Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd

[2006] APO 19

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application   :          No. 662163 in the name of MODULINE PTY. LTD.

Title:          Ducting System Assembly

Action:          Opposition by ELECTRIC CABLE DUCT SYSTEMS PTY. LTD. under Section 104 of the Patents Act 1990

Decision:          Issued  23 May 2006

Abstract

The amendments that were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition. There had been a previous attempt to amend the complete specification after the opposition, but this amendment had been refused. The grounds of the present opposition were non-compliance with subsection 102(1) (claims matter not in substance disclosed), paragraph 102(2)(a) (the claims do not in substance fall within the scope of the claims before amendment) and paragraph 102(2)(b) (as a result of the amendment the complete specification does not comply with subsections 40(2) or 40(3)).

The invention relates to a ducting assembly for electric current carrying cable.  The first item of amendment with which the opposition was concerned involved the deletion of the word “external”.  This was held to be one of those unusual occasions, contemplated on the authorities, where the deletion of a word or integer from a claim does not result in new matter being claimed or the scope of the claim being expanded.  The second item of amendment objected to by the opponent resulted in a reference to a chamber being isolated being substituted by a reference to a cable in the chamber being isolated.  This was held to have been implicit.

Two minor issues of non-compliance with section 40 were also held to be not sustained.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 662163, in the name of MODULINE PTY. LTD. and an opposition by ELECTRIC CABLE DUCT SYSTEMS PTY. LTD. under Section 104 of the Patents Act 1990.

BACKGROUND

1. Patent Application No. 662163 in the name of Moduline Pty. Ltd. was advertised accepted on 24 August 1995.  The application was opposed by Electric Cable Duct Systems Pty. Ltd. (ECDS).  In his decision on the opposition (Electric Cable Duct Systems Pty. Ltd. v Moduline Pty. Ltd. [1998] APO 28 (issued 13 May 1998)) the delegate found that there were valid objections to the specification in relation to lack of novelty and non-compliance with section 40, and allowed the applicant the opportunity to amend.

1. To this end amendments under section 104 were filed by Moduline Pty. Ltd. on 10 July 1998, and further proposals for amendment were filed on 13 July and 31 August 1998. These amendments were advertised accepted on 22 October 1998. An opposition to these amendments was filed by ECDS on 18 January 1999. The decision in this opposition was issued on 9 November 2000 ([2000 APO 69]. It upheld the opposition in respect of the grounds of non-compliance with paragraphs 102(2)(a) and 102(2)(b) of the Patents Act.

1. Subsequently, on 8 December 2000 the applicant filed a further set of proposed amendments.  The granting of leave to amend, in accordance with regulation 10.5, was advertised on 9 May 2001.  On 24 August 2001 ECDS filed a notice of opposition to these amendments.  On 21 December 2001 the applicant requested the opposition be dismissed in respect of one of the grounds of opposition, but in a decision issued on 27 March 2002 the request was refused.

1. Evidence in support was served on 27 June 2002.  Instead of serving evidence in answer, though, the applicant effectively abandoned that set of proposed amendments, and filed a new set on 11 December 2002.  The granting of leave to amend for these amendments was advertised on 3 July 2003.  On 6 October 2003 ECDS filed a notice of opposition to these amendments.  A statement of grounds and particulars was duly filed on 2 January 2004.  This was subsequently amended. Evidence in support was served on time on 2 April 2004, evidence in answer was served on 10 December 2004 and evidence in reply was served on 11 November 2005. 

1. The hearing on the opposition to the amendments took place in Melbourne on 1 March 2006.  The applicant was represented by Mr James Cherry, patent attorney of the firm Freehills Carter Smith Beadle, Melbourne.  The opponent was represented by Mr Graham Cowin of the firm Phillips Ormonde & Fitzpatrick, Melbourne.  Principals of both parties were also in attendance at the hearing.

