Kerry Chrysiliou v Richard Thomas Ross as Trustee for Clear Focus Australia Trust - [2014] APO 3

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Kerry Chrysiliou v Richard Thomas Ross as trustee for Clear Focus Australia Trust
[2014] APO 3

Patent697657
Title:Image Display Apparatus

Patentee:  Richard Thomas Ross as trustee for Clear Focus Australia Trust
Opponent:  Kerry Chrysiliou
Delegate:  Dr S. K. Aggarwal
Decision Date:  24 January 2014
Hearing:  Written submissions filed by 22 November 2013
Catchwords:  PATENTS – opposition to an amendment – whether amendment is allowable under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed – amended claims in-substance fall within the scope of the granted claims - description not amended – amendment allowed - cost in accordance with Schedule 8 awarded against the opponent.

Representation: Patent applicant: IP Gateway Patent & Trade Mark Attorneys
Opponent:Chrysiliou IP Patent & Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:697657

Title:Image Display Apparatus

Patentee: Richard Thomas Ross as trustee for Clear Focus Australia Trust
Date of Decision: 24 January 2014
DECISION
I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990, and consequently the opposition fails on all grounds of opposition. Thus subject to appeal, I dismiss the opposition and allow the amendments.
I award costs against the opponent.
REASONS FOR DECISION
Background

Patent application 81715/94 (“the application”) directed to an Image Display Apparatus was filed on 22 December 1994. The application claims priority from United States patent application 08/324889 filed on 18 October 1994. The application proceeded to acceptance and was advertised accepted on 15 October 1998. Subsequently, a patent number 697657 (“the patent”) was granted in respect of the application on 28 January 1999.
On 14 March 2007, a request for re-examination of the patent was filed by Andrew Wilson of 3M Australia through the patent attorney firm of Freehills, Sydney. The request cited several patent documents, in light of which it was alleged that various claims of the patent lacked novelty and inventive step. Following re-examination of the patent, a first re-examination report was issued on 7 May 2010. After several proposed amendments, and a fourth and final re-examination report, the matter was set down for hearing on 8 February 2012.
On 16 March 2012, the patentee filed a request to replace all claims of the patent with new claims under section 104.
On 27 March 2012 in Richard Thomas Ross as trustee for Clear Focus Australia Trust [2012] APO 39, a Delegate of the Commissioner of Patents held that amendments proposed on 16 March 2012 were allowable and the claims of the patent so amended were novel and inventive in light of the prior art referred to in the re-examination request. Therefore there was no ground of revocation of the patent so amended. The Delegate also granted leave to amend the complete specification of the patent in accordance with the statement of proposed amendment filed on 16 March 2012.
On 12 April 2012, the patentee filed another request to amend the claims under section 104.
The amendments filed on 27 March 2012 and 12 April 2012 were advertised on 17 May 2012.
A notice of opposition to the allowance of amendments was filed by Kerry Chrysiliou (“the opponent”) of Chrysiliou Patent & Trade Mark Attorneys on 17 August 2012, and a statement of grounds and particulars was served on 19 November 2012. The grounds of opposition specified in the statement of grounds and particulars are that the amendments do not comply with subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990.
The evidence in support was served on 15 February 2013. The opponent further filed a declaration on 31 October 2013 correcting some errors in the evidence in support. However, no evidence in answer or reply was served by the parties.
Subsequent to correspondence with the parties, on 10 October 2013 the Patent Office advised the parties that they will be heard by written submissions. Each party was directed to file their submissions in chief and submissions in answer by 1 November 2013 and 22 November 2013 respectively. The parties filed their respective written submissions within the time via their respective patent attorneys.
The Particulars
The statement of grounds and particulars opposes the amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b). Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsection 40(3).
The Specification
The present invention relates to an Image Display Apparatus and in particular to a one-way vision assembly wherein an image is visible from a first side of the assembly and not visible from a second side of the assembly.
