Gutter Grip Australia Pty Ltd v Interit Pty Ltd - [2025] APO 19

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gutter Grip Australia Pty Ltd v Interit Pty Ltd [2025] APO 19
Patent:2016222479

Title:Multi-component gutter bracket

Patentee:Interit Pty Ltd

Opponent:Gutter Grip Australia Pty Ltd

Delegate:Greg Powell

Decision Date: 30 June 2025

Hearing Date: 30 April 2025, by Video Conference

Catchwords: PATENTS – section 104 – opposition to amendment – subsections 102(1), 102(2)(a), 102(2)(b) – amendments do not insert matter that extends beyond the disclosure of originally filed specification – claims fall within the scope of the claims before amendment – no non-compliance with subsections 40(2) or (3) as a result of the amendment – amendments allowed – cost awarded against the opponent

Representation: Counsel for the patentee: Laura Thomas
Patent attorney for the patentee: Peer Watterson, Pizzeys Patent and Trade Mark Attorneys Pty Ltd
Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: Griffith Hack Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2016222479

Title:Multi-component gutter bracket

Patentee:Interit Pty Ltd
Date of Decision: 30 June 2025
DECISION

The opposition is unsuccessful. The specification would not, as a result of the proposed amendments, disclose subject matter that extends beyond the disclosure of the specification as filed. The amendment results in claims that would fall within the scope of the claims before amendment. The amendment does not result in a specification that fails to clearly and completely disclose the invention, or lead to the claims lacking support.
I allow the amendment composed of the proposed amendments filed on 5 August 2022, 24 January 2023 and 29 May 2023.
I award costs in accordance with Schedule 8 of the Patents Regulations against Gutter Grip Australia Pty Ltd.
REASONS FOR DECISION