THE INVENTIVE CONCEPT

1. The nature of the invention may be ascertained from this passage from the decision on the substantive opposition:

“The present invention relates to a ducting system assembly for electrical cables such as power, telecommunication and data cables.  Ducting systems usually utilise interconnected lengths of metallic or polymer channel that are fixed on exterior wall surfaces and in which the various cables are laid.  Different cable types are usually segregated into separate longitudinal passageways or chambers formed by elongated wall sections, either attached to the ducting or formed integrally with it, and the cables are enclosed in the channel by a covering panel.  Typically connector or socket assemblies are installed on or in the covering panel which is removable.  The advantage of such systems is that the cables are readily accessible for maintenance and connector installation and they can be used in the place of traditional skirting boards.

The specification indicates that normally connector assemblies are located on the cover directly above the chamber which contains the cable type to which they are connected.  This results in socket assemblies being spread both laterally or longitudinally along the surface of the duct which is not considered aesthetically pleasing.  Hence the invention is said to come from a desire to achieve an axial appearance in the location of the external connector assemblies, and in pursuing this object it is said that an improved location system can be achieved.”

THE AMENDMENT

1. While fairly substantial amendments to the description are proposed, these are not in issue in this opposition, and no further consideration of them in this decision is warranted.

1. Turning to the claims, the claims of the specification as proposed to be amended, with the changes from the accepted claims highlighted, are as follows:

1.   A ducting system assembly for electrical cable including:
a duct having at least two longitudinal chambers adapted to receive electrical cable, including at least a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by an continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly including a connector assembly housing for a part of the connector assembly external to the duct and the connector assembly being locatable in use on the open longitudinal side of the first longitudinal chamber,
a back shielding cover locatable in use in the first chamber behind the connector assembly to define a further chamber with the connector assembly, such that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly;
wherein the inner wall extends transversely substantially across the duct and has an opening or a displaceable portion, the opening or displaceable portion being a passageway for cable from the first longitudinalurther chamber to the second longitudinal chamber.

2.   A ducting system assembly for electrical cable including:
a duct having at least two longitudinal chambers adapted to receive electrical cable, including a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by an continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly being locatable in use on the open longitudinal side of the first longitudinal chamber,
a cover plate locatable on the open longitudinal sides of the first and second longitudinal chambers and, in use, extending across an edge of the inner wall,
a back shielding cover locatable in use in the first chamber behind the external connector assembly to define a further chamber with the connector assembly, the first chamber rear of the back shielding cover thereby beingsuch that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly;
wherein the inner wall extends transversely substantially across the duct and is adapted to define a passageway with a surface of the cover plate which passageway is located to permit passage of cable from the first longitudinalurther chamber to the second longitudinal chamber.

3.  A ducting system assembly for electrical cable including:
a duct having at least two longitudinal chambers adapted to receive electrical cable, including a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by an continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly including a connector assembly housing for a part of the connector assembly external to the duct and the connector assembly being locatable in use on the open longitudinal side of the first longitudinal chamber,
a back shielding cover locatable in use in the first chamber behind the external connector assembly to define a further chamber with the connector assembly, the first chamber rear of the back shielding cover thereby beingsuch that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly,
wherein the inner wall extends transversely substantially across the duct and the connector assembly housing, when located on the open longitudinal side of the first longitudinal chamber, extends at least partially across the open longitudinal sides of the first and second longitudinal chambers and defines with the inner wall a passageway for cable from the first longitudinalurther chamber to the second longitudinal chamber.

4.   An assembly according to claim 1 further including a back shielding cover locatable in use in the first chamber behind the external connector assembly to define a further chamber with the connector assembly, the first chamber rear of the back shielding cover thereby being isolated from both the further camber and the connector assemblyany of claims 1 to 3 in which the back shielding cover is adapted to be mounted on the duct or an inner wall.

5.   An assembly according to any of claims 1, 3 or 4 in which the inner wall has a longitudinal groove adapted to facilitate the removal of a part of the inner wall to create the passageway.

