Lee Brothers Fencing Pty Ltd v Aus Group Alliance Pty Ltd
[2024] APO 47
•26 November 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Lee Brothers Fencing Pty Ltd v Aus Group Alliance Pty Ltd [2024] APO 47
Patent Application: 2018229685
Title:Moulded cladding panel
Patent Applicant: Aus Group Alliance Pty Ltd
Opponent: Lee Brothers Fencing Pty Ltd
Delegate: Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date: 26 November 2024
Hearing Date: 28 October 2024 via video conference
Catchwords: PATENTS – section 59 – moulded plastic cladding panels – grounds of clarity, support, clear and complete disclosure – no grounds made out – opposition unsuccessful – costs awarded against opponent
Representation: Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: Cooper IP
Counsel for the applicant: Marcus Fleming
Patent attorney for the applicant: FB Rice Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018229685
Title:Moulded cladding panel
Patent Applicant: Aus Group Alliance Pty Ltd
Date of Decision: 26 November 2024
DECISION
The opposition is unsuccessful. No grounds are made out. Subject to appeal, I direct that the application proceeds to grant.
I award costs according to Schedule 8 of the Patents Regulations 1991 against the opponent.
REASONS FOR DECISION
BACKGROUND
This matter relates to patent application 2018229685 in the name of Aus Group Alliance Pty Ltd (the applicant), having an earliest claimed priority date of 9 March 2017 via provisional application 2017900830. The application was examined and advertised as accepted on 6 April 2023. Following this, a notice of opposition was filed on 6 July 2023 by Lee Group Commercial & Industrial Fencing. An extension of time under section 223 was subsequently allowed for the filing of a notice of opposition on 2 October 2023 in the name of Lee Brothers Fencing Pty Ltd (the opponent) as this is the correct legal name for the entity opposing the application.
No formal evidence was filed by either party however it is noted that the Statement of Grounds and Particulars filed after the new notice of opposition on 6 October 2023 contains documents that are part of the opposition by direction of the Commissioner. These documents do not arise as necessary for consideration in this opposition as the opponent did not press relevant grounds of novelty and inventive step. The opponent provided a document to the applicant and myself shortly before the hearing that was relevant to their s40 submissions, however I have not relied on it for the purpose of making my decision and thus have seen no need to provide an opportunity for the applicant to respond to submissions made in relation to that document.
The request for examination was filed on 9 February 2022 and consequently, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. Thus, the standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
At the hearing, the opponent pressed the grounds of clarity, support, and clear enough and complete enough disclosure.
SPECIFICATION
The specification is directed towards plastic cladding panels formed by rotational moulding, that are generally hollow. The background to the invention in the specification discusses that building structures often require cladding for aesthetic and/or functional purposes, and that fabrication and erection of such structures can have many drawbacks. Such drawbacks are discussed in the specification as follows[1]:
In some instances, cladding must be positioned over a significant area of a structure, so cladding materials that are high cost or are difficult to erect can be even more costly or troublesome because of the large area required to be clad. Commonly, the materials used in existing cladding include wood, concrete and/or steel. Steel panels are heavy and expensive and subject to graffiti. Wood panels are subject to burning, are more prone to deterioration and need significant maintenance. Concrete panels are quite heavy and can be prone to cracking or chipping. As it is commonly preferred to have cladding that provides an aesthetically appealing appearance, cracking or chipping of the panels is undesirable and the panel manufacturer may be required to replace any such damaged panel at its own cost. Further, concrete panel forming processes provide only limited flexibility to confer an appealing aesthetic appearance on an external face of the panel.
Another problem encountered in relation to some erected cladding material is the potential for vandalism, such as spray painted graffiti. Removal of graffiti from concrete panels can be problematic and expensive. Similarly, where a clad structure is adjacent an area that throws up air-born particulate, such as a roadway, airborne pollutants commonly accrete onto the panels over time and need to be cleaned in order maintain an aesthetically pleasing appearance. For some panel materials, it can be hard to clean the pollutants from the panel surfaces.
[1] Specification at [0003] and [0004]
The subsequent paragraph then discusses the aim of the specification being to address or ameliorate one or more shortcomings or disadvantages of prior panels or provide a useful alternative thereto. In this regard the specification appears to merely seek a technically improved panel and does not commit to addressing any specific problem.
