Energy Absorption Systems, Inc v Road Safety Equipment Australia Pty Ltd

[2001] APO 31

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Nos. 677547 in the name of ENERGY ABSORPTION SYSTEMS, INC.

Title:          Roadside Barrier

Action:          Opposition by ROAD SAFETY EQUIPMENT AUSTRALIA PTY LTD to the allowance of an amendment of the patent specification under Section 104 of the Patents Act.

Decision:          Issued            .

Abstract

Opposition succeeds. Amendment not allowable under sections 102(1) and 102(2)(b) of the Act.

Under section 102(1) the feature of "said ports forming wall means integrally joining said side walls to strengthen said lower part" (of the road barrier) was not in substance disclosed in the specification as filed. The only reference to the ports in the specification refers to them being "designed to receive the forks of a forklift to allow the barrier to be transported easily."

Consequently under section 102(2)(b) as the specification fails to disclose the structure of the ports or how the ports strengthen the lower part of the barrier, the specification fails to describe the best method of performing the invention in which the ports strengthen the lower part of the barrier, contrary to section 40(2).

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 677547 by ENERGY ABSORPTION SYSTEMS, INC

BACKGROUND

Energy Absorption Systems, Inc. ("EAS") filed patent application 677547 on 7 March 1996.  The application was advertised accepted on 24 April 1997.

Road Safety Equipment Australia Pty Ltd ("RSEA") opposed the grant of a patent on the application on 22 July 1997.

On 17 April 1998 EAS filed a request under section 104 to amend the specification of application 677547. Following adverse comments from RSEA, an adverse examination report, and argument in rebuttal from EAS, the Patent Office granted and advertised leave to amend the specification on 5 November 1998.

RSEA filed a notice of opposition to the allowance of the amendments on 3 February 1999.

The parties completed the serving of evidence in respect to this opposition on 30 November 2000.

A hearing on the allowability of the section 104 amendments took place in Canberra on 16 May 2001. The applicant was represented by Mr. Greg Noonan, patent attorney of Freehills Carter Smith Beadle, Melbourne. The opponent was represented via telephone by Mr Raymond Hind, patent attorney, who was assisted by Mr Andrew Lowe, solicitor, both respectively of Davies Collison Cave, Melbourne.

SPECIFICATION

The specification describes the invention as relating to roadside barriers of the type having an elongated container configured to receive and hold a volume of fluent material.  The container includes a pair of side walls having sufficient rigidity to allow the container to stand alongside a roadway and sufficient resilience to deform upon an impact by a vehicle and to recover their shape after at least some impacts.

The specification before amendment

The specification prior to amendment (i.e. as accepted) includes three claims in all, of which independent claim 1 reads as follows:

"1.     A roadside barrier of the type comprising an elongated container configured to receive and hold a volume of fluent material, said container including:-

a pair of side walls, a bottom wall and a top wall, said side walls having sufficient rigidity to allow the container to stand alongside a roadway and sufficient resilience to deform upon an impact by a vehicle and to recover their shape after at least some impacts; and

a plurality of ports intermediate said bottom wall and said top wall, said ports forming wall means extending between said side walls."

The specification as proposed to be amended

The proposed amendment to the specification seeks to amend independent claim 1, add three dependent claims, as well as amend the corresponding consistory statement in the description to reflect new independent claim 1.  This claim now reads as follows, with the additional text underlined:

"1.     A roadside barrier of the type comprising an elongated container configured to receive an hold a volume of fluent material, said container including:-

pair of side walls, a bottom wall and a top wall, said side walls having sufficient rigidity to allow the container to stand alongside a roadway and sufficient resilience to deform upon an impact by a vehicle and to recover their shape after at least some impacts;

wherein said barrier includes an upper part and a lower part, said side walls being, in said lower part relative to said upper part, downwardly and outwardly inclined;

and wherein the container further includes a plurality of ports intermediate said bottom wall and said top wall, said ports forming wall means integrally joining said side walls to strengthen said lower part."