6.   A ducting system assembly for electrical cable including:
a duct having at least two longitudinal chambers adapted to receive electrical cable, including a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by an continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly being mounted on a connector assembly support locatable in use on the open longitudinal sides of the longitudinal chambers,
a back shielding cover locatable in use in the first chamber behind the external connector assembly to define a further chamber with the connector assembly, the first chamber rear of the back shielding cover thereby beingsuch that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly,
wherein the inner wall extends transversely substantially across the duct and the connector assembly support, when located on the open longitudinal sides of the longitudinal chambers, defines with the inner wall a passageway for cable from the first longitudinalurther chamber to the second longitudinal chamber.

7.   An assembly according to claims 1 or 4 in which the displaceable portion of the inner wall is made from flexible plastic material.

8.   An assembly according to any one of claims 1 to 7 having three longitudinal chambers.

9.   A ducting system assembly for electrical cable including:

a duct having at least two longitudinal chambers adapted to receive electrical cable, including at least a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by an continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly including a connector assembly housing for a part of the connector assembly external to the duct, the connector assembly located on the open longitudinal side of the first longitudinal chamber,
a back shielding cover located in the first chamber behind the connector assembly to define a further chamber with the connector assembly, such that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly;
wherein the inner wall extends transversely substantially across the duct and has an opening or a displaceable portion, the opening being a passageway for cable from the first longitudinalurther chamber to the second longitudinal chamber., and the inner wall is adapted such that it facilitated, in situ, creation of the opening in the wall at any point along its length.

10.  A ducting system assembly for electrical cable including:
a duct having at least two longitudinal chambers adapted to receive electrical cable, including a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by an continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly including a connector assembly housing for a part of the connector assembly external to the duct, the connector assembly located on the open longitudinal side of the first longitudinal chamber and extending at least partially across the open longitudinal sides of the first and second longitudinal chambers,
a back shielding cover located in the first chamber behind the connector assembly to define a further chamber with the connector assembly, such that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly;
wherein the inner wall extends transversely substantially across the duct and defines with the connector assembly housing a passageway for cable from the first longitudinalurther chamber to the second longitudinal chamber.

11.  A ducting system assembly for electrical cable including:
a duct having at least two longitudinal chambers adapted to receive electrical cable, including at least a first longitudinal chamber and a second longitudinal chamber which each have an open longitudinal side and which are separated from one another by a continuous inner wall,
a connector assembly to receive an electrical cable plug, the connector assembly including a connector assembly housing for a part of the connector assembly external to the duct, the connector assembly located on the open longitudinal side of the first longitudinal chamber,
a back shielding cover located in the first chamber behind the connector assembly to define a further chamber with the connector assembly, such that where there is a cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly;
wherein the inner wall extends transversely substantially across the duct and has displaceable portion being a passageway for cable from the further chamber to the second longitudinal chamber.

12.  An assembly according to any one of claims 9 to 11 in which a cable is led from athe second longitudinal chamber through the passageway to the connector assembly.

13.  An assembly according to claims 1, 2, or 9 or 11 wherein the connector assembly further includes a terminal to receive cable from a longitudinal chamber.

14.  An assembly  according to claim 9 in which the inner wall has a longitudinal groove adapted to facilitate removal of a part of the inner wall to create the passageway.

145.  An assembly according to any of claims 1, 4, 9 or 134 in which the wall is perforated to form the opening or has notches to facilitate the displacement of the displaceable portion.

15.  A duct for use in a ducting system assembly which includes a connector assembly, the duct:
having at least two longitudinal chambers adapted to receive electrical cable, at least two of the longitudinal chambers each having an open longitudinal side and being separated from one another by an inner wall, the wall extending transversely substantially across the duct and having a longitudinal groove adapted to facilitate the removal of a part of the inner wall to create an opening in the wall, the opening being a passageway for cable, and
being adapted to receive the connector assembly, or a mount for the connector assembly, the connector assembly locatable on one of the open longitudinal sides of the chambers.
16.  An assembly as hereinbefore described with reference to and as illustrated by each of figures 2 to 134 (inclusive).

THE LAW

1. The allowability of amendments is governed by section 102, which relevantly provides:

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

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

(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b) the specification would not comply with subsection 40(2) or (3).

