Kangatech Pty Ltd v Vald Performance Pty Ltd - [2022] APO 31

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vald Performance Pty Ltd v Kangatech Pty Ltd [2022] APO 31
Patent Application: 2017204276

Title:A Testing and Training Apparatus

Patent Applicant: Kangatech Pty Ltd

Opponent:Vald Performance Pty Ltd

Delegate:R Subbarayan

Decision Date: 10 May 2022

Hearing Date: Written submissions completed on 2 March 2022

Catchwords: PATENTS - opposition under section 104 – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether as a result of the amendments, the claims are not supported or not clear – amendments allowable – costs awarded against the opponent

Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: Davis IP Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017204276

Title:A Testing and Training Apparatus

Patent Applicant: Kangatech Pty Ltd
Date of Decision: 10 May 2022
DECISION

The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed or lead to the claims to not in substance fall within the scope of the claims of the specification before amendment or to lack support or clarity.
I therefore allow the amendment request of 7 April 2021.
I award costs against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application AU2017204276 in the name of Kangatech Pty Ltd (the applicant) was filed on 23 June 2017. Following expedited examination, it was advertised as having been accepted on 9 July 2020. Vald Performance Pty Ltd (the opponent) filed a notice of opposition to the grant of the patent on 22 July 2020. A Statement of Grounds and Particulars was filed on 22 October
2020. This was then followed with their evidence in support that was filed on 22 January 2021.
On 18 February 2021, the applicant filed a request to amend the specification. This amendment request was advertised as being allowable on 1 April 2021.
On 7 April 2021, the applicant withdrew the amendment request and filed a new request to amend the specification. Although the opponent filed submissions that these amendments were not allowable, the examiner found the amendments to be allowable and this was advertised on 12 August 2021.
On 12 October 2021, the opponent filed a notice of opposition to the allowance of the amendment request. A Statement of Grounds and Particulars was filed on 12 November 2021.
As both parties were content for the hearing on the s104 opposition to proceed by way of written
submissions, the Commissioner issued a direction on 20 January 2022 setting out the time periods for the filing of written submissions.
The opponent filed their written submissions in support on 3 February 2022, the applicant filed their written submissions in answer on 21 February 2022 and the opponent filed their written submissions in reply on 2 March 2022.
SPECIFICATION
The following discussion of the invention as described is with reference to the specification as filed.
The present invention relates to an apparatus for measuring “the maximum voluntary contraction (MVC) of an isolated group of muscles”[1].
[1] Specification as filed, page 1, line 10
Figure 1 that is reproduced below depicts a preferred embodiment of the apparatus of the present invention.
The apparatus has a base 12 and an upright frame 20 comprising upright member 24a, 24b and handle 25. A generally T-shaped instrument 22 is mounted between the upright members and is rotatably mounted on an instrument support unit comprising a horizontal bar 50 (not shown in figure 1) extending between the upright members. The instrument support unit is slidably adjustable along the upright members by means of sleeves 28a, 28b and can be locked into position at a desired height using locking pins 30a, 30b in respective sleeves. The instrument includes a plurality of force sensors including sensors 36a, 36b along the sides of the stem 34, sensors 40a, 40b on the side wings 38a, 38b and sensors 42a, 42b and 42c on the lower surface. The instrument also includes a control panel 44 for controlling the instrument, a plurality of load cells, a battery, a microcontroller and a data communication bus. It also includes LED indicators 46 to indicate which of the force sensors are active. The microcontroller can process analogue signals from the load cells associated with each of the force sensors and transmit a series of timestamped measurements of instantaneous force to an associated computing device.
The instrument support is described with reference to figure 2. Figure 2 and its corresponding description are reproduced below.
“FIG. 2 is a front view of an instrument unit support of apparatus 10 in the form of a horizontal member or bar 50, for supporting instrument unit 22. Horizontal bar 50, in this example, is attached to and couples sleeves 28a, 28b to one another. Instrument unit 22 is pivotable about horizontal bar 50.
Horizontal bar 50, in this example, is integral, but may alternatively comprise two separate segments each pivotably coupled to instrument unit 22. In that case, horizontal bar 50 does not couple sleeves 28a, 28b to one another; this is done by the combination of horizontal bar 50 and instrument unit 22”.[2]
[2] Specification as filed, page 7, lines 17-25
The specification as filed then also describes further embodiments of the instrument unit and the instrument support with reference to figures 14 and 15. These figures and the corresponding descriptions are reproduced below.
“In apparatus 100 of FIG. 14, instrument unit 22 is supported by horizontal bar 50’,