A consistory clause reflecting the claimed invention is presented at paragraph [0008] before a series of further consistory elements and a brief description of the drawings. The detailed description begins as follows[2]:
Described panels may be formed by rotational moulding techniques using existing rotational moulding technology. Such techniques may involve formation of a mould, addition of plastic granules into the mould, closure of the mould and then simultaneous rotation and heating of the plastic inside the closed mould in order to melt the plastic evenly around the heated surfaces of the mould. Use of rotational moulding techniques in the context of forming embodiments of plastic panels is described in more detail in relation to Figure 22 of International Patent Application No. PCT/AU2014/050432, the entire contents of which is hereby incorporated by reference.
[2] Specification at [0044]
Figures 1A, 1B, 1C and 1D are provided below to assist in visualising the invention.
Paragraph [0046] provides an overview of the features of the panel in the figures.
Referring now to Figures 1A, 1B, 1C, 1D, 2A to 2F, and 3 to 6, a panel 100 according to some embodiments will now be described in further detail. Panel 100 comprises a front side wall 104, a back side wall 102, a first end face 103 at a first end 111, a second end face 105 (approximately parallel to the first end face 103) at a second end 112, a bottom edge face 106 and a substantially parallel top edge face 108. The first and second end faces 103, 105 may be contoured to respectively define a recessed area 107 and a projecting portion 109 that is complementary to the recessed portion 107. Using corresponding recessed portion 107 and projecting portion 109, multiple panels 100 can be placed end-to-end in alignment and held and/or supported by support structure, such as support beams 605, 610, 615 (Figure 6), with the projection portion 109 of a second end 112 of one panel 100 nesting and mating with the recessed portion 107 of the first end 111 of an adjacent (identically or similarly formed) panel 100. In this way, the panels 100 can be arranged in a line one after of another, with the ends forming lap joints with one another. The end surfaces of adjacent ends 111, 112 of adjacent panels 100 may initially be positioned not to abut each other, so that there is some spacing to allow for thermal expansion or contraction in a lateral (horizontal) direction.
Mounting formations, which form a key aspect of the claimed invention are also discussed in the specification[3].
Referring also to Figures 1C, 1D, 2F, 4 and 5, mounting formations 130 and 150 are described in further detail, with reference to features on the back side 102 of the panel. The front side 104 may be considered to define a first major face of the panel 100 while the back side 102 may be considered to define an opposite second major face of the panel 100. Since the panel 100 is intended to be used as a cladding panel, the exterior face 104 is preferably primarily designed for aesthetics and is free of any appearance of mounting features, while the interior face 102 need not have any aesthetic function and is instead primarily designed for providing strength (through providing surface variation 141, 142, 143 and bridging portions 120) and allowing the panel 100 to be easily mounted onto the support structure 600.
Panel 100 has a set of upper mounting formations 130 defined in the upper section 108a and a set of lower mounting formations 150 defined in the lower section 106a. The upper mounting formations 130 are disposed at laterally spaced locations and are formed to have a recessed area 133 formed to be recessed upwardly (toward the upper edge 108) from an inward ledge 132 of the upper section 108a. The upper section 108a also has a vertical wall 131 extending downwardly from the top edge 108 toward the lower section 106a, with the vertical wall 131 being curbed by the inward ledge 132. The recessed areas 133 may be positioned at the transition of the vertical wall 131 and the inward ledge, so that the recessed area 133 is recessed from the vertical wall 133 as well as the inward ledge 132. Each recessed area has an aperture 134 defined in a wall surface thereof. Each aperture 134 defines a passage communicating from external of the panel 100 to an internal volume of the hollow shell of the panel 100.