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

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

In accordance with regulation 5.3(4), these are the only grounds on which the allowance of a proposed amendment of a complete specification may be opposed.

1. It is clear from section 102, which governs the allowability of a proposed amendment of a complete specification, that the test provided by section 102 is confined to matters which arise as a result of the amendment (see also Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn, (1994) AIPC 91-056 at 38,204). Furthermore, and in accordance with regulation 5.3(4), the only grounds for opposition to allowance of a proposed amendment of a complete specification is that the amendment does not comply with section 102. It therefore follows from the combined operation of these provisions that the presence of pre-existing section 102 (and, by implication, section 40) deficiencies which are unaffected by amendment is irrelevant to the present action.

1. It is pertinent to the present matter that a delegate of the Commissioner has already issued two decisions having determined certain issues in relation to the present matter.  Any such determination is final, and may not be varied subsequently except on appeal - Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119.

GROUNDS AND PARTICULARS

1. The statement of grounds and particulars lists three grounds: non-compliance with subsection 102(1) (claims matter not in substance disclosed), non-compliance with paragraph 102(2)(a) (the claims do not in substance fall within the scope of the claims before amendment) and paragraph 102(2)(b) (as a result of the amendment the complete specification does not comply with section 40(2) or 40(3)).

1. The grounds of subsection 102(1) and paragraph 102(2)(a) are directed in each case to two passages occurring in the claims. These are:

“a back shielding cover locatable in use/located in the first chamber behind the connector assembly…..”

“…..such that where there is cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly”.

1. In the case of the first passage, the opponent seeks to draw a distinction between a connector assembly and an external (to the duct) connector assembly.  It alleges that these are different things and that there has been no disclosure of the back shielding cover being locatable or located behind the former per se.  Thus, it is said, amended claims 1, 2, 3, 6, 9, 10 and 11 by claiming the back shielding cover in this form are claiming matter not in substance disclosed and amended claims 2, 3 and 6 by dropping the adjective “external” are broadening the scope of these claims.

1. In the case of the second passage, the opponent similarly seeks to draw a distinction between the isolating of cable in the first chamber from the further chamber and the isolating of the first chamber itself from the further chamber.  By merely defining in amended claims 1, 2, 3, 6, 9, 10 and 11 that the cable rather than the first chamber is isolated the claims are said to claim matter not in substance disclosed.  Furthermore, since claims 2, 3 and 6 as they stand do define the first chamber as being isolated, the proposed claims are said to be broader in scope than the present claims.

1. The section 40 issues particularised are, firstly, that the feature in claims 1 and 11 of

“….the displaceable portion being a passageway for cable….” [emphasis added]

is not clear or fairly based because it is not apparent how a portion of wall as such could be a passageway.

1. Secondly, it is said that the feature

“a back shielding cover locatable in use/located in the first chamber behind the connector assembly…..”

is not fairly based on the matter described in the body of the specification.  This is more or less a corollary of the allegation that this feature was not in substance disclosed in the specification as filed (supra), and only arises because no amendment has been made or proposed to the description which could be said to address this situation (if in fact it actually exists).

1. And thirdly the opponent notes that there is no antecedent in claim 1 for the reference to “the opening” in claim 15, which is appended to, inter alia, claim 1.

THE EVIDENCE

1. The evidence in support comprises two statutory declarations, one by Mr Cowin and one by a Mr Graham Williams.  Mr Cowin’s declaration is for the purpose of introducing into evidence the proposal for amendment at issue in these proceedings, and needs no further elucidation.

1. Mr Williams appears to be independent of the opponent.  His declaration supports the contentions that are in the statement of grounds and particulars.  He also asserts that claim 15 (as appended to claim 14) defines the inner wall as having both a longitudinal groove and perforations, and that there is no disclosure of this in the specification.