As the allowability of the additional dependent claims is not in dispute, there is no need for them to be listed here.

APPLICABLE LAW

This matter was heard on the 16 May 2001. That is, prior to the commencement of the Patents Amendment (Innovation Patents) Act 2000 which commenced on 24 May 2001. Consequently, the applicable law under Section 102 of the Patents Act governing the allowability of an amendment is as follows:

“102. (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment,

(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).

(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification.”

Subsection 40(2) requires that a complete specification describes the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention.  Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

STATEMENT OF GROUNDS AND PARTICULARS

This statement indicates that RSEA oppose the allowance of the amendment on two grounds. The first is that as a result of the amendment, the specification would claim subject matter not in substance disclosed in the specification as filed, thus not satisfying section 102(1) of the Act. The second is that, as a result of the amendment, the specification does not comply with sub-section 40(2) or (3), consequently not satisfying section 102(2)(b) of the Act. The statement also sets out several particulars in respect of each ground.

EVIDENCE

RSEA elected not to lodge any evidence in support.

EAS evidence in answer consists of a statutory declaration and accompanying exhibits AES 1-5 by Dr Andrew Emery Samuel, Associate Professor in the Faculty of Engineering of the Universtiy of Melbourne.

Finally, RSEA's evidence in reply consists of a declaration by Dr Norman Broner, Consultant Mechanical Engineer.

The evidence demonstrates there is essentially one feature causing the dispute between the parties in respect to the allowability of the amendments to the claims and consistory statement.  In particular, amended claim 1, like accepted claim 1 defines a plurality of ports intermediate said bottom and top walls.  However, the ports of the amended claim, are now defined as forming wall means integrally joining side walls of the container to strengthen the lower part of the container.  The issue is whether there is support in the specification for the plurality of ports to act as strengthening integers for the lower part of the container.  RSEA contends the specification merely provides support for the ports to act as access points for forklift tines.

I note the opponent's evidence makes no mention of the additional appended claims that would be added as a result of the amendment.

I will discuss the statements made in evidence in more detail, together with the submissions of the parties, where appropriate in my decision.

DECISION

Subsection 102(1) of the Patents Act

Both parties sought to apply the Federal Court decision in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd, (1999) 42 IPR 353. In this instance, the full Federal Court stated that a "two stage" process must be followed when determining whether the proposed amendment satisfies the test for allowability imposed by section 102(1). The two stages to be followed may be summarised as follows:

a)   one first needs to identify precisely what is the amendment - by identifying the difference between the specification as accepted and as the specification would be read if amended in the manner sought; and

b)   secondly, one should read the specification as whole (as so amended in the manner sought) to see whether as a result of the amendments sought the specification would claim matter not in substance disclosed in the specification as filed.

Mr Noonan, whilst agreeing that RGC (supra) was appropriate, in his submissions directed me to the following comments made by The Federal Court when discussing the second stage of the process:

"The subsection[102(1)] focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression 'matter not in substance disclosed in the specification as filed'.  The key point to keep in mind is that the words 'as a result of the amendment' are not to be confused with the expression 'after the amendment'."

He consequently submitted it is very easy to slip into argument about the fair basis of the claim after the amendment sought, without considering the effect of the amendment first.

I agree with the submission made above, and will seek to apply the two part approach set out in RGC (supra), and similarly in determining whether an amendment is in "in substance disclosed", apply the fair basis test.  (Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [2000]AIPC 91-593).  Furthermore it is well established that the test for fair basis is that there must be a "real and reasonably clear disclosure" (Leonardis v Sartas No 1 Pty Ltd, 35 IPR at 40 and CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481 at 501). I will apply this test to the present situation as was done in RGC (supra).

In applying the first step of the test referred to above, I shall concentrate on a comparison between the accepted independent claim and the independent claim as proposed to be amended, as this appears to be the crux of the dispute between the parties, rather than any differences in the consistory statements.