Each aperture 134 is sized to receive a mounting pin 612 (Figure 6) that projects upwardly from a mounting support bar 610. In this way, the panel 100 can be hung from the bar 610 by lowering the panel 100 onto the bar 610 so that the apertures 134 receive the mounting pins 612 and thereby project internally into the internal volume of the hollow shell of the panel 100. The mounting pins 612 are not locked into position in the apertures 134. The panel 100 is held in position on the pins 612 by gravity. The pins 612 may have a length of around 50-80 mm and a diameter of 8-10 mm, for example. The recessed area 133 of each mounting formation 130 allows space for the presence of a nut or other material at the base of the mounting pin 612 while allowing the remaining area of inward ledge 132 to rest on the upper surface of the bar 610 as shown in Figure 6.
The upper mounting apertures 134 include a central aperture 134a that is not slotted, plus at least one other aperture 134b on each lateral side of the central aperture 134a that is slotted. In the example shown in the drawings, there are two slotted apertures 134b on each lateral side of the central aperture 134. The slotted apertures 134b allow for lateral expansion and contraction of parts of the plastic material of the panel 100 due to environmental temperature variations, while the locating pin 612 in the central aperture 134a keeps the panel 100 centrally positioned and substantially fixed despite any lateral expansion or contraction of the panel on either side of the central aperture 134. The slotted apertures also allow for variance in the lateral location of mounting pins 612 to be accommodated.
[3] Specification at [0060] – [0063]
Notably, paragraph [0056] also introduces the described panel embodiments as follows, with the concept of reinforcement being central to the opponent’s case, as will become apparent.
Panel embodiments described herein do not employ external reinforcing structure, such as metal beams, but instead rely on forming stiffening elements using the plastic panel material as part of the moulding process. Embodiments are therefore also free of non-moulded internal reinforcing structure. Such stiffening elements act as a form of reinforcing structure across the length and/or width of the panel. Such moulded reinforcing structure may comprise a number of strengthening or reinforcing elements, including for example: rigidifying variations in surface patterns; and moulded bridging or connection portions between the front and back walls.
The claimed invention
Claim 1 as accepted is as follows, with claim 20 being an independent method claim reflective of claim 1. The remainder of the claims are dependent ultimately upon claim 1.
.
A moulded cladding panel, comprising:
a hollow plastic body formed by rotational moulding, the body having a length, a width and a depth, a first end, an opposite second end, an upper section, an opposite lower section, a first major face defined by a front wall extending from the first end to the second end and from the upper section to the lower section, and a second major face defined by a back wall opposite the first major face, the second major face extending from the first end to the second end and from the upper section to the lower section;
wherein the body is free of internal non-moulded reinforcing structure;
wherein the upper section defines a plurality of first mounting formations to facilitate mounting of the panel to a structure to be clad; and
wherein the lower section defines a plurality of second mounting formations to facilitate mounting the panel to the structure;
wherein the first mounting formations are disposed at an upper part of the second major face, wherein the first major face is an externally facing face of the panel and the second major face faces the structure when the panel is mounted to the structure;
wherein the first mounting formations comprise a central mounting formation and at least first and second side mounting formations that are disposed on respective first and second lateral sides of the central mounting formation, wherein the first and second side mounting formations are arranged to permit movement of the body relative to the structure and the central mounting formation is arranged to keep a central part of the body substantially laterally fixed relative to the structure; and
wherein the second mounting formations have different formations from the first mounting formations.THE PERSON SKILLED IN THE ART (PSA) AND COMMON GENERAL KNOWLEDGE
The specification is to be construed through the eyes of the person skilled in the art being a notionally non-inventive skilled worker aware of the common general knowledge in the relevant field. In Root Quality v Root Control Technologies Pty Ltd[4] Finkelstein J held that the skilled addressee would have the following characteristics:
“In Catnic Lord Diplock said (at 242) that skilled addressees are “those likely to have a practical interest in the subject matter of [the] invention”. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention.”
[4] [2000] FCA 980
It is clear that a skilled addressee will have a practical interest in cladding panels however I am not presented with any expert evidence. As such I do not have any evidence before me as to the state of common general knowledge in the art at the priority date. While this is unusual, this does not automatically render the opponent’s case untenable.
CLAIM CONSTRUCTION AND CLARITY
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries[5], the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[6]:
“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.”