which is supported by sleeves 28a, 28b which are supported by respective upright members 24a, 24b. However, in this embodiment, horizontal bar 50’ terminates in flat plates 102a, 102b that are received by slots in the inner faces of sleeves 28a, 28b. This facilitates the mounting and demounting of instrument unit 22 from sleeves 28a, 28b when desired”.[3]
“For example, apparatus 110 may be configured with sensors 112 attached to horizontal bar 50, as shown in FIG 15, in order to measure force applied perpendicularly to rotational axis A of bar 50. As in the other embodiments, sensors 112 can be rotated about rotational axis A of horizontal bar 50 (such as by rotating sensors 112 relative to horizontal bar 50 or by rotating horizontal bar 50), to allow the force to be applied in any of a plurality of directions”.[4] (emphasis added)
[3] Specification as filed, page 13, lines 1-6
[4] Specification as filed, page 13, lines 23-28
The specification as accepted has 14 claims that read as follows:
1. A testing and training apparatus, comprising:
an upright frame including two upright members;
an instrumentation support that is supported by the upright frame so as to be adjustable in height, wherein the instrumentation support is rotatable about a horizontal axis with respect to the upright frame and is selectively lockable against further rotation, the horizontal axis extending in a direction between the two upright members; and
instrumentation mountable on the instrumentation support;
wherein the instrumentation comprises a plurality of force sensors,
wherein the instrumentation support comprises at least one sensor mounted to receive a force in a direction substantially perpendicular to another sensor, and
wherein the apparatus outputs data signals indicative of force detected by the force sensors.
2. An apparatus as claimed in claim 1, wherein the instrumentation comprises a control panel, a plurality of load cells, a battery, a microcontroller and a data communication bus.
3. An apparatus as claimed in claim 1, wherein the instrumentation is distributed, each of the force sensors comprising a control panel, a load cell, a battery, a microcontroller and a data communication bus.
4. An apparatus as claimed in any one of claims 1 to 3, wherein the instrumentation comprises a plurality of LED or other indicators corresponding to the respective force sensors, wherein the indicators are activatable to identify to a user which of the force sensors to employ.
5. An apparatus as claimed in any one of claims 1 to 4, wherein the instrumentation selectively activates one or more of the force sensors according to a desired testing or training regime.
6. An apparatus as claimed in claim 5, wherein the instrumentation is controllable with controls provided therein.
7. An apparatus as claimed in claim 5 or claim 6, wherein the instrumentation is controllable with a computing device when in data communication with the instrumentation.
8. An apparatus as claimed in claim 7, further comprising the computing device.
9. An apparatus as claimed in any one of claims 1 to 8, further comprising at least one additional sensor mounted to the instrumentation support and arranged to receive a force in a direction substantially opposite to another sensor.
10. An apparatus as claimed in any one of claims 1 to 9, further comprising at least one additional sensor mounted to the instrumentation support and arranged to receive a force in a direction substantially the same as another sensor.
11. An apparatus as claimed in any one of claims 1 to 10, wherein the instrumentation support is elongate and wherein the horizontal axis is parallel a longitudinal axis of the instrument support.
12. An apparatus as claimed in any one of claims 1 to 11, wherein at least one sensor is mounted to receive a force substantially parallel to the horizontal axis of the instrument support.
13. A testing or training method, comprising:
locating instrumentation with an instrumentation support on an upright frame including two upright members at a height and with a rotational orientation with respect to a horizontal axis selected according to a desired testing or training exercise, the
instrumentation comprising a plurality of force sensors, wherein at least one sensor is mounted to receive a force in a direction substantially perpendicular to another sensor;
conducting the testing or training exercise; and
outputting data signals indicative of force detected by the force sensors;
wherein the instrumentation is rotatable relative to horizontal axis of the upright frame and wherein the horizontal axis extends in a direction between the two upright members.
14. A method as claimed in claim 13, comprising adjusting the rotational orientation of the instrumentation during or between exercises.
The Proposed Amendments
The proposed amendments include amendments to a number of claims and to the corresponding consistory statements in the body of the specification. The amended claims that are the subject of dispute are as follows with underling indicating additions and strikethrough indicating deletions to the accepted claims.
1. A testing and training apparatus, comprising:
an upright frame including two upright members;
an instrumentation support that is supported by and substantially between the two upright members of the upright frame so as to be adjustable in height, wherein the instrumentation support is rotatable, when supported by the two upright members, about a horizontal axis with respect to the upright frame and is selectively lockable against further rotation, the horizontal axis extending in a direction between the two
upright members; and