The application for patent 2016222479 (the patent) was filed by Interit Pty Ltd (the patentee) on 2 September 2016 as a divisional of 2011213740. The patent claims an earliest priority date of 20 October 2010. The patent was granted on 22 February 2018.
On 18 August 2021 a re-examination request was filed by Gutter Grip Pty Ltd. Following reports and amendments, leave to amend was granted and advertised. At that point, Gutter Grip Australia Pty Ltd (the opponent) filed a Notice of Opposition to allowance of the amendment. Prior to evidence being filed, the patentee filed a further amendment on 5 August 2022. The patentee then withdrew the amendments that were the subject of the opposition, thereby rendering it otiose.
Re-examination then re-commenced. In response to subsequent re-examination reports, the patentee filed further amendments on 24 January 2023 and 29 May 2023. A clear re-examination report issued on 3 July 2023 and leave to amend was granted. The amendments were advertised for opposition purposes on 27 July 2023.
The opponent then filed another notice of opposition to the allowance of the amendments on 27 September 2023 and a statement of grounds and particulars (SGP) on 27 October 2023. This decision is in relation to the opposition to the allowability of the amendment composed of the proposed amendments filed on 5 August 2022, 24 January 2023 and 29 May 2023.
Evidence in support consists of a first declaration by Dr Shaun Manning dated 10 January 2024 (Manning1) together with annexures SAM–1 to SAM–18 and a declaration by James Dalrymple dated 16 January 2024 (Dalrymple) together with annexures JRD–1 to JRD–6. Evidence in answer consists of a declaration by Mr William (Bill) Hunter dated 8 April 2024 (Hunter) together with annexures A to D. Evidence in reply consists of a second declaration by Dr Manning (Manning2) dated 7 November 2024.
Prior to the hearing, the opponent and patentee also filed written submissions on, respectively, 11 April 2025 (opponent’s written submissions) and 22 April 2025 (patentee’s written submissions).
As to the declarants, Dr Manning has, since 1987, been an engineering academic and an engineering consultant conducting research, publishing papers and presenting research findings to industry groups, including reports on eaves gutter designs and performance. Mr Dalrymple gives evidence as a UK and European qualified patent attorney working under supervision at Griffith Hack, and places into evidence various archived web pages. Mr Hunter has many years of experience as a designer for injection-moulded plastic, fabricated sheet metal, metal casting and aluminium products.
I am satisfied that both Dr Manning and Mr Hunter have backgrounds that enable them to give evidence as to how a person skilled in the art (PSA) would have understood the specification, and, where necessary, I will decide which evidence should be given greater weight.
Grounds of opposition
The SGP identifies as grounds of opposition that the claims extend beyond specification as filed in non-compliance with subsection 102(1), the claims do not fall within the scope of the claims as accepted in non-compliance with paragraph 102(2)(a) and, as a result of the amendment, the specification does not satisfy the requirements of paragraphs 40(2)(a), s40(2)(aa), s40(2)(b) and subsection 40(3) in non-compliance with paragraph 102(2)(b).
At the hearing the grounds of non-compliance with subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) were pressed, with the arguments under paragraph 102(2)(b) being limited to the specification not satisfying the requirements of sufficiency under paragraph 40(2)(a) and support under subsection 40(3).
The specification
The patent relates to brackets used for the mounting of guttering to fascia. Specifically, the brackets of the invention are intended to mount a gutter to reduce the risk of inflow flooding. This flooding can occur during heavy downpours when water in the gutter accumulates and rises above the top edge of the rearward wall of the gutter. As a result, water can flow over the top of the fascia and into the eaves, possibly entering the building. This can lead to flooding and damage to ceiling panels and walls. The invention seeks to address this by providing a bracket that locates and fixes guttering positions such that a flow path is created between a fascia and a rearward wall of the gutter.
The bracket of the invention comprises a gutter clip and a support brace. Figures 2 and 4 show an example of a clip and brace, respectively:
The clip 110 is composed of a posterior finger 112, an anterior finger 114 with a bridge connecting the fingers. The bridge 116 also supports a tongue 120 which operates to space the rearward wall of a gutter from a fascia. The tongue 120 is formed from a U-shaped web. Teeth project into the anterior slot 50 to act as a ratchet for the edge of a rearward gutter wall inserted into the anterior slot 50. The clip 110 has a slot 130 formed by an upper 132 and a lower 133 L-shaped ledge on an anterior face of the anterior finger 114. The slot 130 receives the brace 70 by inserting the brace’s base 74 into the slot 130. The arm 72 of the brace has at an outer end a curled finger 76 to be inserted in a rounded upper lip of a gutter. The base 74 has a nib 75 which locates in a recess in the slot 130 when the brace 70 is fitted to the clip 110.
Figures 6 and 7 (although with slightly differently shaped individual components) show a fully assembled bracket with mounted gutter and this assembly mounted on a fascia, respectively:
The curved finger 76 nestles closely into a corresponding curved upper lip 184 of the gutter 81. The tongue20/120 extends down along the anterior surface of the fascia 91 spacing the rearward wall 82 of the gutter 81 from it. The posterior finger 12/112 is positioned over a top section of the fascia 91 and conforms to that section to thereby embrace and nestle closely against it to provide a solid anchoring of the bracket. Assembly of this arrangement involves the clip 10/110 being positioned over the fascia 91 and then the rearward wall 82 of the gutter 81 being inserted upwards into the anterior slot 50. At that point, the curved finger 76 of the arm 70 is inserted into the upper lip 184 of the gutter 81 and the arm 70 is rotated in a downward direction until the base 74 is parallel to the rearward wall 82, whereupon the base 74 can be slid into the slot 130 until the nib 75 slides into the recess and stops against a wall of the recess.
For completeness, I note that another form of gutter bracket is shown in Figure 9:
In this multi-component gutter bracket 280, the gutter 281 is supported and mounted on fascia 291. The gutter bracket is comprised of support brace 270 and gutter clip 210. The gutter clip 210 has an anterior finger 212 and posterior finger 214 connected by a bridge 216 forming a slot 250 to hold the fascia 291 and the rearward wall of the gutter 281. The anterior wall of the clip 210 has a slot 230, and the support brace 270 has a base 274 which slides into the slot 230 to form a rigid joint 211. Teeth are formed on the posterior surface of the anterior finger 212. No spacer equivalent to the tongue 20/120 is shown in this embodiment.
Claims as accepted
The claims that were accepted consisted of 19 claims. Claims 1 and 18 were independent and were as follows:
“1. A multi-component gutter bracket for a gutter, the multi-component gutter bracket comprising:
a gutter clip adapted to mount to a fascia and receive a rearward wall of a gutter;
a spacer attached to the gutter clip and dimensioned to space the rearward wall from the fascia to provide a water flow channel between the rearward wall and the fascia;
a support brace adapted to support an outer wall of the gutter;
wherein:
a rigid joint is formable between the support brace and gutter clip to mount the support brace to the gutter clip.
the spacer is integrally formed with the clip.”
18. A method of mounting a gutter, the method comprising the steps of:
locating a clip onto or over a fascia;
positioning a spacer integrally formed with the clip on or adjacent an anterior surface of the fascia;
positioning a rearward wall of a gutter adjacent the spacer, preferably in the clip;
engaging a finger of a support brace with an outside lip of the gutter;
and
sliding the support brace into engagement with the clip.”
The proposed amendments
The claims under consideration arise out of the amendments filed on 5 August 2022, 24 January 2023 and 29 May 2023. The final form of claim 1 as proposed to be amended is reproduced below. Text added to claim 1 as accepted (being the form of the claim prior to the amendment) is underlined and deleted text is struck through:
A multi-component gutter bracket for a gutter~~, the multi-component gutter bracket~~ comprising:
a gutter clip having a mounting portion and a spacer, wherein the mounting portion is adapted to mount to a fascia ~~and receive a rearward wall of a gutter~~;
~~a spacer attached to~~ the gutter clip further comprising a first slot to receive a ~~and dimensioned to space the~~ rearward wall of the gutter ~~from the fascia to provide a water flow channel between the rearward wall and the fascia~~; and
an anterior finger, a posterior finger, a bridge connecting the posterior finger and the anterior finger, an intermediate tongue positioned between the posterior finger and the anterior finger, the tongue dimensioned to space the rearward wall from the fascia, wherein the first slot is defined by the anterior finger and the tongue, wherein the mounting portion of the gutter clip comprises a second slot defined by the tongue and the posterior finger, the second slot adapted to locate over the top of the fascia, and wherein the spacer is formed by the tongue;
the multi-component gutter bracket further comprising a support brace adapted to support an outer wall of the gutter;
wherein:
a rigid joint is formable between the support brace and gutter clip to mount the support brace to the gutter clip,
~~the spacer is integrally formed with the clip~~ the tongue is between 5 mm and 20 mm wide to space the rearward wall from the fascia to provide a water flow channel between the rearward wall and the fascia;
the gutter clip is integrally formed; and
the support brace and the gutter clip are configured so that only a single support brace may be mounted to the gutter clip.
Claim 16 is also directed to a multi-component gutter bracket. It is as follows (noting that it is all underlined as it is a new product claim):
A multi-component gutter bracket for a gutter comprising:
a gutter clip having a mounting portion and a spacer, wherein the mounting portion is adapted to mount to a fascia,
the gutter clip further comprising a first slot to receive a rearward wall of the gutter;
the multi-component gutter bracket further comprising a support brace adapted to support an outer wall of the gutter;
wherein:
a rigid joint is formable between the support brace and the gutter clip to mount the support brace to the gutter clip;
the spacer partially defines the first slot of the clip;
the spacer is dimensioned to space the rearward wall from the fascia to provide a water flow channel between the rearward wall and the fascia;
the gutter clip includes a plurality of teeth situated in the first slot to enhance grip on the rear wall and to allow adjustment of a height of a top edge of the rearward wall of the gutter;
the gutter clip is integrally formed; and
the support brace and the gutter clip are configured so that only a single support brace may be mounted to the gutter clip.
While similar to claim 1, claim 16 does not define the structure of the clip as claim 1 does. Claim 16 also includes the feature of the teeth situated in the first slot.
Claim 17 is based on accepted claim 18, although it is no longer independent. It defines a method of mounting a gutter using the gutter bracket defined in earlier claims:
A method of mounting a gutter, the method comprising the steps of:
providing a multi-component gutter bracket according to any one of the preceding claims;
locating a the gutter clip of the gutter bracket onto or over a fascia;
positioning a the spacer or the tongue of the gutter clip ~~integrally formed with the clip~~ on or adjacent an anterior surface of the fascia;
positioning a rearward wall of a gutter adjacent the spacer or the tongue and~~, preferably~~ in the gutter clip;
engaging a finger of a the support brace with an ~~outside~~ outer lip of the gutter; and
sliding the support brace into engagement with the gutter clip.
Statutory provisions
The present matter arises over the question of whether the amendments as proposed to the claims are allowable pursuant to the provisions of the Act and more specifically the provisions of s102 of the Act.
The application for the patent was filed after 15 April 2013. Therefore, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the RTB Act) apply to the patent.
The requirements for the allowability of amendments are governed by subsections 102(1) and (2) which state that:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)   the complete specification as filed;
(b)   other prescribed documents (if any).
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)   a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)   the specification would not comply with subsection 40(2), (3) or (3A).
With respect to “relevant time”, subsection 102(2A) states:
(2A)For the purposes of subsection (2), relevant time means:
(a)   in relation to an amendment proposed to a complete specification relating to a standard patent—after the specification has been accepted; or
(b)   in relation to an amendment proposed to a complete specification relating to an innovation patent—after the Commissioner has made a decision under paragraph 101E(1)(a) in respect of the patent.
As the application for the patent has been accepted, subsection 102(2) is applicable. Moreover, the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment.
The legal principles
s102(1) – claim or disclose matter that extends beyond that disclosed at filing
Subsection 102(1) was considered by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH, where His Honour noted the following:
“First, as has been pointed out, the test is a strict one.
Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.
Third, the required disclosure may be express or implied, but on any view must be clearly and unambiguously so. In this regard, a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.
Fourth, context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application”[1].
In this matter there was also much discussion around the concept of an “intermediate generalisation”. In the area of amendments, where different embodiments of a specification disclose different features and it would not have been apparent to the PSA that the features of the different embodiments could be interchanged, an amendment to interchange these features would not be allowable.
With regard to intermediate generalisations, it was stated in CSIRO v BASF:
“In summary, an amendment utilising a feature may amount to added subject matter, such that it is not relevantly disclosed, even where there is a literal reference to such a feature in the specification as filed. An example of where this may occur is where by reason of the amendment, a feature that was not suggested to be significant is, for the first time, suggested to have a technical significance. Such a suggestion of technical significance might arise where a feature is taken from a specific embodiment, and introduced into a claim in a manner that is stripped from relevant context provided by that embodiment. To avoid a conclusion of added subject matter, the skilled person must have appreciated from the complete specification as filed that the selected feature was more generally applicable. This may involve asking whether the skilled person is being presented with any new information about the invention which is not directly and unambiguously apparent from the original disclosure.
…
Further, there may be an impermissible intermediate generalisation where a new combination of features is sought to be created by the proposed amendment which was not apparent in the application as filed. As has been pointed out (Smith & Nephew PLC at [77]), the question is ‘whether the features combined in the amended claim were disclosed as a combination in the application [as filed]’”[2] (italics in original).
Thus, the correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn or directly derive from the complete specification as filed[3].
s102(2)(a) – claim would not in substance fall within the scope of the claims before amendment
A useful test for the allowability of amendments under s102(2)(a) is:
“would the amendment make anything an infringement which would not have been an infringement before the amendment?”