[5] [1988] FCA 399
[6] [2009] FCAFC 70
I note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain “whether or not what he proposes to do falls within the ambit of the claim”[7]. Additionally, Flexible Steel Lacing Company v Beltreco Ltd[8] notes:
“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. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
[7] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59
[8] [2000] FCA 890 and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121
The opponent raises the ground of clarity in relation to the feature of the first and second side mounting formations arranged to permit movement of the body of the panel relative to a structure to be clad further having a central mounting formation arranged to keep a central part of the body substantially laterally fixed relative to the structure. On this basis they assert a lack of clarity against the independent claims. The basis for this lack of clarity is argued along the following lines:
· The feature of “substantially laterally fixed relative to the structure” does not provide a workable standard for the PSA in the circumstances of the intended use in that the specification does not guide the extent of lateral movement permitted.
· While the central portion provides for permission of movement, the central portion is required to maintain lateral fixedness. They submit it is unclear how the central part is to be identified for the purposes of being fixed whereas the body is permitted to generally move.
· Similarly, they submit it is unclear how the body is permitted to laterally or longitudinally move where a central part is fixed. There is no explanation anywhere in the specification of how longitudinal movement might be permitted.
For reference, the Macquarie Dictionary defines lateral as “of or relating to the side; situated at, proceeding from, or directed to a side[9].
[9] The Macquarie Dictionary, 8th ed.2022, >
In response, the applicant initially points to the lack of any evidence on the matter, and particularly, the lack of any evidence as to a lack of a workable standard in the present application. They are correct that the current ground does not rise above assertion, however this is not automatically determinative of a matter of clarity where it remains for me, as decision maker, to interpret and construe the claims. If I cannot give a clear construction to the claims then they are, naturally, unclear.
Addressing the arguments raised by the opponent, the applicant points to the body of the specification[10] regarding the requirement to keep the central part of the body substantially laterally fixed relative to the structure to which it is mounted. I have added the applicant’s emphasis.
The upper mounting apertures 134 include a central aperture 134a that is not slotted, plus at least one other aperture 134b on each lateral side of the central aperture 134a that is slotted. In the example shown in the drawings, there are two slotted apertures 134b on each lateral side of the central aperture 134. The slotted apertures 134b allow for lateral expansion and contraction of parts of the plastic material of the panel 100 due to environmental temperature variations, while the locating pin 612 in the central aperture 134a keeps the panel 100 centrally positioned and substantially fixed despite any lateral expansion or contraction of the panel on either side of the central aperture 134. The slotted apertures 134b also allow for variance in the lateral location of mounting pins 612 to be accommodated.
[10] Specification at [0063]
The applicant argues that:
“…the specification explains that the central mounting formation is designed to keep the panel centrally positioned, and therefore substantially fixed, despite any lateral expansion or contraction of the panel. Put another way, while there may be lateral movement of the panel when it expands or contracts, the central aperture is designed to keep the panel substantially fixed by the use of the central aperture.”
Turning to the wording of the claim, it is clear that there is a central mounting formation and at least one mounting formation on either lateral side of the centre of the panel. The items identified above in paragraph [0063] of the specification are easily found in this manner in the figures, being in a direction either side of the centre of the panel. On the face of the claim, it is clear to me that the lateral direction is the direction from the centre towards lateral side apertures. The construction of these at least three mounting formations is such that the central mounting formation provides for substantial fixation from lateral movement, that is, substantial fixation from movement along the panel. On the other hand, the at least two side mounting formations are constructed such that they permit movement of the body relative to the structure. As worded, these side mounting formations clearly permit movement of the body relative to the structure in any direction.
The approach I take in the previous paragraph is entirely consistent with the suggestion in the specification that the central mounting formation may use a locating pin to substantially lock that central portion from sideways movement. At the same time lateral movement of the plastic panel will be made possible by the construction of the side mounting formations facilitating thermal expansion and contraction. In other words, the claim does not require that assembly upon mounting formations allows overall movement of the panel. On this basis I consider the third point I summarise above as put forward by the opponent is addressed.
The remaining points of the opponent fundamentally go to the idea that there is no workable standard as to the degree of substantial fixing at the centre, and whether the PSA could workably identify the central part of the body. Importantly, without evidence in this case, the task of the opponent in demonstrating a lack of clarity is ultimately insurmountable.