instrumentation mountable on the instrumentation support; wherein the instrumentation comprises a plurality of force sensors,
wherein the instrumentation support comprises at least one sensor mounted to receive a force in a direction substantially perpendicular to another sensor, and
wherein the apparatus outputs data signals indicative of force detected by the
force sensors.
13. An apparatus as claimed in any one of claims 1 to 12, wherein the instrumentation support is rotatably mounted to two sleeves, one at each end of the
instrumentation support, each sleeve being slidably adjustable in position along a
respective upright member and lockable at a desired position on its upright member.
1314. A testing or training method, comprising:
locating instrumentation with an instrumentation support on an upright frame
including two upright members at a height and with a rotational orientation with respect to a horizontal axis selected according to a desired testing or training exercise, the instrumentation comprising a plurality of force sensors, wherein at least one sensor is mounted to receive a force in a direction substantially perpendicular to another sensor, wherein the instrumentation support is supported by and substantially between the two
upright members;
conducting the testing or training exercise; and
outputting data signals indicative of force detected by the force sensors;
wherein the instrumentation is rotatable relative to horizontal axis of the upright frame, when supported by the two upright members, and wherein the horizontal axis extends in a direction between the two upright members.
THE RELEVANT LAW
The application was filed on 23 June 2017, and the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB) therefore apply to the present application.
The requirements for the allowability of amendments are governed by subsections 102 (1) and (2) which state that:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)   the complete specification as filed;
(b)   other prescribed documents (if any).
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment;
(a)   a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)   the specification would not comply with subsection 40(2), (3) or (3A).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment. If any of these matters was pre-existing, then it will not result in an amendment being not allowable.[5]
[5] Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019.
GROUNDS OF OPPOSITION
The opponent has submitted that the proposed amendments are not allowable because, as a result of the amendment, the specification would claim matter that extends beyond matter disclosed in the complete specification as filed (section 102(1)), a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment (section 102(2)(a)) and the specification would not comply with subsection 40(3) as the amended claims lack support and are not clear (section 102(2)(b)).
LEGAL PRINCIPLES
Before I discuss the actual issues raised by the opponent, I will briefly set out the legal principles that apply in the present opposition.
Section 102(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 [2020] FCA 328, who noted as follows:
“215. First, as has been pointed out, the test is a strict one.
216. Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.
217. 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.
218. 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”.
Section 40 (3) - The claim(s) must be supported by matter disclosed in the specification.
The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 at [546]- [547]:
“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”.
Section 40 (3) - The claim(s) must be clear
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
The requirement for clarity will be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Further, “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use”. (Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121, 77 IPR 229 at [81])
The allowability of the proposed amendments
The opponent has argued that the amendments are not allowable as they would, as result of the amendment, not comply with the requirements of s102(1), s102(2)(a) and s102(2)(b). As the reasons provided by the opponent for each of these grounds overlap to a great extent, I will cover each of these grounds together where possible and if needed deal with other issues separately.
Claim 13
This is a totally new dependent claim that appends to any one of claims 1 to 12 and defines that “the instrumentation support is rotatably mounted to two sleeves, one at each end of the instrumentation support, each sleeve being slidably adjustable in position along a respective upright member and lockable at a desired position on its upright member”.
The opponent has submitted as follows in relation to this new claim.
19. Claim 13 therefore introduces the requirement for the instrumentation support to be rotatably mounted to the sleeves. Furthermore, the sleeves are to be located at each end of the instrumentation support. The sleeves therefore cannot form part of the instrumentation support. If they did, it would not be possible for them to be mounted to themselves nor at each end of themselves.
20. New claim 13 therefore attempts to claim what is described in the specification as the instrumentation support as not being part of the claimed instrumentation support. It follows that claim 13 extends beyond what was disclosed in the complete specification as filed.
21. An instrumentation support as claimed in new claim 13 not clearly and unambiguously disclosed in the specification, and therefore fails the strict s102(1) test.