This test was suggested in relation to s31(1) of the Patents Act 1949 (UK) in The Distillers Co. Ld.’s Application[4]. Although the wording of s102(2)(a) differs from the wording of the then s31(1) of the British Act, the Commissioner in W.J. Voit Rubber Corp.’s Application (1965)[5], when considering the corresponding provision of the Patents Act 1952, stated:
“the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one”.
The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner[6].
s102(2)(b) – specification would not comply with subsection 40(2), (3) or (3A).
As the opponent alleged that the specification did not comply with paragraph 40(2)(a) and subsection 40(3) with respect to a lack of support, it is necessary to set out the principles associated with these parts of the Act.
s40(2)(a) – invention must be clearly and completely disclosed
In Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd[7] Rofe J referred to the judgement of Burley J in Cytec Industries Inc. v Nalco Company[8] (who in turn had referred to respective decisions of the Patent Office by then delegate Barker,[9] and Deputy Commissioner McCaffery[10]), presenting the following as guiding the consideration under s40(2)(a):
“At [143] in Cytec Burley J referred to CSR Building Products in which Dr Barker considered at [95] that assessing whether the disclosure requirement was satisfied involved the following steps:
(1)construe the claims to determine the scope of the invention claimed;
(2)construe the description to determine what it discloses to the person skilled in the art; and
(3)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
At [144] his Honour also added two further steps from Evolva SA [2017] APO 57 at [45]:
(1)Is it plausible that the invention can be worked across the full scope of the invention?
(2)Can the invention be performed across the full scope of the claims without undue experimentation?
The last step aligns with what Jacob LJ described in Novartis AG v Johnson & Johnson Medical Ltd [2010] EWCA Civ 1039 (Novartis) as the heart of the disclosure test:
Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?”
s40(3) – claim(s) must be supported by matter disclosed in the specification
The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[11]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
It is therefore the case that, under s40(3), the matter in a claim of a specification must be supported by an enabling disclosure in the description and any drawings, graphics, photographs and sequence listing (i.e., the body of the specification).
Grounds of opposition
s102(1) – claim or disclose matter that extends beyond that disclosed at filing
The opponent raised a number of features that they said extended beyond the original disclosure:
(i)the “mounting portion” in claim 16;
(ii)“a first slot to receive a rearward wall of the gutter” in claim 16;
(iii)a “plurality of teeth situated in the first slot” in claim 16;
(iv)the limitation that “only a single support brace may be mounted to the gutter clip” in claims 1 and 16; and
(v)defining the gutter clip as “having” a tongue or spacer in claims 1 and 16.
the “mounting portion” in claim 16
Opponent’s submissions
The opponent stated that amended claim 16 covered embodiments that were not disclosed in the original specification. The opponent submitted that claim 16 contained the first introduction of a “mounting portion” that was “adapted to mount to a fascia”.
The essential submission by the opponent was that there was no disclosure at all in the original specification of a “mounting portion” as defined in amended claim 16. Accepting that there were disclosures of a first slot and a second slot, and that the first slot or the second slot might be used to perform a mounting function, the opponent noted that those slots were described and depicted as slots formed in a particular way, dependent on a particular configuration defined by particular features. In this regard the opponent contrasted claim 16 with claim 1 where the mounting portion was limited to being the second slot defined by the intermediate tongue, the bridge and the posterior finger, and where the second slot was mounted over the fascia. During the hearing the opponent stated:
“The question is whether there’s disclosure by way of that new claim, with the new broader term and broader subject matter prior to the amendment clear and unambiguous disclosure of the invention now claimed in all of its breadth and scope.
And so when one’s talking about deleting for present purposes the requirement of the use of a slot and replacing it by the use of a unconstrained mounting portion, which may encompass the use of a slot but encompasses a myriad of other things … , then you do not have a clear and unambiguous disclosure of what is now claimed, namely, this much broader unconstrained concept.”
The opponent submitted that there was no disclosure of the use of a mounting portion in a generalised sense; that is, something which was not a slot but a mounting portion that can be used to mount the clip to the fascia. They relied upon the evidence of Dr Manning who was asked what integers performed certain functions for the bracket, or what features formed a certain part of the bracket, and who did not identify anything other than what was shown in the figures. The opponent stated that claim 16 encompassed mounting configurations extending well beyond, and fundamentally different to, this arrangement, using entirely different modes of attachment.
In the opponent’s opinion, s102(1) required asking the question of whether there was a clear and unambiguous disclosure of the invention now claimed in all of its breadth and scope. The opponent submitted that it would be wrong to focus on whether something which was clearly and unambiguously disclosed in the patent before amendment falls within the scope of the amended claims.
In this regard, the opponent referred to what Mr Hunter labelled as “Diagram 9” in his evidence, which was a modified version of figure 7 of the patent:
Mr Hunter had included this as an example of a gutter clip that did not have a posterior finger, but which would still accord with amended claim 16.
The opponent noted that nothing like Diagram 9 had been disclosed in the original filing. They also noted that Diagram 9 required the deletion of the posterior finger 112 of figure 7 shown at [13] above. They then turned to Mr Hunter’s evidence where, in discussing what “mounting portion” might mean, he stated:
“In my view, the definition of mounting portion is the portion of the bracket which enables the bracket to be mounted onto or over the fascia. One example is shown in Figure 7, being item 112, all of which would mount over the fascia.”[12]
The opponent noted that it was precisely posterior finger 112 that had been deleted by Mr Hunter; the conclusion being that Mr Hunter was advocating for the removal of the mounting portion to support a position that a mounting portion was disclosed.
In the opponent’s opinion, claim 16 was directed to an impermissible intermediate generalization, being a general mounting portion adapted to be mounted to the fascia in an unspecified way that was not “directly and unambiguously apparent from the original disclosure”[13]. The only mounting embodiment using a spacer (as required by claim 16) contemplated in the original specification was mounting to the fascia via a second slot formed by the posterior finger of the clip and the spacer. The opponent submitted that the question in the context of intermediate generalisation was whether the patent before amendment disclosed that any portion of the clip might, as part of the invention described, be used to mount the clip onto the fascia irrespective of whether it was so used when disaggregated from the other integers of the preferred embodiments.
The opponent submitted that there was no disclosure of the use of a gutter clip that could be mounted to the fascia by the use of a “mounting portion”, whatever that might mean, in the absence of the use of one of two slots, or the features which define that slot. Therefore, when the “mounting portion” was introduced as a separate claim feature, disaggregated from other aspects of the claim that collectively enabled mounting, it resulted in an intermediate generalisation of the type not allowed
Patentee’s submissions
The patentee submitted that the patent quite clearly and consistently used the language of “mount to” as a general description with two options: mounting onto the fascia and mounting over the fascia. The patentee submitted that, although the disclosure must be clear and unambiguous, it could also be implicit. The patentee noted that Mr Hunter’s evidence indicated that “mounting portion”, as used in the claims, had its plain English meaning of “a feature which has the purpose of enabling the gutter clip to be mounted to the fascia”[14] and, thus, the mounting portion would be “a portion of the clip which allows the clip to be mounted onto or over the fascia as described in the specification at page 4, lines 23:25”.[15] They noted Dr Manning had not disagreed with the definition, and submitted it was consistent with the specification which disclosed that the gutter bracket had a “gutter clip that was adapted to mount to a fascia”.[16] In the patentee’s opinion, for this relatively simple mechanical patent, a disclosure of a clip that was adapted to mount onto or over the fascia was clearly an implicit disclosure that the clip had a part that was adapted in some manner to allow the mounting to occur, and this was picked up in the language of a “mounting portion” in the claims, being the portion that had been shaped or adapted to allow the mounting to occur. The patentee submitted that, therefore, including “mounting portion” in claim 16 did not add material that the PSA could not directly derive from the specification as filed.