1. The evidence in answer consists of two statutory declarations.  The first is by Ian Green, one of the inventors of the present invention.  He is an engineer who has retired since making the invention.  He explains what he understands the words “isolate” and “passageway” to mean in the context of the present specification.  “Isolate” is said to imply capable of physically isolating cable.  “Passageway” is said to encompass both the space constituting the passageway and boundaries or walls defining the passageway. The second declaration is by William Edward Woodward.  Mr Woodward appears both to be independent of the applicant and to approximate the person skilled in the art.  He has a similar view on the words “isolate” and “passageway” to Mr Green.  He also disputes whether any distinction can be drawn between the concepts of “a connector assembly” and “an external connector assembly”. Finally, he asserts that combinations of techniques (such as grooves, openings, notches and perforations) are often used to provide “break-off lines”.

1. The evidence in reply consists of a statutory declaration by Emmanuel Kallergis, who is the manager of an electrical contracting business and is independent of the opponent.  Mr Kallergis concurs with principal aspects of the Green and Woodward evidence in answer on the term “isolate”.  He states that he does not agree with Green that there is no difference between “a connector assembly” and “an external connector assembly”, but he gives no explanation for this except to note that the term “external” has been omitted from the claims which are proposed to be amended.  He then goes on to dispute assertions by Woodward that a portion of a wall to be displaced (Woodward actually uses the expression “deformed”) to form a passageway can be considered as being a passageway.

1. More details of what is stated in the evidence, where relevant, will be given later in the decision.

DECISION

1. Some general principles which have relevance in this matter for determining whether the amendments are allowable are:

(1)In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, the full Federal Court said that a “two stage” process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by section 102(1). The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment. Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed in order to determine whether the specification would claim matter not in substance disclosed in the specification as filed. The court when discussing the second stage emphasised that:

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

(2)The issue of whether a matter is in substance disclosed in the specification as filed is a question of construction to be determined in each case.  This is relevantly demonstrated in Kornelis’ Kunsthars Producten Industrie BV v W R Grace & Co (supra) in which the Federal Court considered the allowability under section 102(1) of amendments which sought to reinstate claims included in the specification at filing but subsequently deleted prior to acceptance. Rather than simply look to these claims in isolation, Burchett J noted that:

“ s 102(1) asks whether, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed. The primary issue, therefore, is not one of construction of a claim, but of construction of the specification as filed to determine what matter is in substance disclosed in it.”

(3)As regards the allowability of amendments, in Ethyl Corporation’s Patent [1972] RPC 169 the court considered that corresponding provisions of the United Kingdom legislation should be construed in “a broad common sense way” and “should be given a liberal interpretation”. The liberal interpretation of s.102(1) has also been approved by the Full Federal Court of Australia in RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd (supra), relying on the United Kingdom High Court decision in AMP Incorporated v Hellerman [1962] RPC 55.

(4)It is only a requirement that the claims fall ‘in substance’ within the whole set of pre-amendment claims, per AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283 at 289 in which it was stated: “as a result of the amendment, nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment”.

(5) The test for ‘in substance disclosed’ is for all intents and purposes an equivalent consideration to that of whether matter is fairly based.  Thus I intend to apply to the ‘in substance disclosed’ consideration the same test that I would apply to that of fair basis: in essence, whether there has been a real and reasonably clear disclosure of the claimed matter, as, for example, was approved in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd  [ 2004] HCA 58 at [44-49], CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) at 279 and Leonardis, Nicola v Sartas No 1 Pty Ltd & anor.

1. The so-called first and second stages referred to in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd requires, in effect that the specification be construed, with the focus being upon those aspects of the specification which are proposed to be amended.  Any issues concerning the construction of the specification are a matter of law and any opinion in that regard given in the evidence is not binding on the hearing officer, it being ultimately up to the tribunal to construe the specification, albeit after first instructing itself as to the technical matters involved - see Blanco White, Fifth Edition 2 - 101. Observations along similar lines were made by Hely J in the course of comprehensively surveying the law as to the construction of patent specifications in Flexible Steel Lacing Co v Beltreco Ltd 49 IPR 331 at [70-81]:

“Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning: Sartas No 1 v Koukourou at 485-486, N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 at 531-532, Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-138, Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 at 455.