The effect of the amendment appears to result in two points of difference between the two claims, (when comparing the underlined amendments foreshadowed in the claims listed above) they are:

(i) the side walls of the lower part of the barrier being downwardly and outwardly inclined relative to the side walls of the upper part of the barrier and;

(ii) the ports of the container forming wall means integrally joining the side walls to strengthen the lower part of the side wall.

More specifically, in reviewing the differences one observes that the claims as accepted did in fact define a plurality of ports per se, with these ports forming wall means extending between the side walls.  The claim as sought to be amended still includes a plurality of ports forming wall means, these however are to be "integrally" joining the side walls in order to "strengthen" the lower part of the barrier.

I shall apply the second part of the test in determining if the matter is in substance disclosed to each of the features in (i) and (ii) above in turn.

I note also that both parties accepted the notion that Leonardis (supra) stood for the general proposition that the drawings alone (as construed by the skilled person) can provide the real and reasonably clear disclosure.

Looking at the features of part (i) above, Mr Hind submitted there is no disclosure of the "outwardly" extension of the lower part of the side walls in the description and drawings.  It was further submitted that if one looks at figures 3 or 4 and were to draw an imaginary vertical line between the upper and lower parts of the barrier, the inclined lower wall part is in fact inwardly of said vertical line.  Consequently, it was submitted the side walls being outwardly inclined is not in substance disclosed in the specification as filed.

Mr Noonan emphasised the claim reads the side walls of the lower part are downwardly and outwardly extending "relative" to the upper part.  It does not read that the lower part of the side walls are outside or outward of the upper part of the side walls.  Furthermore the words are to be read as a single phrase in its entirety and not separated out individually, to create a lack of clarity.

In considering a specification for the purposes of section 102, the normal rules of construction apply. As such I accept Mr Noonan's approach, and although the language of the claim is somewhat clumsy, the intent I believe, is clear, i.e the lower part of the side walls is to extend downwardly and outwardly relative to the surface of the upper part of the side walls.

Turning now to the issue of there being a real and reasonably clear disclosure of this feature in the specification as filed, I note the description and drawings do not clearly identify what constitutes upper and lower parts of the side walls.  However, figures 1, 3, 4, 8, 10 and 12 clearly show a lower region of the barrier (labelled as side wall 14 throughout the description) inclined downwardly and outwardly relatively to the surfaces (identified as ridges 22 at page 3 of the specification) of the remaining portion of the side walls.  Consequently, following the principle set out in Leonardis (supra) I find there is a real and reasonably clear disclosure of the feature in question, in the drawings as originally filed.  Hence this portion of the amendment, I believe is in substance disclosed.

This now leaves me to consider the remaining features introduced by the amendment.  In particular, whether or not there is a real and reasonably clear disclosure of the plurality of ports forming wall means integrally joining the side walls to strengthen the lower part of the barrier.

In reviewing the specification as accepted, one may find the following references to ports:

• page 4, lines 3-5, "The side walls 14 additionally define forklift ports 34 designed to receive the forks of a forklift to allow the barrier to be easily transported." in referring to figures 1-4.

• Page 8 in referring to Figure 10 and an internal frame, describes "…the lower cross brace 106 is in embedded (sic) in an additional wall 110 that is formed by the forklift port 34" lines 27-29.

• Appended claims 2 and 3 respectively define the barrier of claim 1 "wherein each of said ports is sized to receive a fork of a forklift" and "wherein there are two of said ports located to receive the forks of a two-forked forklift".