Regarding the use of Diagram 9 by Mr Hunter, the patentee submitted that this was not something that Mr Hunter was saying was disclosed in the patent. Instead, in the patentee’s submission, Mr Hunter was setting out what came from considering the patent. Diagram 9 was a modification of figure 7, not a modification of the invention of the patent to some other invention.
The patentee disagreed with the opponent’s approach of requiring a clear and unambiguous disclosure of the invention now claimed in all of its breadth and scope. The patentee criticised the opponent’s approach of comparing amended claim 16 to amended claim 1. While conceding that the mounting portion of claim 16 is broader in scope than the mounting portion of amended claim 1, the patentee submitted that this did not demonstrate that a broader mounting portion was not disclosed in the specification as filed. In the patentee’s view, the question was whether the “mounting portion” had added matter in some way. The patentee submitted that it was incorrect to look just at an embodiment, note that the portion by which the clip is mounted has multiple features, and conclude that a mounting portion that does not have all the features is not disclosed. In the patentee’s submission that limited the invention to the preferred embodiments disclosed in the figures and nothing else. In the patentee’s submission, this was the vice of the evidence of Dr Manning for the opponent. It arose from Dr Manning being asked whether particular features or integers were disclosed. Such an approach, in the patentee’s opinion, directed Dr Manning’s attention to the preferred embodiment depicted in the figures, rather than reading the patent as a PSA would.
The patentee also submitted that the opponent’s point that the mounting portion was not defined by the spacer did not demonstrate that claim 16 extended to matter not disclosed in the original specification. The patentee submitted that the specification made it clear[17] that a spacer was optional and the second slot (defined by the spacer, the bridge and the posterior finger of the gutter clip) was the preferred embodiment depicted. This did not mean the claim 16 did not satisfy s102(1). The patentee submitted that the opponent’s approach limited the invention to the preferred embodiments disclosed in the figures.
As to the opponent’s submissions on intermediate generalisation, the patentee stated that the question was whether the PSA would understand the mounting portion to be generally applicable to different arrangements, or whether it was limited to the very specific arrangement that was described. In the patentee’s opinion this invention was a quite simple mechanical one where features can be combined in different arrangements. In the present matter the patentee submitted that a “mounting portion” adapted to mount onto a fascia was disclosed, and was not something that required a redefinition of the invention. The mounting portion was always part of the invention. The patentee submitted that a clip that was adapted to mount over or onto a fascia was a generally applicable feature that could be used with any combination of claimed features.
Consideration
I do not believe that the inclusion of “mounting portion” in claim 16 offends s102(1).
An issue I have with the opponent’s position on the amendment is that it arises from a comparison of amended claim 1 and amended claim 16. This amendment is not, as put forward by the opponent during the hearing (as cited at [34] above), the deletion of a specific arrangement and the insertion of a general one. One could view the amendments as this type only if one concentrates on the differences between amended claims 1 and 16. Instead the amendment involves the insertion of a specific reference to a “mounting portion” which is adapted to mount to the fascia. Contrary to the opponent’s position, I do not see the question as being whether there is a clear and unambiguous disclosure of everything falling within the scope of the claim. The question is whether there is a clear and unambiguous disclosure of a mounting portion. In my opinion, there clearly is. The specification as filed and prior to amendment disclosed (inter alia) “a gutter clip adapted to mount to a fascia”. It seems quite clear to me that the PSA would understand that a clip “adapted to mount” would inherently have a portion that is involved in the mounting. This feature in claim 16 would not come as a surprise to them.
The opponent’s reliance to Diagram 9 of Mr Hunter’s evidence to establish that claim 16 is not disclosed is, in some sense, backwards. I do not take the authorities to say that because a PSA provides a specific example of something not expressly claimed but still within the scope of an amended claim, and that “specific something” is not disclosed in the filed specification, it must follow that there is no disclosure in the original specification of the invention of the amended claim. To my mind the authorities apply the opposite approach. If a proposed amended claim expressly claims a specific example that was not disclosed in the original specification, the proposed amendment would not be allowable. This is true even if the specific example would have been considered to be an obvious variation by the PSA in light of the common general knowledge upon reading the original specification. There still would have been no disclosure of the specific example. In other words, an amendment to claim the arrangement of Diagram 9 would not be allowable. But that is not the case here.
On intermediate generalisations, the question is whether what is taught now by the specification was not taught before. For similar reasons as above, I do not agree that claim 16 could be said to be an intermediate generalisation. As noted above, the clip, as described and defined in the original specification, was adapted to mount to the fascia. It must follow that the clip had a portion allowing that mounting. Even if I were to accept to opponent’s submission, regarding the original disclosure that it was any portion of the clip might be used to mount the clip, that portion would still be a “mounting portion”. It is not correct, in my opinion, to say that the mounting portion has, in some way, been disaggregated from other integers of the embodiments. The portion was clearly implicit in those embodiments.
“a first slot to receive a rearward wall of the gutter” in claim 16
Opponent’s submissions
The opponent submitted that amended claim 16 specified that the gutter clip comprised “a first slot to receive a rearward wall of the gutter”, but nothing in the original specification directed itself to a first slot that was anything other than the slot defined by the anterior finger and the tongue/spacer. While accepting that amended claim 16 defined the first slot as being partially defined by the spacer, the opponent submitted that the first slot in claim 16 did not require the anterior finger to also define the first slot, with the result that the slot was not fully defined.
The opponent noted that the originally filed specification disclosed that the first slot was “defined by the anterior finger and the tongue [which is equivalent to the spacer]”,[18] and that Dr Manning had stated:
“I agree that the initial disclosure defines a ‘first slot’ that is formed by the anterior finger, the bridge and the tongue. I was asked whether there is any example in the initial disclosure of a ‘first slot’ that is formed by different feature(s). In my view, there is no example of a first slot defined by other features in the initial disclosure”,[19]
and noted that Mr Hunter had not disagreed with this.
The opponent submitted that one could posit all kinds of hypothetical examples where the slot was defined in ways other than by use of the anterior finger, and those examples would fall within the ambit of what is put forward in claim 16. None of these examples have been disclosed in the patent at all; let alone clearly and unambiguously.
On intermediate generalisation, the patentee submitted that:
“the use of any sort of separate and distinct, or generalised, ‘first slot’ was not disclosed. To the contrary, the ‘first slot’ was taught and disclosed as being dependent upon other features of the multi-component gutter bracket, namely, the anterior finger and tongue that functioned to define that slot.”[20] (italics in original)
Patentee’s submissions