However, the construction of the specification is for the Court, not for the expert witness.  Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686, 697. See also Glaverbel SA v British Coal Corporation [1994] RPC 443 at 486, Sartas No 1 v Koukourou at 485-486, Patent Gesellschaft at 455.”

1. In the present matter there is very little in the way of technical material upon which any instruction is required.  The invention is essentially a tray-shaped article of manufacture.

1. Other observations on the law on the construction of patent specifications made by Hely J in Flexible Steel Lacing Co v Beltreco Ltd of relevance to this matter are:

“73 When determining the nature and extent of the monopoly claimed, the specification must be read as a whole.  But as a whole it is made up of several parts, and those parts have different functions: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610, Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 391, 398. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent. What is not claimed is disclaimed: Walker v Alemite Corporation (1933) 49 CLR 643 at 656, Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 35 and 39. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that.

74 Hence, although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification: Welch Perrin at 610, Decor at 391, 398, Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. (Welch Perrin at 610, Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478-479, Electric & Musical Industries at 41, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69, Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113, Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333).

75 It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims.  Where the language of the claim is “obscure or doubtful” (Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 97 per Taylor J) the doubt was sometimes resolved by referring to words in the body of the document to explain it. (See Welch Perrin at 610-611; Electric & Musical Industries at 41-42, Interlego at 478-479, Decor at 400, Melbourne v Terry Fluid Controls Pty Ltd (1994) 28 IPR 302 at 308, Freeman v T J & F L Pohlner Pty Ltd (1994- 1995) 30 IPR 377 at 383-384, Sartas No 1 Pty Ltd v Koukourou & PartnersPty Ltd (1994-1995) 30 IPR 479, 486).

76 In Decor at p 410, Sheppard J rejected the notion that the claims are first to be construed without reference to the body of the specification, and it is only if ambiguity is exposed by that process that reference to the body of the patent is permissible. In his Honour’s view, that approach ignores the “fundamental rule of construction” that the specification must be read as a whole, and the modern approach to interpretation, which requires that the context be considered in the first instance, and not merely at some later stage when ambiguity might be thought to arise. In addition, Sheppard J enunciates that “if there is disclosed in the specification an intention on the part of the draftsman that words used elsewhere are to have a particular meaning, that meaning must be given those words because the draftsman has used his own dictionary” (Sheppard J at 410-411).

77 The decision of Aickin J, in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 exemplifies that approach. Focussing on the “essence of the invention” (at 267), Aickin J proceeded to construe various terms in the claim which were in dispute. In the course of so doing, his Honour made repeated reference to the body of the specification in order to understand the context in which words had been used. His Honour did this even though the specification did not provide a “ dictionary” for such terms, and without first making a finding that any of the terms or questions were ambiguous. At 272 his Honour said:

`This is not a case where the specification supplies its own dictionary meaning but it is legitimate to look at the specification to see whether it shows the word to have been used in some special sense. In fact it shows that it was not so used.’”

1. “Other principles of construction” cited by Hely J were:

• A patent specification should be given a purposive construction rather than a purely literal one: Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, per Diplock LJ at 243, cited in various Australian cases including Decor at 400 - Rule (6); although it is noted by Gummow J in Nicaro Holdings Pty Ltd v Martin Engineering Co (1989-1990) 16 IPR 545 at 560-561, that a purposive approach was adopted in the pre-Catnic decision of Commonwealth Industrial Gases Ltd v M W A Holdings Pty Ltd (1970) 44 ALJR 385 at 388.

• The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date (Welch Perrin at 610, Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 476, Fisher & Paykel Healthcare Pty Ltd v Avion Engineering PtyLtd (1991) 103 ALR 239 at 254, 260, Decor at 397, Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-583). The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification: Decor at 391 - per Lockhart J.

• There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe: Stanway Oyster Cylinders at 585 - per Drummond J.

• It is permissible for an invention to be described in a way which involves matters of degree.  Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use: Stanway Oyster Cylinders at 585; Minnesota Mining at 274 . The consideration is whether, on any reasonable view, the claim has meaning (Elconnex Pty Ltd v Gerard Industries Pty Ltd (1991) 32 FCR 491 at 512-513, Tye-Sil Corp Ltd v Diversified Products Corp (1991) 20 IPR 574 at 585). In determining this, the expressions in question must be understood in a practical, commonsense manner (Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95, Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338). Absurd constructions should be avoided (Stanway Oyster Cylinders at 582-583) and mere technicalities should not defeat the grant of protection (Tye-Sil at 585).