I see no other way for the PSA to construe the idea of substantial lateral fixing of the central part of the body as being a degree of fixing that in the eyes of the PSA means fixed. When one fixes something from movement, there is generally always a force that can be applied to give rise to movement in the direction being resisted by fixation. Being substantially laterally fixed is a workable standard to apply in the context of the use of the panel, and as noted in the case law, literal imprecision is not fatal to a claim. Finally, as it is clear that the word central is to be interpreted as being akin to a middle region of the lateral extent of the panel, there is no possible way that I can see the PSA would not understand this limitation.
The ground of opposition as to clarity of the claims fails.
CLEAR ENOUGH AND COMPLETE ENOUGH DISCLOSURE
Section 40(2)(a) of the Act requires that the specification mustdisclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. Such enablement must be across the whole width of the claims, without undue burden or the need for further invention.
The provisions of s40(2)(a) were considered in detail by a delegate of the Commissioner in CSR Building Products Limited v United States Gypsum Company[11], who having reviewed several recent UK and EPO decisions and having regard to the guidance they provided, formulated the following test in order to determine whether a specification provides an enabling disclosure as required by section 40(2):
a) construe the claims to determine the scope of invention as claimed,
b) construe the description to determine what it discloses to the person skilled in the art, andc) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.[11] [2015] APO 72
A further decision, Evolva SA[12], was issued by a delegate of the Commissioner where further review of UK and EPO decisions was performed, the delegate expanding the consideration of the third question in that it was considered necessary to determine whether it was plausible that the invention can be worked across the full scope of the claim. These principles have been confirmed by the Federal Court[13].
[12] [2017] APO 57
[13] Cytec Industries Inc. v Nalco Company [2021] FCA 970
The opponent also points to the matter in Jusand[14] where the Full Court applied principles entirely consistent with those above, and also considered the concept of a relevant range for the purpose of assessing enablement across the scope of the claims. There it was noted that whether a range is a relevant range is to be:
“…judged against the invention as claimed and, where appropriate, against its essence or core where that is understood to be related to the technical contribution the specification makes to the art and/or its inventive concept.”
[14] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd (Jusand) [2023] FCAFC 178 at [191], [217]
The opponent puts forward two fundamental arguments in suggesting that the application fails to comply with section 40(2)(a) (similarly arguing a failure to comply with the requirement for supported claims under section 40(3)).
Firstly, they argue that the technical contribution the art is achieved using “stiffening elements” or “strength or reinforcing elements” and that the claimed invention in the independent claims is not limited to the inclusion of such features. On this basis they propose that there is no disclosure in the specification of a moulded cladding panel without such elements and as such the claims fail for lack of enablement.
Secondly, the opponent argues that claim 1 includes second mounting formations that have different formations from the first mounting formations and that claim 1 fails to impose any limitations or requirements as to the nature or scope of the differences required. The argue the claiming of a relevant range in terms of such formations, that is not enabled across its full scope in that the specification does not disclose how to perform the invention across the whole of the range. I note as pointed out by the applicant at the hearing that this argument was not present in the statement of grounds and particulars under the ground of s40(2)(a), instead being presented in the context of s40(3). Thus, it is fair to say that this is a new line of attack. However, as my finding is not adverse to the applicant in regard to this submission, I feel it appropriate to address in this decision for completeness.
Stiffening elements
The focus of the opponent’s argument is that the technical contribution to the art disclosed by the application is a moulded cladding panel free of any internal or external reinforcement. They argue that the only way the application discloses the achieving of this is via the use of stiffening, strengthening or reinforcing elements. They point to a number of paragraphs[15] of the specification and the figures which discuss and show such elements. They suggest that, put simply, the application repeatedly teaches and discloses that the invention uses features like rigidifying surface variations or bridging portions to provide strength, these features being well depicted in the figures. In essence they suggest that:
“Consistently with the disclosure in the specification, claim 1 requires the moulded cladding panel to comprise a body which “is free of internal non-moulded reinforcing structure”. However, inconsistently with the disclosure in the specification, claim 1 does not require the moulded cladding panel to have surface variations, any bridging portion or any external reinforcing structure. It follows that claim 1 extends to a moulded cladding panel which does not have any strengthening or reinforcing elements (irrespective of whether those strengthening elements are supplied by way of surface variations, bridging portions or external reinforcing structure).”