The opponent relies on the embodiment of the instrument support shown in figure 2 which shows the horizontal bar 50 and sleeves 28a 28b as being integrally formed in support of their contention that the sleeves are part of the instrumentation support in the specification as filed.
While the embodiment of the instrument support shown in figure 2 certainly suggests that the sleeves are also part of the instrumentation support, it is clear from the embodiments of figures 3A, 3B, 14 and 15 that the sleeves need not be integrally formed with the bar, with the sleeves merely being provided to slidably support the bar between the upright members and to lock it at a desired height. I am therefore satisfied that there is clear disclosure in the specification as filed for the instrumentation support to not include the sleeves.
Amended claim 13 does not therefore extend beyond the disclosure of the specification as filed and also does not lack support.
In relation to claim 13, the opponent has also submitted that newly added claim 13 includes no limitation as to how the instrumentation support is rotatably mounted to the sleeves and therefore includes any rotation mechanism which makes the claim extend beyond what is disclosed in the specification and also lack support.
I do not find this argument persuasive. As can be seen in figure 15, the horizontal bar 50 is connected to the sleeves at each end and according to the corresponding description, the bar can be rotatable. It goes without saying that for this to happen, the bar would have to be rotatably mounted to the sleeves at either end. I do not see the need for new claim 13 to further define how the bar is rotatably mounted to the sleeve and also by not doing so, I do not consider that it extends beyond what is disclosed in the specification or lacks support. This attack on the allowability of new claim 13 has not been made out.
Claim 1
The opponent has also argued that as a result of new claim 13, claim 1 also extends beyond the disclosure of the specification as filed and lacks support.
22. Claim 1 before amendment required the instrumentation support to be “supported by the upright frame so as to be adjustable in height”. The only mechanism described in the specification for this feature is the sleeve assembly.
23. As a result of the amendment, the sleeve assembly cannot form part of the instrumentation support or it would conflict with what is claimed in newly added claim 13. It follows that claim 1, as amended, attempts to claim that the instrumentation support is supported by the upright frame without including any mechanism described in the specification to provide for that support and, thus, extends beyond matter disclosed in the complete specification as filed.
39. Claim 1, as amended, requires the instrumentation support to be “supported by and substantially between the two upright members of the upright frame so as to be adjustable in height, wherein the instrumentation support is rotatable, when supported by the two upright members”. There is only one mechanism of the described instrument unit 22 being rotatable when supported by the upright members; namely using a horizontal bar 50. The claimed breadth of any and all methods and mechanisms of rotation when the instrumentation is supported by two upright members is therefore also not supported by the specification as filed.
I have already found that there is disclosure in the specification as filed for the sleeve to not form part of the instrumentation support. Furthermore, there is disclosure in the embodiment of figure 15 for the instrument support (horizontal bar 50) to be rotationally supported by the upright members through the sleeves. In relation to the argument that the claim breadth encompasses any and all methods and mechanisms of rotation, I note that even if this is an issue, it is not as a result of amendment, as claim 1 as accepted included this same limitation. It follows that this argument from the opponent has not been made out.