The patentee noted that claim 16 stated that the “spacer partially defines the first slot of the clip” and noted that the “first slot” was described as that part of the bracket that accommodated the rearward wall of the gutter. They submitted that it was incorrect to say, as the opponent had, that the gutter clip having a spacer was effectively undefined and may be formed by any means. Claim 16 did not allow for any sort of first slot. The patentee submitted that it was clear that:
(i)the slot was part of the clip;
(ii)being a clip it must have at least two parts to allow it to receive the rearward wall; and
(iii)one side of the slot must be defined by the spacer.
The patentee drew my attention to the specification which taught that the invention may be performed by:
“locating a clip onto or over a fascia;
positioning a spacer on or adjacent an anterior surface of the fascia;
positioning a rearward wall of a gutter adjacent the spacer, preferably in the clip”,[21]
and submitted that the specification taught that the space that accommodated the rearward wall of a gutter in the clip was a “first slot” and this slot was adjacent to the spacer. As such, it was not correct to submit that, in claim 16, the first slot, in a gutter clip having a spacer, may be formed by any means. The patentee submitted that the opponent had sought to limit the invention to the preferred embodiments.
Consideration
In my opinion, it is clear that the originally filed specification disclosed a first slot that receives a rearward wall of a gutter, and it is clear, contrary to the opponent’s position, that this first slot is not any sort of slot, but is partially defined by a spacer. It also seems clear to me that the patentee is specifically disclaiming the embodiment shown in figure 9 above. The question is whether the claims must also include the feature that the slot is also defined by an anterior finger of the clip.
In this regard, I do not take much from either party’s submissions. The part of the specification referred to by the opponent is clearly labelled as describing a preferred embodiment. Furthermore, the passage referred to by the patentee was, as noted by the opponent at the hearing, directed at a method of mounting, and not directed to the multi component gutter bracket as now claimed in amended claim 16. Furthermore, the method steps do not disclose a first slot which is partially defined by a spacer, as claimed in amended claim 16.
Moreover, I note that the passage of Dr Manning at [52] above relied upon by the opponent immediately followed on from this passage in the same declaration:
“Amended claim 16 states that ‘the spacer partially defines the first slot of the clip’. I was asked whether amended claim 16 recites any other features that define the slot, along with the spacer. I explained that no other features defining the slot are found in claim 16.”[22]
To my mind, to follow this question asked of Dr Manning with the one asked of him in the passage cited at [52] above is the wrong way to go about the enquiry and borders on misleading. The question is whether the PSA would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn or directly derive from the complete specification as filed. I think the opponent has focussed on the preferred embodiments to such an extent that they have strayed away from the appropriate approach that should be taken when considering the question is disclosure.
When I consider the question of whether there is a clear and unmistakeable disclosure in the original specification of a first slot which receives the rearward wall of a gutter where a spacer plays a part in defining that first slot, that question must be answered in the affirmative. At the very least it is clearly shown in figures 2, 6 and 7 of the originally filed specification that I have included in this decision.
As to the point of intermediate generalisation, my observations for “mounting portion” are apposite here. A first slot defined in part by the spacer is part of the claimed embodiment. The disclosure was not that it was any sort of slot, as the opponent submitted, but it was a slot which was defined in part by the spacer. It is not correct, in my opinion, to say that the first slot has, in some way been disaggregated from other integers of the embodiment. The slot was clearly there in the embodiment.
I do not believe that the “first slot” in claim 16 contravenes s102(1).
a “plurality of teeth situated in the first slot” in claim 16
Opponent’s submissions
The opponent submitted that the feature of the “plurality of teeth situated in the first slot” in amended claim 16 did not reflect what was in the originally filed application. Specifically, the opponent noted that original specification stated that:
“The anterior finger preferably has one or more teeth adapted to enhance grip on the rear wall. The one or more teeth also function to allow adjustment of height of a top edge of the rear wall. The teeth are in the first slot”,[23]
which limited the teeth to being positioned on the anterior finger, and amended claim 16 did not have that limitation. While recognising that the specification also stated immediately after this passage:
“The tongue preferably also has one or more teeth on either or both forward and rearward surfaces, the teeth adapted to enhance grip on either the rear wall or fascia”,[24]
the opponent noted that the use of “also has” was a teaching that the teeth on the tongue were in addition to the teeth on the anterior finger. In contrast, amended claim 16 included the use of such teeth in any location in the first slot, not necessarily on the anterior finger (which was not defined in amended claim 16), and this concept was new.
The opponent noted that Mr Hunter had stated that:
“page 3 line 17 states that it is preferable (not mandatory) that the anterior finger has teeth”,[25]
but that Dr Manning had, in response, stated:
“Mr Hunter states that the term ‘preferably’ implies that it is not mandatory that the anterior finger has teeth. On page 3, line 21, it is stated that ‘The tongue preferably has one of [sic] more teeth’. Therefore, Mr Hunter’s conclusion is that it is not mandatory for either the anterior finger or the tongue to have teeth. However, without teeth, what other means of support are indicated for the gutter clip to support the rear wall of the gutter?”[26] (italics in original)
The opponent submitted that this evidence established that the teeth were necessary and, to achieve the goal of support they had to be located on the anterior finger, or tongue.
The opponent submitted that the question was whether the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed. In their opinion:
“[t]he effect of the Proposed Amendments is to claim a monopoly in an arrangement in which teeth are used in any part of the first slot, irrespective of whether the first slot is defined by an anterior finger and tongue, and irrespective of whether those teeth are located on the anterior finger or tongue are anywhere else in that slot.”[27] (italics in original)
On intermediate generalisation, the opponent submitted that there was a connection between the teeth being positioned on the anterior finger and tongue, and being suitably oriented to enhance grip on the rear wall and to allow adjustment of a height of a top edge of a rearward wall of a gutter. However, amended claim 16 included teeth in any location in the first slot in its scope. The opponent submitted that one could posit a scenario where the teeth, instead of being located on either side of the slot (e.g. on the spacer and/or the anterior finger), could be attached to the top portion of the slot. While such an arrangement was encompassed by claim 16, that arrangement was not disclosed.
Patentee’s submissions
The patentee relied upon the passage noted by the opponent ([63] above]), but sought the opposite conclusion. In their submission, this passage of the specification taught that teeth may be on either, or both, sides of the first slot.
The patentee noted that Mr Hunter had said, while referring to the teeth in figure 7 (presented as diagram 10 in his evidence):
“This protrusion arrangement of teeth could instead be added to the front surface of the tongue (as contemplated in the specification on page 3, lines 21-23)”,[28]
and criticised the opponent’s submissions that Dr Manning had said that it was necessary for the teeth to be on the anterior finger. In the patentee’s submission, Dr Manning’s evidence in the paragraph at [64] above was that teeth are necessary. It went no further. The patentee submitted Dr Manning’s evidence that the specification only disclosed specific tooth locations impermissibly limited the invention disclosed in the specification to the preferred embodiments described.
The patentee submitted that the opponent’s position on intermediate generalisation was somewhat contradictory. The patentee noted that the opponent claimed there was a connection between the teeth being positioned on the anterior finger and tongue, and being suitably oriented to enhance grip on the rearward wall and allow adjustment of the height of the top edge of the rearward wall of a gutter. However, the patentee stated that the opponent, having established the connection, also effectively submitted that a PSA would ignore the connection and read amended claim 16 as claiming an invention where the teeth were not on either side of the first slot, but at some other location (like the clip’s bridge) that would not serve the purpose of enhancing grip on the rear wall or allowing adjustments. The patentee submitted that this was not a reading that a PSA would adopt as it would not be a workable or useful embodiment of the invention. Hence, given the disclosure would lead to the expectation that teeth are placed on the sides of the slot, there was no impermissible intermediate generalisation.
Consideration
I am of the opinion that this feature does not contravene s102(1).