In his submissions Mr Hind directed me to the declaration made by Dr Broner.  In particular Dr Broner's assessment that :

"From a reading of the specification…it is quite clear to me that an important feature of the barrier is the provision of the internal frame.  I observe that there is just a single page (page 4) in connection the design of the container in comparison with almost six pages…concerning the construction of the strengthening frame.  It is clear to me from the context that it is the design of the frame which is important to the strength of the barrier

If strengthening effects of the ports had been critical or important to the structure of the container, I would expect this to have been described in the description having regard to the substantive description which is present concerning the design of…the steel reinforcing frame"

Mr Hind further submitted there is almost no disclosure concerning any strengthening effects concerning any other aspects of the barrier design let alone the side walls formed by the ports.  Consequently Mr Hind forwarded there is one and only one function ascribed to the ports in the specification, and that is to receive the tines of a forklift for transportation purposes as borne out from page 4, lines 3-5 of the specification.

Mr Noonan submitted that the strengthening frame is merely a described feature of the specification as lodged and accepted.  It is merely a feature of interest, but not a feature of the invention and as such, not present in any of the claims filed to date. Mr Noonan added that the strengthening effect of the wall means formed by the ports may be insignificant (compared to a barrier in which a strengthening frame of the type described is provided), is irrelevant to this matter.  The amendment of the claim as accepted is to add the functional qualification to strengthen said lower part of the barrier.  The only matter of concern is whether the added feature as a result of the amendment was in substance disclosed.

I also note that whilst Dr Samuel's declaration states that "once these fork-lift ports are integrally joined…they will automatically add extra strength to the lower part of the container" he offers no support for this assertion from the specification at hand.

Whilst it is not a matter for this hearing to determine whether or not the frame is an essential feature of the invention, it is, apparent that in the context of the specification as a whole, the description of the frame's function in its various embodiments is relevant when assessing whether the feature of the port's strengthening function is fairly based.

It is apparent there is some disclosure from the drawings, of a plurality of ports forming integral wall means.  (It is inherent that the forklift ports be integral with the side walls to avoid the egress of fluent material from within the barrier, as noted in the Samuel declaration).  However there is no fair teaching that is to say there is no real and reasonably clear disclosure that the wall means formed by the ports are present to strengthen the lower part of the barrier.  Indeed the disclosures made in the specification with respect to forklift ports appear to be for no other reason than to describe forklift ports to receive the forks of a forklift.  In contrast, a prolixious portion of the specification (references over some seven pages) is taken up with various embodiments of the construction and placement of the internal metal frame and how it provides strength and rigidity to the container.  One would reasonably expect a similar type of real disclosure with regard to the structure and design of the ports forming wall means if they were to act as a specific strengthening feature of the invention, (irrespective of whether or not an internal frame was present), as well as a forklift access point.

As a result I do not consider the amendments are fairly based on the matter described in the specification as filed.  In line with the principles set out in RGC (supra), the specification as sought to be amended would claim matter not in substance disclosed in the specification as filed, and therefore is not allowable under section 102(1) of the Act.

Subsection 102(2)(b) of the Act

As stated above, the specification fails to disclose any information with regard to the structure of the wall means formed by the port, or how these means are designed to strengthen the lower portion of the barrier.  The only disclosure of the design of the ports and side walls is on page 4 of the specification as listed above, which again refers to the ability of the ports to receive the forks of a forklift.  Any additional references to the ports forming strengthening means are those made in the claim to be amended and its corresponding consistory statement which fails to provide relevant detail.

Accordingly, I find the specification fails to define the best method of performing the invention in respect of the ports forming wall means integrally joining the side walls to strengthen the lower part of the barrier.  Hence the specification fails to meet the requirements of section 40(2), and subsequently the amendment is not allowable under subsection 102(2)(b) of the Act.

CONCLUSION

I have found that proposed claim 1 claims matter not in substance disclosed, and the specification as to be amended fails to describe the best method of performing the invention. The opposition therefore succeeds on the grounds set out in sections 102(1) and 102(2)(b) and, accordingly I refuse to allow the amendment.

I see no reason to vary the general principles that costs follow the event.  I therefore award costs against Energy Absorption Systems, Inc. and in favour of Road Safety Equipment Australia Ltd..

Lars Koch
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Freehills Carter Smith Beadle, Melbourne

Patent attorneys for the opponent   :  Davies Collison Cave, Melbourne