The Nature of Amendments
The specification before amendment contained 48 claims including 2 independent claims. The statement of proposed amendments filed on 16 March 2012 replaces all claims before the amendment (“the granted claims”) and introduces 50 claims including 10 independent claims. The amendment substantially alters the text of the granted claims. There are no amendments to the description. The statement of proposed amendment filed on 12 April 2012 makes a minor amendment to the appendance of a dependent claim.
The particulars relate to all claims after the amendments (“the amended claims”). The amended independent claims 1, 2, 5, 6, 8 and 10-12 are directed to a one-way vision assembly while the amended independent claims 37 and 43 are directed to a method of manufacturing a one-way vision assembly. The amended claims 1 and 37 read as follows:
1. A one-way vision assembly of the type whereby at least one image is visible from a first side of the assembly and not visible from a second side, opposite to the first side of the assembly, the assembly comprising:
a first layer having at least a light reflective surface, bonded to:
a second layer having at least a light absorbing surface; and
an adhesive layer adjacent to a surface of the first or second layer,
wherein the assembly is perforated by a plurality of substantially round through-holes of a substantially uniform hole diameter of from about 0.001” to about 1” and arranged in a staggered hole pattern to provide an open area of up to about 70% such that the holes through the first layer, second layer and adhesive layer are aligned.
37. A method of manufacturing a one-way vision assembly suitable for displaying at least one image, the image being visible from a first side of the assembly and not visible from a second side the method comprising:
bonding a first layer having at least a light reflective surface to second layer having at least a light absorbing surface; and
applying an adhesive layer adjacent to the surface of the first or second layer to form the assembly;
perforating the assembly with a plurality of substantially round through-holes of a substantially uniform hole diameter of from about 0.001” to about 1” and arranged in a staggered hole pattern to provide an open area of up to about 70%; such that the holes through the first layer, second layer and adhesive layer are aligned; and
applying an image to the assembly.
The amended claims 2, 5, 6, 8 and 10-12 recite the features of the amended claim 1 with additional limitations. The amended claim 43 recites the features of the amended claim 37 with additional steps of applying an image to a surface of the first or second layer before or after perforation of the assembly and applying the assembly to a bus.
Evidence
The evidence in support consists of a single statutory declaration of Mr George Roland Hill. The Hill declaration relies on 16 exhibits (Annexures GRH-1 to GRH-16) in support of the opponent’s case.
I will provide the details of what is contained in the evidence, and the written submissions of the parties as necessary in the later paragraphs.
Law Relating to Allowability of Amendments
The request for examination in relation to the patent was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure. Instead, the relevant sections of the Patents Act in the current case are sections 102(1) and (2) as they existed prior to the introduction of the Raising The Bar Act. These are set out below:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in-substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the 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) or (3).
(2A) For the purpose 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.
(3)This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
Section 40 of the Patents Act 1990 further provides that
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
Paragraph 102(1): In-substance Disclosed in the Specification as Filed
When determining whether a matter is in-substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in-substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
The test for fair basis accepted in LockwoodSecurity Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 69 at [98-99] as being relevant to the consideration of fair basis is:
·whether there is a real and reasonably clear disclosure of the claimed invention in the specification [from Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79] or
·whether the claims travel beyond the subject matter of the invention described in the specification [Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236].
Particulars under this ground of objection relate to all the amended claims.
I have noticed that the opponent has argued at numerous places in their statement of grounds and particulars and submissions that certain feature defined in the amended claims are not disclosed in the specification as filed in the context of the claims. Before going any further with the opponent’s arguments, I note that it is not a requirement of “in-substance disclosed” that each and every possible embodiment falling within the scope of a claim is disclosed in the specification as filed. As long as there is a real and reasonably clear disclosure of the subject matter of the claim in the specification, that would be sufficient to meet the requirement of subsection 102(1) of the Patents Act 1990.
First I will deal with each of the particulars raised in respect of the amended claim 1.
The first particular states that the amended claim omits the word “panel” from “a one-way vision panel assembly” of the granted claims. Therefore, the complete specification claims matter not in-substance disclosed in the specification as filed.