The feature that the teeth are “situated in the first slot” is disclosed in the original specification. Like my discussion for the “first slot”, the question is whether the claims should be so limited that the teeth are placed on at least the anterior finger. I take the point that the opponent’s reading of the passage set out at [63] above can be said to indicate that the teeth are preferably located on the anterior finger defining the slot as a minimum requirement. However, I do not take this as definitive. In this regard I note that claims 6 and 10 of the original specification define the teeth as being on the tongue and/or the finger. To my mind, while I accept that these claims are more specific about location than what is in amended claim 16, there is no doubt that teeth being located in the first slot is present in the original specification.
As to the question on intermediate generalisation, I follow my reasoning in previous sections of this decision. The teeth being located in the first slot is part of the claimed embodiment. Contrary to the opponent’s submission, the disclosure of the specification was not that the teeth are in any part of the first slot. Rather, they were in a position that enhanced grip on, and allowed adjustment of a height of a top edge of the rearward wall of the gutter. A reading by a PSA would, in my opinion, not assign a location to the teeth that did not achieve this. To my mind, Dr Manning was too focused on the disclosed embodiments when providing his evidence. This might have been an effect of the nature of the questions he was asked.
the limitation that “only a single support brace may be mounted to the gutter clip” in claims 1 and 16
Opponent’s submissions
The opponent submitted that, in defining that “the support brace and gutter clip are configured so that only a single support brace may be mounted to the gutter clip”, amended claims 1 and 16 extended beyond the original specification. The opponent submitted that there was no disclosure of a single support brace being mounted to the gutter clip in an unspecified manner, but that a specific means had been disclosed, which was the anterior finger of the clip having a slot which slidingly received a rail that formed the base of the support brace. As such, there was no disclosure of the general concept that the gutter clip was configured to mount only a single support brace.
The opponent submitted that it was an intermediate generalisation to claim a single support brace to be mounted to the gutter clip, with the brace being disaggregated from the other features disclosed in the preferred embodiment, being the support bracket having a base that is inserted into a slot on the gutter clip, which were disclosed as essential to achieving this limitation.
Patentee’s submissions
The patentee submitted that the figures in the original specification showed a single support brace attached to the gutter clip. As such, it could not be said that a claim extended beyond the specification because it includes the integer of “the support brace and the gutter clip are configured so that only a single support brace may be mounted to the gutter clip”. The patentee criticised the opponent’s submissions for effectively saying that only the preferred embodiments could be claimed. The patentee also noted that amended claims 1 and 16 stated that “a rigid joint is formable between the support brace and the gutter clip to mount the support brace to the gutter clip” and, while there was a specific example of how that could be achieved in the specification, it was incorrect for the opponent to submit that the claims were directed to a mounting of the bracket to the clip in any unspecified manner. What was required was a rigid joint.
Consideration
I do not believe that the opponent is correct in their position. In line with the patentee’s submissions, there is a disclosure of a single support brace being mounted to the gutter clip, and there is a disclosure of a rigid joint being formed between them. This is what is in amended claims 1 and 16. I do not understand why the specifically embodied mechanism for achieving this rigid joint must be part of the amended claims to avoid a finding of disclosure of new matter. To my mind, what is claimed is clearly not a disaggregation from other features in the preferred embodiment to the extent that there is an impermissible intermediate generalisation. The opponent’s focus on the preferred embodiment, likely influenced by Dr Manning’s evidence arising from the types of questions asked of him, misled them.
I do not consider that the limitation that “only a single support brace may be mounted to the gutter clip” in claims 1 and 16 contravenes s102(1).
defining the gutter clip as “having” a tongue or spacer in claims 1 and 16
Opponent’s submissions
The opponent submitted that the original specification, given multiple references to a “clip and spacer assembly”[29], described a multi-component gutter bracket comprising three distinct components: a gutter clip, a spacer, and a support brace. In the patentee’s opinion, the original disclosure was that the gutter clip and the spacer were separate functional and structural components that were to be brought together in an “assembly”. That is, the clip was one component, and the spacer was a separate component.
The opponent submitted that the effect of the amendment in removing “attached” from the claims and replacing it with “having” was to claim that the spacer was part of the gutter clip, rather than being a spacer that was attached to the gutter clip. In the opponent’s opinion, this was matter that extended beyond that disclosed in the original specification.
Patentee’s submissions
The patentee conceded that “attached” could be said to have indicated that the clip and spacer could be separate components that were then attached to each other. However, the patentee submitted that the claims defined the spacer as being integrally formed with the clip, which was a form of attachment. As such, the removal of “attached”, but the retention of the integral formation requirement changed nothing.
Consideration
I agree with the patentee that there is no issue under s102(1). The original specification did state that the clip and spacer were “attached”, but, as noted by the patentee, the specification also included a clear teaching that “[t]he spacer is preferably integrally formed with the clip”.[30] I do not see any significant difference between a “spacer attached to the gutter clip” where the clip is integrally formed and “a gutter clip having a spacer” with the same requirement that the clip be integrally formed. They are the same thing in my opinion.
Conclusion on s102(1) ground
It follows that the opponent has not been successful under this ground.
s102(2)(a) – claim would not in substance fall within the scope of the claims before amendment
Opponent’s submissions
The opponent’s arguments here overlapped substantially with their last argument under the s102(1) ground. They submitted that claim 1 prior to amendment defined the gutter bracket as comprising (in a broad sense) the three distinct components of a gutter clip, a spacer attached to the clip, and a support brace, with each performing discrete functions:
(1)the gutter clip mounting to a fascia,
(2)the spacer spacing the rearward wall of the gutter from the fascia to provide a water flow channel,
(3)and the support brace supporting an outer wall of the gutter.
The opponent submitted that amended claims 1 and 16, which did not explicitly state that the spacer was “attached to” the gutter clip, defined the gutter bracket as comprising two distinct components of a gutter clip and a support bracket, since the spacer had been redefined as being part of the clip rather than being attached to it. This led, in the opponent’s opinion, to a situation where the gutter clip functioned to space the rearward wall of the gutter from the fascia, and the spacer was adapted to mount to a fascia and receive a rearward wall of a gutter. In the opponent’s opinion this meant that different configurations of multi-component gutter brackets would infringe amended claims 1 and 16, highlighting an impermissible change in scope.
Patentee’s submissions
The patentee submitted that the opponent’s submission was not consistent with the teaching of the specification. In the patentee’s opinion, the language of the specification indicated that “attached to” included “integrally formed”. The patentee noted that claim 1 of the specification as granted defined “a spacer is attached to the gutter clip” and “the spacer is integrally formed with the clip”. The patentee observed that amended claim 1 defined that the gutter clip defined an “intermediate tongue”, “the gutter clip is integrally formed” and “the spacer is formed by the tongue”. The patentee also noted that amended claim 16 states that “the spacer partially defines the first slot of the clip” and “the gutter clip is integrally formed”. The patentee submitted that, in the amended claims, the spacer was integrally formed with the clip. This was what was required, leading to the inevitable conclusion that the amended claims fell within the scope of the claims prior to amendment.
Consideration
I do not find the opponent’s submissions convincing. Accepting the opponent’s position that, prior to amendment, the claims required the gutter clip to mount to a fascia, the spacer to be dimensioned to space the rearward wall of the gutter from the fascia to provide a water flow channel, and the support brace to support an outer wall of the gutter, those requirements still exist in the claims after amendment. While the order of words and features is much altered, I cannot see the structural redefinition that the opponent apparently sees. There has been no change in scope insofar as those features are concerned. In line with the the opponent’s submission, it could be said to be reasonable to say that the gutter clip in the amended claims functioned (in a general sense) to space the rearward wall of the gutter from the fascia, since the spacer, with this functionality, was part of the gutter clip. However, to be frank, saying that the spacer was adapted to mount to a fascia and to receive a rearward wall of a gutter, is incredibly strained. The fact that the spacer is part of the gutter clip does not mean that the spacer (being a part of the gutter clip) must perform all (or a randomly selected) functionality of the gutter clip as a whole.