• As a general rule, the terms of a specification should be accorded their ordinary English meaning: Electric & Musical Industries at 41, Elconnex at 512-513, Interlego at 478, Minnesota Mining at 270.

1. I turn now to the consideration of the specific amendments.  As most of each of the amendments are attacked on several fronts, it will be convenient to proceed on an amendment by amendment basis, considering all grounds raised against each amendment.

a back shielding cover locatable in use/located in the first chamber behind the connector assembly…..

1. This passage differs from corresponding passages in the specification as it presently stands (that is, as accepted) in that the word “external” has been deleted from immediately before the word “connector”.  As a consequence the opponent alleges that the claims are not fairly based, that they claim matter not in substance disclosed in the specification as filed and that they are outside the scope of the claims prior to the amendment.

1. Mr Cherry cited two precedents which supported the contention that mere deletion of words from a claim did not automatically broaden the scope of a claim: AMP Incorporated v Commissioner of Patents (1974) AOJP 3224, Chrysler Aust. Ltd. v Regie Nationale Des Usines Renault (1974) AOJP 4807.  I am inclined to agree with him that this is one of those situations.

1. The connector assembly defined in the claims has a part external to the duct which is contained in a housing.  Within the scope of what is defined is the possibility that there may be, or may not be, a part of the connector assembly internal of the duct.  There is also a “back shielding cover”.  The claim in its present form allows a range of locations for this back shielding cover: from adjacent the external connector assembly (which presumably is tantamount to saying adjacent the external surface of the duct) to a position further inboard of the duct which allows enough space within the first chamber outside the further chamber formed by the back shielding cover and the connector assembly to accommodate a cable.  Whatever criticism can be made as to the clarity of this second, inner limit, it is not relevant to the present matter, since it is not affected by the present amendment.  Furthermore, I observe that the claims in their present form appear to encompass the possibility that where there is a part of the connector assembly internal of the duct, the back shielding cover could somehow be co-located with the connector assembly.  As a practical matter, given the purpose of the invention and the interrelationship of its various integers, I have some difficulty with that possibility.

1. The applicant now wants to omit the word “external”. The effect of this is, as I see it, to narrow the range of possible locations of the back shielding cover to being from the connector assembly at its furthest point within the duct from the surface of the duct to a position further inboard of the duct which allows enough space within the first chamber outside the further chamber formed by the back shielding cover and the connector assembly to accommodate a cable. In doing so there would seem to me to have been a concomitant narrowing of the scope of the claim, and in a way which fully accords with the disclosure in the body of the specification as filed – in fact, no other location outside this new range of locations appears to be contemplated by the disclosure. Moreover, by so limiting the scope of the claim, the practical difficulty to which I have alluded to previously would appear to be overcome. I am therefore satisfied that the amendment which deletes the word “external” complies fully with section 102 of the Patents Act.

…..such that where there is cable, in use, in the first chamber outside the further chamber then that cable is thereby isolated from both the further chamber and the connector assembly.

1. This amendment has the effect of altering the present requirement in claims 2, 3 and 6 that the first chamber outside the further chamber be isolated from the further chamber and connector assembly to a requirement that a cable in the first chamber be so isolated.  The opponent asserts that this change both broadens the scope of the claims and causes them to claim matter not in substance disclosed in the specification as filed.