Regarding the above particular, the opponent submitted that the specification as filed consistently uses the word ‘panel’ when referring to the assembly of the invention disclosed in the specification. They referred to various portions of the specification and stated that a fair reading of the specification as a whole shows that in every case in describing the invention, there must be at least one panel which is not a coating. In support of the opponent, the Hill declaration stated that a panel disclosed in the specification is an essential integer of the invention. The declaration further indicated that without at least one panel, the other disclosed coatings would have insufficient structural strength and stability to satisfy the functional requirements of the disclosed assembly.
From reading the specification as a whole, it is clear to me that the specification does not suggest a one-way vision assembly constructed from layers of coatings only, notwithstanding the fact that the terms layers and coating have been interchangeably used at various places in describing the invention. At least one layer of the assembly would need to be a sheet or a film of material suitable for constructing the assembly.
The amended claim 1 defines an assembly having three layers. It is evident that a layer in the context of the claim encompasses within its scope a coating as well as a sheet or a film of a material which is not a coating. Consequently, the claim is capable of more than one construction, one where all layers of the assembly are made of coatings and the other where at least one layer of the assembly is a sheet or film of a material suitable for constructing the claimed assembly. I consider that the former construction would lead to an absurd result, one which the patentee could not have contemplated, and should be rejected in favour of the latter construction. Therefore in my view, the amended claim is restricted to a one-way vision assembly wherein at least one layer of the assembly is a sheet or a film of material suitable for constructing the claimed assembly, and the omission of the term “panel” from the claim has nil effect on its scope. Having construed the claim, I can see that the subject matter of the claim is in-substance disclosed in the specification as filed.
The second particular asserts that the amended claim defines “at least one image” while the specification as filed does not disclose the phrase in this context. It is further stated that the granted claims included this language only in relation to a one-way vision panel assembly having different integers. In my view, although the specification does not disclose the phrase “at least one image” specifically, a person skilled in the art would consider the described one-way vision assembly suitable for viewing one or more images. Therefore, the opponent’s argument is untenable in this matter.
The third and fourth particulars relate to omission of the terms “front” and “rear” from the phrases “a light reflective front surface” and “a light absorbing rear surface” respectively of the granted claims.
In regard to the omission of the term “front”, the Hill declaration asserted that the specification as filed discloses a light reflective colour coating at the front of a panel assembly but not a light reflective front or a light reflective internal surface. The declaration further added that while a light reflective colour surface coating of the specification could be said to inherently disclose a front surface comprising a light reflective coating, it does not disclose a light reflective internal surface of a coating, either at the front or the rear. Regarding the term “rear”, the opponent submitted that because of its omission, the light absorbing surface can be any where in the assembly while the specification as filed does not disclose an assembly having an internal light absorbing surface in the context of the claim. In support, the Hill declaration stated that the disclosure is of a black or dark light absorbing coating or a panel which is at the rear of a panel assembly and there is no disclosure of such a surface that can be anywhere in the assembly.
In response, the patentee argued that the light reflective and the light absorbing surfaces do not have to be external surfaces. They stated that there is a disclosure of additional transparent or clear plastic panels or coatings that may be used as protective covers/coatings for the image and/or light absorbing panels or layers on page 8 (last paragraph) of the specification. From the above disclosure, I am satisfied that there is a real and a reasonably clear disclosure of internal light reflective and light absorbing surfaces in the specification. Therefore, there is no basis for the opponent’s argument in this matter.
The fifth particular asserts that the amended claim defines “an adhesive layer adjacent to a surface of the first or second layer”, however, the specification as filed does not disclose an adhesive layer adjacent to a light reflective surface or an already bonded surface. In response, the patentee submitted that Figs. 7 and 8 of the specification show two alternatives in which adhesive 52 is adjacent to the light absorbing layer 24 or the light reflective layer 22 respectively. From the above disclosure, I am satisfied that the relevant matter is in-substance disclosed in the specification as filed.