[15] Specification at [0056], [0060], [0068], [0083]-[0085]
On my reading such an argument appears fundamentally geared more towards issues of support under section 40(3). Regardless, it is the case that sufficiency under s40(2)(a) is often one side to the same coin as s40(3) and so I proceed. In response to the opponent’s case, the applicant raises a number of relevant points as follows:
· Firstly, they note that there is no basis, in evidence or otherwise, to suggest that claim 1 extends to subject matter which, after reading description would not be at the disposal of the person skilled in the art.
· They point to paragraph [0044] of the specification which incorporates by reference a PCT application[16] which itself discusses that the “Described panels may be formed by rotational moulding techniques using existing rotational moulding technology” and that “each panel may have some form of reinforcing structure, for example in the form of metallic reinforcing elements or other non-metallic strengthening, stiffening or reinforcing structure”. On this basis they argue that the description does not suggest a requirement for reinforcing structure.
· There is no evidence to suggest that the formation of the panels described require anything other than the use of conventional techniques.
· There is no requirement for the invention in the independent claims to have any particular degree of strength or rigidity to perform its function as a cladding.
[16] PCT/AU2014/050432
It is quite clear that the scope of the invention claimed includes a panel that is free from internal or external reinforcement. This also means that the scope of the invention claimed includes situations where there is simply no reinforcement, and necessarily the claim is not limited to the types of reinforcement described in the embodiments. It is also quite clear that the person skilled in the art is taught by the specification that conventional rotational moulding technology is suitable for making the panels described. I simply see no reason why those conventional rotational moulding techniques cannot make a panel that is free from reinforcement structures. As pointed out by the applicant, there is simply no evidence to suggest that the person skilled in the art could not perform the claimed invention across its entire scope on the basis of the information described in the specification.
On my reading of the specification including the claimed invention, the “essence or core” of the invention does not lie in any particular strength or rigidity. As can be seen from my discussion of the background of the invention, the specification does not specifically seek to obtain a particular strength or rigidity of panels. Notably paragraph [0056] of the specification merely identifies that all of the described embodiments contain strengthening elements as follows:
Panel embodiments described herein do not employ external reinforcing structure, such as metal beams, but instead rely on forming stiffening elements using the plastic panel material as part of the moulding process. Embodiments are therefore also free of non-moulded internal reinforcing structure. Such stiffening elements act as a form of reinforcing structure across the length and/or width of the panel. Such moulded reinforcing structure may comprise a number of strengthening or reinforcing elements, including for example: rigidifying variations in surface patterns; and moulded bridging or connection portions between the front and back walls.
The manner of placing certain features in all exemplary embodiments in the specification does not, in this case, rise to the level of demonstrating such features relate to the essence or technical contribution of the invention. Thus, the opponent’s case falls short of demonstrating that a person skilled in the art would not be able to perform the invention across the whole width of the claims, without undue burden or the need for further invention regarding stiffening elements.
Different mounting formations
The opponent notes the claimed difference between first and second mounting formations and that claim 1 does not impose limitation on the nature and scope of these differences. They argue that:
“Plainly, the range of differences in the formation of the first and second mounting formations has the capacity to “significantly affect” the utility of the moulded cladding panel, having regard to the essence or core of the technical contribution made to the art. However, the specification does not “disclose how to perform the invention across the whole of that range”.
The opponent faces the same issue with this argument as with the previous argument. Absent evidence, I can not be satisfied that the person skilled in the art would not be able to produce first and second formations which are different but function in the desired way. The specification describes a range of possible features of the different mounting formations[17]. As the applicant puts it, “there is no basis in evidence” for the argument and it rises no higher than a “bare assertion”.
[17] Specification at [0061]-[0067]
I find the opponent’s arguments with respect to section 40(2)(a) fail.