The opponent has also submitted that according to the specification as filed, the instrumentation support comprising the bar 50 is supported between the upright members, but amended claims 1 and 14 only require the instrumentation support to be substantially supported between the upright members and because of the inclusion of the term ‘substantially’ would include within its scope, configurations where the instrumentation support does not extend between the upright members and that there is no clear and unambiguous disclosure of such an instrumentation support in the specification and it therefore extends beyond what is disclosed in the specification as filed and lacks support.
Again, I do not find this argument persuasive. The use of the term ‘substantially’ does no more than allow for minor variations due to manufacturing tolerances without affecting the performance of the invention. This language is commonplace in claim drafting and, in my view, does not make the claim extend beyond the disclosure of the specification as filed or to lack support.
The opponent has also submitted that as amended claim 1 requires the sleeves to not form part of the instrumentation support while in the claims before amendment, consistent with what is described in the specification, the instrumentation support would have to include the sleeves, this leads to amended claim 1 not falling within the scope of the claims before amendment as required by s102(2)(a).
I have already found that even in claim 1 as accepted the sleeves do not form part of the instrumentation support and hence this argument of the opponent has not been made out.
Other Issues
The opponent has submitted that claims 1, 13 lack clarity for very much the same reasons as put forth in relation to s102(1), namely that it is unclear what features constitute the ‘instrumentation support’. As I have already discussed earlier, it is clear from a reading of the specification as filed that the instrumentation support is constituted by the horizontal support bar 50 which can be either a single horizontal bar extending between the two upright members or two horizontal bars with the instrumentation support providing the link therebetween. Claims 1 and 13 do not lack clarity in this regard.
The opponent has also submitted that claim 13 additionally lacks clarity as follows.
49. New claim 13 introduced by the Opposed Amendment requires the instrumentation support to be “mounted to two sleeves, one at each end of the instrumentation support”. The word end is undefined and, without further description, is unduly broad making the proposed location of the sleeves unclear. This is somewhat clearer when claim 13 is dependent upon claim 11, which defines that the instrumentation support is elongate, but no such limitation is imparted by any of the other dependencies. This issue is exacerbated by the lack of any non-elongate embodiments being disclosed and the rule of redundancy when claim 13 is not dependent upon claim 11; i.e. the instrumentation support must be able to be non-elongate for claim 11 to have purpose. A non-elongate embodiment of the instrumentation support would have no discernible ‘end’, rendering claim 13 unclear.
Adopting a sensible approach to claim construction it is quite clear from the definition in claim 1 that the instrumentation support is supported by and between the two upright members of the upright frame and is also rotatable about a horizontal axis, that the instrumentation support has an extent that could be considered as an axis and where the axis exits the support could be considered to be ends of the support. Dependent claim 13 then defines that these ends are mounted to respective sleeves 28a, 28b. I do not see any lack of clarity in this definition and any ambiguity, even if it does exist, can be readily resolved by having recourse to the body of the specification or by restricting the dependency to claim 11 which clearly defines the support as being elongate. Claim 13 does not lack clarity in this regard.
CONCLUSION
The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed or lead to the claims to not in substance fall within the scope of the claims of the specification before amendment or to lack support or clarity.
I therefore allow the amendment request of 7 April 2021.
COSTS
The opposition to the s104 amendments is unsuccessful. I see no reason to depart from the normal practice of awarding costs against the unsuccessful party. I therefore award costs according to schedule 8 against the opponent.
R Subbarayan
Delegate of the Commissioner of Patents