The last particular in respect of the amended claim 1 asserts that an open area of “up to about 70%” has been defined in the amended claim, while the disclosure is limited to about 50-70% in the specification as filed and to about 40-70% in the granted claims. The patentee argued that there is nothing in the disclosure to imply a strict limitation of about 50 to 70% and that said range is an advantage that can be achieved by the staggered pattern of through holes. I cannot find anything in the specification which excludes an open area of less than 50%. Therefore, the opponent’s argument cannot be sustained regarding this particular.
Consequently, I conclude that the amended claim 1 meets the requirements of subsection 102(1).
Identical particulars have been raised under this ground of opposition in respect of the amended claims 5 and 11. Therefore, these claims also meet the requirements of subsection 102(1).
Turning to the amended claims 2, 6, 8, 10 and 12, I note that all particulars raised in respect of the amended claim 1 have also been reiterated regarding these claims. As I have already dealt with these particulars, I will only consider any additional particulars raised in respect of these claims.
An additional particular asserts that the phrase “a non perforated mirror-like layer” in the amended claim 2 allows said layer to face any part of the assembly. However, the specification as filed discloses a mirror like layer which has a mirror side facing the front surface only of the panel assembly.
In response, the patentee argued that the text “alternatively, the one-way mirror layer 56 can also be incorporated within other panel assembly embodiments such as those disclosed herein” in the paragraph bridging pages 22-23 of the specification as filed shows that said layer can be used in any desired arrangement provided that the assembly meets the limitation that an image is viewable from one side and not viewable from the other side. I consider that from reading the specification as a whole, a person skilled in the art would know that the mirror layer can be used with the mirror side facing either side of the assembly and therefore, there is no basis for the opponent’s argument in the present matter. Consequently, I conclude that the amended claim 2 meets the requirements of subsection 102(1).

Regarding the amended claim 6, an additional particular asserts that while the amended claim includes the feature “the image is applied to at least part of one surface of the first or second layers as a holographic image”, the specification as filed does not disclose application of a holographic image to the light absorbing surface side of the one-way panel vision assembly. A similar particular has also been raised regarding the amended claim 8 in respect of a lenticular image.
In response, the patentee indicated that the feature “the image layer may provide a three- dimensional effect by using known methods such as lenticular lens processes or hologram processes” has been disclosed at page 9 lines 23-23 of the specification as filed. Furthermore, there is a clear disclosure of the image layer being on the light absorbing surface in Fig. 8 of the specification as filed. In view of the above disclosure, I am satisfied that there is no basis for the opponent’s argument in this matter. Therefore, the amended claims 6 and 8 meet the requirements of subsection 102(1).
An additional particular regarding the amended claims 10 asserts that while the amended claim refers to the assembly applied to a bus, there is no disclosure of the assembly applied to a non-transparent surface. It is further stated that the specification as filed relates to application of such an assembly to a window or a transparent mounting surface so that the view through the assembly of panels is not blocked. An identical particular has been raised regarding the amended claim 12 in respect of the phrase “the assembly is applied to a vehicle”. In response, the patentee argued that strict compliance with only applying the assembly to a window was not intended and that the assembly may cover portions of a bus around and between the windows in the form of a bus wrap. They further stated that the practice of bus wrap advertising was known and used at the priority date as acknowledged in the evidence in support. In view of the above, I consider that a person skilled in the art would understand that in addition to covering a transparent interface of a bus, the assembly may also covers portions of the bus that are not transparent. Furthermore, the skilled addressee would understand that the assembly may be applied to any suitable vehicle in addition to a bus. Hence, the above particulars are untenable under subsection 102(1).
Claim 37 is directed to a method of manufacturing the assembly of the amended claim 1 and therefore, the subject matter of claim 37 is similar to that of the amended claim 1. As noted earlier, the amended independent claim 43 recites the features of the amended claim 37 with additional steps of applying an image to a surface of the first or second layer before or after perforation of the assembly and applying the assembly to a bus.
Variants of the particulars raised in respect of the amended claim 1 have also been raised regarding the amended claims 37 and 43. As I have already dealt with these particulars, I will only consider any additional particulars raised in respect of these claims.
