example, some shock absorbers such as airbag shock absorbers are electronically adjustable and therefore a mounting bracket may not be needed where the vehicle’s OEM suspension assembly comprises electronically adjustable airbag suspension. Clearly, the use of the mounting bracket 167 is a non-essential feature which at best may only be required in some scenarios.”[68]
[68] Applicant post-hearing submission in chief at page 10
The opponent submitted that:
“The salient point is that the Applicant in its written submissions and the drafter of the specification identified the bracket as an important/vital part of the invention. The Applicant contends that there are many instances where the travel length of the shock absorber might be varied instead of utilising the mounting bracket described. However, the specification, properly understood, teaches the essential benefit of that bracket, and no other means are identified”[69]
[69] Opponent post-hearing submission in answer at [36]
The applicant responded that:
“… the term ‘advantageous’ is not synonymous with ‘vital’ and/or ‘essential’ … some features/integers may be advantageous without being required to achieve the benefits of the inventive concept”[70]
[70] Applicant post-hearing submission in reply at page 5
Having considered the issue, I find myself agreeing with the applicant in this instance. While it may be the case that the IFS of the converted vehicle may not work well (or very badly) in the absence of a mounting bracket, the advantage of maintaining travel length of the shock absorber of the IFA has the characteristic of an additional advantage. It is not a necessary part of reusing the original IFS of the vehicle as part of the conversion. Consequently, I do not maintain my original position.
mounting saddle
In my request I noted that claim 18 is directed to a method for modifying a vehicle. I further noted that the applicant, at the hearing and at paragraphs [23] and [94] of their written submissions, were insistent that claim 18 was directed to the method of lifting a vehicle (as described in paragraph [070] of the specification). That is, the claim had, as its goal, increasing ground clearance. I noted that, if the applicant’s position was correct, increased ground clearance was achieved in the present application by lifting at both the front and the rear axles. I noted that paragraph [053] of the specification stated that lift at the rear axle was achieved by decoupling the original leaf springs (which were originally mounted below the rear axle), shifting the rear axle assembly below the leaf springs and using new saddle members provided as part of the kit to mount the leaf springs above the rear axle. No other method of achieving lift at the rear axle was disclosed and, as such, these method steps appeared to be essential to provide the desired lift and improved ground clearance and the steps set out in paragraph [053], as well as the replacement saddles, were features that were required in the claims. As no claim had these features, I noted that potentially all claims 1–20 lacked support.

However, when discussing the opponent’s ground of lack of utility, at [160] above, I found that claim 18, while possibly seeking to achieve the goal of increasing ground clearance, is not solely limited to increasing ground clearance, but was directed to the provision of 4WD capability (i.e. the “improved traction” of the application title). It follows that my concerns with respect to the omission of a mounting saddle from claim 18 are not released. The provision of a mounting saddle to achieve 4WD is not essential. Consequently, I do not maintain my original position.
transfer case
Finally, I noted in my request for further submissions that it appeared necessary that a system and kit for converting a 2WD vehicle to a 4WD vehicle must have a transfer case, and the associated driveline items, to transmit power to the front differential, as these elements would not be present in the 2WD vehicle. It followed that they must be included in the system and kit. Claims 1, 5–13, 16, 18 and 20 did not include this feature and they lacked support as they were inconsistent with the invention described.
The applicant submitted that, while the present invention discusses converting a 2WD vehicle to a 4WD vehicle, the technical contribution of the present invention, lay in “providing the subframe in combination with the replacement stub axles of the front axle assembly”, and this could be “used with the existing OEM front suspension assembly for providing lift”[71]. As a transfer case was not required for lift, which was one of the goals of the invention, it followed that provision of a transfer case was not a necessary requirement of the claims.
[71] Applicant post-hearing submission in chief at page 11
The opponent submitted that the applicant’s approach for contending that the claims only required lift and not 4WD conversion was inconsistent and clearly wrong in respect the express wording of claims 1 and 16. They stated that, if claim 18 concerned a 2WD being converted to a 4WD at some point in time, then a transfer case was required to drive the additional two wheels.
The applicant responded, noting that the title of the invention was “Modification of a two-wheel drive vehicle for improved ground clearance and/or traction.” They submitted that, when read in light of the specification, the claims were clear as to what it is they provided. In the applicant’s opinion, the invention provided a 2WD to 4WD conversion, or increased lift, or could provide both. They noted that, in their opinion, these modifications could be done independently and sequentially and, for increasing lift, a transfer case was not necessary.
I am unconvinced by the applicant’s submissions.
Firstly, there is no evidence that that introducing a sub-frame inevitably produces lift. Moreover, the claimed stub axle assembly is not limited to the preferred embodiment of the stub axle assembly which has an elongated, downwardly-extending attachment arm providing lift. Nevertheless, taking this at the most sympathetic to the applicant, and assuming that the provision of a sub-frame and the replacement stub axles do provide lift, the claims define this inclusion as being positioned only at the front of the vehicle. How this improves ground clearance to the vehicle as a whole is not clear at all. Increased “lift” (which is the term used by the applicant) is not equivalent to improved ground clearance.
Secondly, as noted by the opponent, claims 1 and 16 are, without a doubt, directed to 2WD to 4WD conversion. A transfer case must be included in the system or kit. That same reasoning applies for claim 20. Moreover, as I concluded above, claim 18 also is directed to a 2WD to 4WD conversion and, as such, the same reasoning again applies.