1. The term “isolated” is a broad one.  The Australian Oxford Dictionary defines it as:

“lonely; cut off from society or contact; remote”

There is some suggestion in the evidence that in the context of cabling carrying electric current it may have been intended to have a more specific meaning.  However, on my reading of the specification the word “isolated” is not intended to have a more technology specific meaning than “cut off from contact”.  Moreover, when “isolated” is employed in respect to one chamber relative to another, it cannot be being used in any absolute sense, if indeed it can ever be in any context.  Applying the rules of construction, one is then thrust back upon the body of the specification to glean the particular sense in which the term “isolated” is being employed.  Upon doing this it is readily apparent that “isolated” is being used in relation to cables.  To say this does not, of course, give the full picture as to the scope of the term “isolated”, as it says nothing of the manner and degree of that isolation.  However it does provided a basis upon which to find that by stipulating that it is a cable in the first chamber which is isolated does no more than make explicit in the claim something which is already implicit, and that the amendment of claims 2, 3 and 6 in this aspect does not contravene any of the requirements contained in section 102 of the Patents Act.

.….the displaceable portion being a passageway for cable…..

1. The opponent considers it anomalous that a portion of wall could also constitute a passageway.  I fail to see this.  It is normal English usage to refer to going “through a door”, rather than doorway.  Likewise there would seem nothing untoward about referring to something as passing through a displaceable portion of wall.  To my mind the addressee of the specification would have no difficulty in understanding what was being referred to by this.  This seems to be a good example of reading a specification in a manner to find fault with it rather than to understand it.  There is no non-compliance with subsection 40(2) and 40(3) arising out of this amendment.

15.  An assembly according to any of claims 1, 9 or 14 in which the wall is perforated to form the opening.

1. The opponent has raised two appendancy issues with claim 15 as resulting in a lack of clarity.  The first of these is that there is no antecedent in claim 1 for the term “opening”.  The second is that there are difficulties with assimilating the perforation and opening feature of claim 15 with the groove and passageway feature of claim 14.  The first of these issues has a modicum of substance to it.  The term “passageway” does not necessarily imply “an opening”.  The situation appears to have arisen as a result a drafting mishap, but, whatever the cause, to my mind it is sufficiently apparent that the appending of claim 15 to claim 1 is so obviously in error, and accordingly of no effect, that I see no possibility of the addressee of the specification being misled in this regard.  In light of this I am inclined towards the view that the amendment of claim 15 by proxy of its appendancy to amended claim 1 does not contravene section 40(2) or 40(3) in any proper sense.

1. As to the perforation feature, the only reference to “perforation” in the body of the specification is as follows:

“Similarly by using appropriate semi-flexible material, it is also possible to form a perforation, notch or hole in the wall material or otherwise remove a part of the wall to allow the passage of the cable to the connector assembly”.

1. Mr Cherry cited the Macquarie Dictionary as defining “perforate” as:

“1.  to make a hole or holes through by boring, punching or other process;

2.to pierce through or to the interior of;  penetrate;

3.to make its way through or into something;  penetrate.

1. The passage which I have quoted above that mentions perforation refers to perforation in the singular.  Therefore I take “perforation” in the context of this specification to take the meaning of to make a hole in something by boring, punching or the like, or to pierce.  Turning then to claim 14, this defines the use of a longitudinal groove to facilitate the removal of a part of the inner wall to create a passageway.  Claim 9, to which claim 14 is appended, defines an opening as being a passageway, so in this respect claims 14 and 15 are compatible.  I think this also applies to the “longitudinal groove” and the “perforation” feature.  If one takes the meaning of “perforate” as being “to make a hole by punching”, or possibly as being “to pierce”, it appears to make eminent sense that the action of the making of a perforation could be used in conjunction with a weakened zone created by a longitudinal groove.  In light of this I am inclined towards the view that the amendment of claim 15 by proxy of its appendancy to amended claim 14 does not contravene section 40(2) or 40(3).

CONCLUSION

1. I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b), and, as a consequence, the opposition fails on all grounds relied on. I therefore dismiss the opposition and allow the amendments.

COSTS

1. Ordinarily in proceedings such as these, costs follow the event.  There appear to be no special circumstances applying in relation to this matter which warrant varying that approach.  Accordingly, I award costs in this matter against the opponent Electric Cable Duct Systems Pty. Ltd.

E J Knock
Delegate of the Commissioner of Patents

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

Patent Attorneys for the opponent:  Phillips Ormonde & Fitzpatrick, Sydney