SUPPORT
Section 40(3) of the Act requires that the claim(s) must be supported by matter disclosed in the specification. Burley J explored the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[18]:
[18] [2020] FCA 1477 (Merck Sharp) 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 breadth of the monopoly claimed”.Similarly to section 40(2)(a), in this context the body of the specification must disclose the claimed invention in a way which will enable it to be performed by a person skilled in the art. In supporting the claimed invention, a specification must, as a threshold, provide a basis for each claim. In other words, there must be a disclosure, and then that disclosure must be an enabling one. The need for there to be a disclosure distinct from a subsequent question of enablement is articulated in the Calix[19] matter by Nicholas J as follows:
“Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed.”
[19] Calix Limited v Grenof Pty Ltd (Calix) [2023] FCA 378 at [128]
The opponent’s arguments regarding an enabling disclosure of the claimed invention fundamentally mirror those provided under the ground of section 40(2)(a). To the extent that they focus on enablement the lack of any evidence in the present matter is ultimately problematic for the opponent. However, they key aspect of the submissions of the opponent particularly regarding features related to stiffening elements is that they argue that there is simply no disclosure of the invention not comprising necessary stiffening, strengthening or reinforcing elements. Specifically, they argue that:
“It follows that claim 1 is not supported or enabled by matter disclosed in the specification. The disclosure in the specification does not fairly entitle the Applicant to a monopoly of the width claimed. There is no disclosure, far less an enabling disclosure, of a moulded cladding panel, which is free of any (internal or external) “nonmoulded reinforcing structure” and does not otherwise feature the use of rigidifying surface variations or bridging portions. To the contrary, the specification teaches that the use of non-moulded reinforcing structure is replaced by the use of such stiffening elements. The Application discloses that “[p]anel embodiments described herein… instead rely on forming stiffening elements” (at [0056]) and do not require “non-moulded reinforce (sic) due to the presence of bridging portions 120 and/or the significant surface variations” (at [0085]).”
I interpret this argument to draw upon the form of support discussed by Justice Nicholas in Calix, in that the claimed invention is materially different to what is described in the specification. To deal with this question it is important that I properly characterise the invention disclosed in the body of the specification and the invention claimed. I have already outlined the scope of the invention claimed as not including any internal non-moulded reinforcing structure and also not including stiffening, strength or reinforcing elements.
Importantly, there is nothing in the specification that suggests an essential feature of the invention is some kind of strength providing element. The background to the invention in the specification discusses a range of issues with conventional panels and simply seeks to address or ameliorate one or more shortcomings or disadvantages. It is at paragraph [0056] that a statement is made in the specification regarding such features noting that the panel embodiments described therein do not employ external reinforcing structure or internal non-moulded reinforcing structure, but use stiffening elements using the plastic panel material as part of the moulding process. I do not see this disclosure, and the subsequent discussion of these embodiments, as imposing an essentiality of plastic moulded stiffening elements, or similar elements, into the claimed invention. Relevantly, the specification at [0008] provides a consistory clause reflective of the invention of the independent claims, this paragraph being followed by a general description of the invention prior to the specific embodiments. In doing so, I consider specification prior to the discussion of the embodiments provides a supportive disclosure of the claimed invention.
When properly construed I consider the specification as a whole does not disclose an invention that is materially different to the claimed invention. It is true that the embodiments and figures are all presented with strengthening feature present, but this alone is not enough to demonstrate essentiality of such features. As a whole the specification seeks to generally address a range of problems presented and provides literal support for the claimed invention through paragraph [0008].
Furthermore, the remaining questions to be addressed under section 40(3) in relation to enablement of the invention across its whole scope in the context of the absence of any strengthening features and the differently structured first and second mounting formations have already been addressed under the section 40(2)(a). There is simply no evidence to support the opponent’s assertion that the claimed invention cannot be performed across its full scope by the person skilled in the art following the teaching of the specification. I see no reason to conclude that the claims exceed the technical contribution to the art.
I find the opponent’s arguments regarding a lack of support under s40(3) fail.
CONCLUSION
I conclude that the opposition is unsuccessful. No grounds are made out under section 40.
COSTS
The applicant has successfully defended the application. It is normal in such matters before the Commissioner for costs to follow the event. As such I see insufficient reason to depart from the normal approach, and I award costs against the opponent.
Dr N. R. Madsen
Deputy Commissioner of Patents
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