Moreover, as I have already discussed, I cannot agree with the opponent that the effect of the proposed amendments would be to delete the requirement of “attachment” between the gutter clip and the spacer and merely require that the clip “have” a spacer, whether the spacer is attached to the clip or not. To my mind, the requirement that the clip (which “has” the spacer) be integrally formed establishes that such an effect is not present. While the opponent submitted that different configurations of multi-component gutter brackets would infringe the amended claims, they provided no example of such a configuration. Indeed, I cannot think of an example of something that would infringe the amended claims, but would not infringe the accepted claims.
It follows that this ground of the opposition fails. All claims following amendment remain within the scope of the claims before the amendment.
s40(2)(a) – invention must be clearly and completely disclosed
Parties’ submissions
The opponent submitted that amended claim 16 defined the gutter clip as having “a mounting portion … wherein the mounting portion is adapted to mount to a fascia”. In the opponent’s opinion, claim 16 encompassed a range of mounting portions which could not work absent the application of inventive ingenuity and undue burden. As such, there was no enabling disclosure of all types of mounting portions that fell within the scope of that term. There was only a disclosure of the mounting portion being the second slot which was defined by the tongue and posterior finger. The opponent also pointed to the evidence of Mr Hunter, specifically his Diagram 9, which, in the opponent’s opinion, clearly fell within the scope of claim 16 (with or without a fastener), but which could not be said to be enabled. Consequently, claim 16 was not enabled across its scope contrary to s40(2)(a).
The patentee disputed the opponent’s submission that claim 16 encompassed a range of mounting portions which could not work absent the application of inventive ingenuity and undue burden. The patentee submitted that the mounting portion of the clip was that part that allowed the clip to be mounted onto or over the fascia, and that could not be said to be a range. The patentee submitted that I should not accept the opponent’s submission that Mr Hunter’s Diagram 9, being an example of a mounting potion within the scope of claim 16, is not enabled. The patentee submitted that Diagram 9 illustrated a mounting onto a fascia and that a PSA would recognise when fasteners were required to mount the clip to the fascia and when they were not. While claim 16 did not define the use of fasteners, this did not mean that a PSA could not perform the “mounting portion” of claim 16.
Consideration
I believe that this ground can be dealt with quickly. Even if I were to accept (which I do not) the opponent’s submissions that claim 16 extends to new and entirely different forms of mounting and, therefore, is not fully enabled, I note that s102(2)(b) requires that the non-compliance with s40(2)(a) is to arise “as a result of the amendment”. In this regard, I note that, when it comes to a mounting mechanism, accepted claim 1 has the following:
“a gutter clip adapted to mount to a fascia”,
and nothing more. Consequently, if the argument being advanced that “a gutter clip having a mounting portion … wherein the mounting portion is adapted to mount to a fascia” is said to impermissibly extend to new and entirely different forms of mounting owing nothing to the disclosure, the same must be said (possibly to an even greater extent) of the claims prior to amendment. It follows that this issue (if there be one) does not arise as a result of the amendment, but is a pre-existing one.
This ground of the opposition fails.
s40(3) – claim(s) must be supported by matter disclosed in the specification
Parties’ submissions
Similar to their submissions for s102(2)(a), the opponent stated that, prior to amendment, claim 1 had defined the spacer as being attached to the clip. Following amendment, the claims defined the spacer as being part of the clip. In line with the opponent’s submissions for s102(2)(a), this led, in the opponent’s opinion, to a situation where the gutter clip functioned to space the rearward wall of the gutter from the fascia, and the spacer was adapted to mount to a fascia and receive a rearward wall of a gutter. In the opponent’s opinion the technical contribution of the patent was directed to a spacer attached to the clip in the form of a tongue extending downwardly from the bridge. Therefore, if the claim’s scope was such that the spacer could include (as part of itself) one or more of the anterior finger, posterior finger, and bridge (wholly or in part), the claim was not supported.
With respect to claim 16, the opponent submitted that, in defining the clip as simply having “a mounting portion … wherein the mounting portion is adapted to mount to a fascia” with no further detail, the claim extended beyond the technical contribution of the mounting portion being formed as a second slot defined by the tongue and posterior finger, which fitted over a fascia.
The opponent also submitted that, for the reasons set out for claim 16, claim 17, which was a mounting method which could use the mounting clip of claim 16, was not supported. Furthermore, as the method of claim 17 stated that:
(a)the locating step was simply the clip of the gutter bracket being located onto or over the fascia,
(b)the first positioning step involved the spacer of the gutter clip being placed on or adjacent an anterior surface of the fascia, and
(c)the second positioning step required a rearward wall of the gutter being positioned adjacent the spacer and in the gutter clip,
this led to the conclusion that claim 17 was not supported. This was because it did not specify that the rearward wall of the gutter was received in the first slot, and that a second slot was used to locate the clip onto or over the fascia, which was the only disclosure of the manner in which the gutter was mounted.
With respect to the opponent’s submissions on the difference between the spacer being attached to the clip and the spacer being part of the clip, the patentee repeated the submissions they made in relation to the s102(1) and (2)(a) grounds. The specification as filed taught that the spacer could be integrally formed with the clip and the PSA would have no difficulty understanding that concept.
On the issue around “mounting portion”, the patentee repeated their earlier submissions. They submitted that a PSA could readily understand what was meant by a mounting portion that was adapted to mount the clip onto the fascia. The patentee again submitted that there was no principle that necessarily required limiting the invention to that disclosed in a preferred embodiment.
With respect to claim 17, the patentee submitted, given their position for claim 16, that claim 17 was also supported. The patentee also submitted that it was not correct to say that claim 17 did not specify that the rearward wall of the gutter was received in the first slot. In their opinion, claim 17 defined the rearward wall being received in the gutter clip and claim 16 defined the rearward wall being received in the first slot. As such, the feature was defined. With respect to the opponent’s position that claim 17 did not specify that a second slot was used to locate the clip onto or over the fascia, the patentee followed their submissions for the s102(1) ground around “mounting portion”. They maintained that the disclosure of the patent was not limited to mounting by use of a second slot.
Consideration
The opponent has the same problem for this ground as they did for their submissions under the s40(2)(a) ground. Assuming for the sake of argument that the opponent’s position was correct and the claims after amendment were missing the features of:
(a)a clip formed by an anterior finger, a posterior finger and a bridge connecting them;
(b)a first slot being formed by the anterior finger and a spacer extending from the bridge; and
(c)a second slot defined by the tongue and posterior finger, which fitted over a fascia,
those same features do not appear in the accepted claims. As seemed to be agreed to by the opponent at the hearing, the reasons why the amended claims lack support also apply to the accepted claims. It follows that lack of support (assuming it to be the case, which I do not think can be) does not arise as a result of the amendment. It would be a pre-existing one.
Consequently, this ground of opposition fails.
Conclusion
The specification would not, as a result of the amendments, extend beyond the disclosure of the specification as filed. The amendment results in claims that in substance fall within the scope of the claims before amendment. The amendment does not result in a specification that fails to clearly enough and completely enough disclose the invention, or lead to the claims lacking support.
I therefore will allow the amendment composed of the proposed amendments filed on 5 August 2022, 24 January 2023 and 29 May 2023.
I also note the words of the clear re-examination report of 3 July 2023:
“When the amendments are allowed, you will receive a letter informing you that the re examination is complete.”
Such a letter will issue in due course.
Costs
The opposition to the s104 amendments is unsuccessful. On this basis I consider it appropriate to make an award of costs against the opponent, Gutter Grip Australia Pty Ltd.
Greg Powell
Delegate of the Commissioner of Patents