The only additional particular regarding the amended claim 37 asserts that the specification as filed does not in-substance disclose the feature of “applying an image to the assembly” as defined in the claim. The opponent appears to be arguing that the one-way vision panel assembly of the claim must already have an image and the application of another image would result in superimposed images which is not disclosed in the specification as filed. I note that the specification as filed discloses an image layer in addition to receiving one or more projected images. In light of this disclosure, I cannot see how the feature of applying an image to an assembly already having an image can be considered as not in-substance disclosed in the specification as filed.
Regarding the amended claim 43, an additional particular asserts that the feature “applying an image to a surface of the first or second layer before or after perforation of the assembly” is not in-substance disclosed in the specification as filed. I note that there is disclosure of the formation of holes either before or after the image coating is applied to the black panel at page 19 lines 2-5 of the specification. Therefore, this particular is untenable under subsection 102(1).
Variations of the above particulars and some new particulars have been raised in respect of the remaining amended claims to assert that certain features of these claims are not in-substance disclosed in the specification as filed. From reading the specification as a whole, I am satisfied that the features in question are either specifically or inherently disclosed. In view of this, I consider that none of these claims offend subsection 102(1).
Consequently, I conclude that the opposition fails under this ground of opposition.
Paragraph 102(2)(a): In-substance Fall Within the Scope of the Claims Before Amendment
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether on not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only need to in-substance fall within the scope of broadest claim(s) before amendment. This finds support in Robertshaw Controls Co v GSA Industries Ltd (1991) AIPC 90-784 at page 37,460 where it was pointed out that:
"There is also the fact that the Act does not require amended claim 3 to fall within the scope of the omnibus claim before amendment, but only within the scope of the claims ... while it may be that new claim 3 does not fall within the scope of the previous omnibus claim (a matter which I do not have to decide), it certainly falls within the scope of claim 1 before amendment, and consequently does not contravene the provisions of s. 78(2)(a) [the predecessor of section 102(2)(a )]."
The particulars raised under subsection 102(1) are also raised under paragraph 102(2)(a) to assert that the amended claims do not in-substance fall within the scope of the granted claims.
First I will deal with the particulars raised in respect of the amended claim 1.
The first particular relates to the omission of term “panel” from the text “a one-way vision panel assembly” of the granted claims. I have already concluded that the amended claim 1 is restricted to a one-way vision assembly wherein at least one layer of the assembly is a sheet or a film of material suitable for constructing the claimed assembly. Therefore, the omission of the term “panel” does not broaden the scope of the amended claim 1. It follows that the opponent’s argument cannot be sustained in regard to this particular.
The second particular relates to the phrase “a first layer having at least a light reflective surface” of the amended claim. A similar particular has been raised in respect to the phrase “a second layer having at least a light absorbing surface”. The opponent asserted that the light reflective and the light absorbing surfaces must be at the front and rear of the assembly respectively to fall within the scope of the granted claims. In response, the patentee argued that the front and rear surfaces need not be the external surfaces and the meanings of these terms depend upon the orientation and the direction in which the assembly is viewed. In my view, considering that the term “front” refers to the side from which the image is visible, and the term “rear” refers to the side from which the image is not visible, the light reflective and the light absorbing surfaces of the amended claim will have to be at the front and rear of the assembly respectively. Therefore, the opponent’s argument fails here.
Regarding the above phrases, the opponent further stated that the words “at least” were not present in the granted claims. However, they did not make any submissions how the addition of the words “at least” broadens the scope of the amended claim 1 beyond that of the granted claims.
The third particular raises an issue regarding the words “bonded to” asserting that the granted claims do not have the feature of an assembly in this context except in the confined circumstance of claim 32. Several other particulars have been raised in respect of the amended claim 1 relating to the shape, size, open area and alignment of the holes in the assembly. In response, the patentee submitted that the fact that a newly claimed feature was not present in the claims before amendment is irrelevant to the ground of falling within the scope of the claims before amendment and that the features raised in the above particulars are clearly narrowing features.