It follows that claims 1, 5–13, 16, 18 and 20 are not supported by the description.
Subsection 60(3) – section 40 – lack of support – conclusion
Consequently, it follows that:
(i)Claims 1–17 and 20, and claims 18 and 19, insofar as they relate to the independent suspension assembly, lack support, as there is no disclosure of a sub-frame for mounting and supporting the independent suspension assembly and, for claims 1–17 and 20, the front axle assembly;
(ii)claims 1, 5–13, 16, 18 and 20 are not supported by the description, as they omit the feature of a transfer case.
Conclusion
I consider that the opposition put forward by the opponent has not been successful. Claims 1-20 are novel and inventive in light of the documents pressed by the opponent. Furthermore, the opponent has not established that the claims lack utility, lack of clarity and support on the grounds raised, or that the claims are not directed to a manner of manufacture.
However, under the provisions of subsection 60(3), I find that the claims lack support under subsection 40(3) as they are inconsistent with the invention disclosed. Therefore, the opposition overall has been successful.
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. Consequently, the applicant is given 2 months from the date of this decision to propose suitable amendments.
Costs
It is usual for costs to follow the event. However, in the present case the adverse findings against the applicant owe nothing to the evidence or submissions offered by the opponent. Consequently, in the present case, I consider it reasonable that the parties bear their own costs.
Greg Powell
Delegate of the Commissioner of Patents
Annex
1.        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.
2.        A system in accordance with claim 1 further comprising: 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.
3.        A system in accordance with claim 2 wherein 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.
4.        A system in accordance with any one of claim 2 or 3 wherein the front differential is connected to one of a propeller shaft, the opposite end of which is interconnected to a front driveshaft assembly coupled with the transfer case assembly.
5.        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.
6.        A system in accordance with claim 5 wherein 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 sub-frame is adapted to be coupled to the second end of the lower arm.
7.        A system in accordance with claim 6 wherein each of the steerable independent suspension assembly comprises a shock absorbing member with an upper end of the shock absorbing member being mounted to the chassis or vehicle frame and wherein a lower end of the shock absorbing member is adapted to be mounted to an upper portion of the mounting arrangement to maintain the travel length of the shock absorbing member after the conversion.
8.        A system in accordance with claim 5 wherein the stub axle assembly comprises a downwardly dependent attachment arm, wherein an upper end of the attachment arm is pivotally fastened to the first end of the upper arm and wherein a lower end of the attachment arm supports a stub axle having an outwardly extending spindle having a longitudinal axis that defines a wheel axis of rotation for each respective front wheel.
9.        A system in accordance with claim 8 further comprising a movable joint attachment for attaching the upper portion of the attachment arm to the upper control arm.
10.      A system in accordance with any one of claims 5 to 9 wherein each of the stub axle assembly comprises a steering knuckle for pivotally linking the stub axel assembly to a tie rod arm of a steering arrangement of the vehicle.
11.      A system in accordance with any one of the preceding claims further comprising an outer drive axle for driving each front wheel coupled to a corresponding stub axle, wherein a flanged end of the outer drive axle is coupled a hub assembly mounted to the corresponding stub axle and wherein a splined end of the outer drive axle is coupled to an outer constant velocity joint.
12.      A system in accordance with any one of the preceding claims further comprising a differential axle coupled to inner constant velocity joints for transferring drive from the front differential to the front wheels.
13.      A system in accordance with claim 12 when dependent upon claim 11 wherein the inner constant velocity joint and the outer constant velocity joint are coupled to each other by a constant velocity driveshaft.
14.      A system in accordance with any one of claim 2 or claims 3 to 13 when dependent upon claim 2 further comprising a guard assembly for mounting the transfer case assembly relative to the sub-frame.
15.      A system in accordance with claim 14 wherein the guard assembly comprises:
a mounting bracket adapted for being fastened to a housing of the transfer case assembly; and
a guarding member for protecting the transfer case assembly from being impacted during use.
16.      A kit of parts which can be installed to modify a two-wheel drive vehicle, said two-wheel drive vehicle having at least two rear wheels coupled to a transmission output of the vehicle and two front wheels, each front wheel supported by a steerable independent suspension assembly, the kit 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 adapted 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.
17.      A kit in accordance with claim 16 further comprising: 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.
18.      A method of modifying a two-wheel drive vehicle having at least two rear wheels coupled to a transmission output of the vehicle and two front wheels, each front wheel supported by a steerable independent suspension assembly, the method comprising:
uncoupling each stub axle from the independent suspension assembly;
positioning a front axle assembly comprising respective replacement stub axle assemblies for supporting front wheels of the vehicle;
coupling the independent suspension assembly with the front axle assembly including the replacement stub axle assemblies for supporting a corresponding front wheel; and
mounting and supporting the independent suspension assembly and the front differential assembly on a sub-frame.
19.      A method of modifying a two-wheel drive vehicle in accordance with claim 18 further comprising the steps of:
arranging a front differential assembly relative to the front axle assembly to couple said front differential assembly with the replacement stub axle assemblies for driving said front wheels; and
coupling a transfer case assembly to the front axle assembly and a rear axle assembly of the vehicle for simultaneously transferring torque from the transmission output to the front and rear wheels respectively.
20.      A conversion kit comprising the conversion system in accordance with any one of claims 1 to 15.