[1] [2020] FCA 328 (CSIRO v BASF) at [215]-[218]

[2] CSIRO v BASF at [211] and [213]

[3] Ibid at [202]

[4] (1953) 70 RPC 221 at page 223

[5] AOJP 1752 at page 1754

[6] [2000] FCA 1918

[7] [2022] FCA 540 at [376] to [378],

[8] [2021] FCA 970 (Cytec)

[9] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR Building Products)

[10] Evolva SA [2017] APO 57

[11] [2020] FCA 1477 at [546]-[547]

[12] Hunter at [79]

[13] CSIRO v BASF at [211]

[14] Hunter at [36]

[15] See ibid

[16] Specification at page 2, line 24 and page 5, line 10

[17] Ibid at page 2, line 26 and page 6, line 21

[18] Ibid at page 3, line 6 and original claim 4

[19] Manning1 at [84]

[20] Opponent’s written submissions at [59]

[21] Specification at page 4 lines 25–28

[22] Manning1 at [83]

[23] Specification at page 3, lines 17–20

[24] Ibid at page 3 lines 21–23

[25] Hunter at [95]

[26] Manning2 at [75]

[27] Opponent’s written submissions at [67]

[28] Hunter at [93]

[29] Specification at page 7, line 26, page 8, lines 8, 13 and 20, for example

[30] Ibid at page 3, line 2