It is evident to me that the opponent is construing various terms and phrases of the amended claim in isolation. The individual terms or phrases when read in isolation may appear to be broadening the scope of the claim but that does not matter. In my view, to determine the scope of a claim, it is necessary that the claim is construed as a whole and the integers of the claims are read in context. Equally, to determine whether a claim in-substance falls within the scope of the claims before amendment, the scope of the claims before amendment must be considered as a whole.
The granted claim 1 defines a one-way vision panel assembly including a light reflective front surface, a light absorbing rear surface and a plurality of holes passing through said front and rear surfaces. The claim neither places any limitations on the number of layers and adhesive nor limits the shape, size, open area or alignment of holes through the surfaces. These features have been additionally introduced in the granted dependent claims. On the other hand, the amended claim 1 defines a one-way assembly having at least three layers out of which one is an adhesive layer. The amended claim also limits the shape, size, open area and alignment of holes perforated through the assembly. From this, it is evident to me that the amended claim 1 has a narrower scope compared to the granted claim 1. Therefore, I conclude that the amended claim 1 in-substance falls with the scope of the granted claims and that there is no basis for the opponent’s argument in this matter.
The amended claims 2-44 contain all features of the amended claim 1 and are clearly narrower or equivalent in scope. Therefore, these claims also in-substance fall with the scope of the granted claims.
The amended claims 45-50 define the use of an assembly of the amended claims 1, 2, 5, 6, 8, 10 and 12 on a window and various transport vehicles. Particulars have been raised regarding these claims asserting that the granted claims do not include within their scope the use of a one-way assembly and therefore the amended claims 45-50 claim matter that does not fall within the scope of the granted claims.
A summary of the relevant law can be found in the Patent Examiners’ Manual of Practices and Procedures (MPP 2.23.9.4) where it is stated:
"A claim to an article per se would be infringed by the use of that article. Consequently, an amendment to claim the use of the article (in a manner already disclosed in the specification), would be a narrowing of the claim which would not make an act an infringement that was not an infringement previously (see Farbwerke Hoechst A.G.'s Application (1972) RPC 703)."
It is clear from the above that the amended claims 45-50 are narrower compared to the amended claims 1, 2, 5, 6, 8, 10 and 12. Therefore, there is no basis for the opponent’s argument in this matter.
Consequently, the opposition fails on this ground of opposition.
Paragraph 102(2)(b): Comply With Subsection 40(3)
Claims must be clear and succinct and fairly based on the matter described in the specification
In relation to the above ground of opposition, the statement of grounds and particulars raises several aspects of non-clarity and one of non-succinctness. However, no detailed submissions were provided by the opponent on these matters.
The Hill declaration commented on several issues of clarity. I consider that these issues relate to the question of inutility, or at best to a mismatch between the invention claimed and the invention described.
Overall, I cannot see any merit in the opponent's particulars regarding clarity and succinctness. All are matters which are easily understood when the specification is read as a whole, as should be expected. In my opinion, a person skilled in the art would have no problem in construing the amended claims.
The particulars raised under subsection 102(1) have also been raised under paragraph 102(2)(b) to assert that the amended claims are not fairly based on the specification.
The test for fair basis involves a comparison of the amended claims with the amended description. If there are no amendments proposed to the description then the consideration for fair basis under paragraph 102(2)(b) would equate to the test for “in-substance disclosed” under subsection 102(1). In the present case, the patentee has not proposed any amendment to the description. I have already found that the amended claims meet the requirement of subsection 102(1), therefore, there cannot be any basis for the opponent’s argument in the present matter.
Consequently, the opposition fails on this ground of opposition.
Conclusion
I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patent Act 1990 and, as a consequence, the opposition fails on all grounds relied on. Thus subject to appeal, I dismiss the opposition and allow the amendments.
Costs
Ordinarily in proceedings such as these, costs follow the event. There appears to be no special circumstances applying in relation to this matter which warrants varying that approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against the opponent.

Dr S. K. Aggarwal
Delegate of the Commissioner of Patents