Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd

[2000] APO 69

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

Abstract

The amendments that were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition. The specification both as it stood and as it was proposed to be amended contained numerous independent claims. The opponent, in alleging that most of the amendments to the claims were not allowable, invoked all of the grounds set out in section 102 of the Patents Act.

The invention relates to a ducting assembly.  Most of the amendments were found to be allowable when the disclosure of the specification was read as a whole, from the standpoint of the person skilled in the art and in light of the common general knowledge.  However one amendment, which proposed deleting a structural feature from the claims and substituting it with a feature of "being adapted to facilitate the creation of" the structural feature, was found to broaden the scope of the claims beyond what their scope was prior to amendment.

The amendments were also found to result in two instances of the specification failing to comply with section 40.

Costs were awarded against the applicant.

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

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.  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.

To this end amendments 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 Electric Cable Duct Systems Pty.Ltd. on 18 January 1999, and it served its Statement of Grounds and Particulars on 19 April 1999.  This statement was subsequently amended on 13 August 1999.  Evidence in support, answer and reply were served, with one minor extension of time, by 11 February 2000.

The hearing on the opposition to the amendments took place in Melbourne on 14 August 2000.  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.

THE INVENTIVE CONCEPT

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

The applicant has proposed fairly substantial amendments to the description.  However it is not contended by the opponent that there is anything about these amendments which would render them not allowable, and therefore it is not necessary to set down here the details of those amendments.

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 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 portionis adapted to facilitate, in situ, the creation of an opening in the wall or the displacement of a portion of the wall at any point along its length, 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 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 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 4claim 1 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 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 45 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 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 oris adapted to facilitate, in situ, the creation of an opening in the wall or a displacement of a portion of the wall at any point along its length, the opening or a displaceable portion being a passageway for cable from the first longitudinalurther chamber to the second longitudinal chamber.

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 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. An assembly according to claim 9 or 10 in which the back shielding cover is mounted on the duct or an inner wall.

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

13.  An assembly according to claims 1, 2, 3, or 9 or 10 wherein the connector assembly further includes a terminal to receive cable from a longitudinal chamber.

14.  An assembly according to any of claims 1, 45, 9 or 13 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 creare 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.
165.  An assembly as hereinbefore described with reference to and as illustrated by each of figures 2 to 13 (inclusive).

THE LAW

The allowability of amendments is governed by section 102, which 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).

(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."

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.

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.

It is pertinent to the present matter that a delegate of the Commissioner has already issued a decision 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

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

In relation to the claiming of matter not in substance disclosed, the statement of grounds and particulars asserts that substantially all the additional matter proposed to be inserted into the claims would fail to meet this requirement.  The one exception is the replacing of the words "the first chamber rear of the back shielding cover thereby being " in Claims 2, 3 and 6 with "such that where there is a cable, in use, in the first chamber then that cable is thereby".

In relation to the claims not in substance falling within the scope of the claims before amendment, the particulars cite the inclusion of the word "further" in all the independent claims, the words "the first chamber rear of the back shielding cover" in claims 2, 3, 6 and 10, and the words "adapted to facilitate, in situ, the creation of an opening ……. or displaceable portion" in Claims 1 and 9 in place of a reference to an opening or displaceable portion per se.

The section 40 issues particularised are, firstly, that the feature in the independent claims of

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 then that cable is thereby isolated from both the further chamber and the connector assembly

is not fairly based, and, secondly, that the appending of Claim 14 to Claim 5 causes Claim 14 to be unclear because it is not clear how the perforation, notches and groove relate to one another.

THE EVIDENCE

The evidence in support comprises two statutory declarations, one by Mr Cowin and one by a Mr Stuart Booth.  Mr Cowin's declaration is for the purpose of introducing into evidence the various proposals for amendment at issue in these proceedings, and needs no further elucidation.

Mr Booth is, as Mr Cherry observed at the commencement of his submissions, a director of the opponent company, a fact which is confirmed by the evidence in respect of the substantive opposition.

Mr Booth's declaration, in the words of Mr Cowin, considers each of the amendments against which objections have been raised and comments on those amendments through the eyes of a person skilled in the art of electrical cable ducting systems.  In summary, the declaration states:

·    as a result of the amendment, the specification is wholly silent on the characteristic of no clearance behind the back shielding cover.  Prior to the amendment the specification has not disclosed an arrangement in which there may not be a clearance at the rear of the back shielding cover.  The provision of the clearance is essential to those ducting system assemblies incorporating a back shielding cover.

·    there was no disclosure in the specification as filed or as accepted of any modification or alteration of the inner wall to assist in the creation of an opening, as would be defined by Claims 1 and 9 as a result of the proposed amendment; moreover, as a consequence of including this feature Claims 1 and 9 as proposed to be amended fall outside of the scope of any of the claims prior to amendment.

·    there is  no disclosure in the specification as filed of a passageway for cable from a further chamber to the second longitudinal chamber, as would be defined by Claims 1, 2, 3, 6, 9 and 10 as a result of the proposed amendment.

·    there is no disclosure in the specification as filed of the duct having a continuous inner wall, as would be defined by Claims 1, 2, 3, 6, 9 and 10 as a result of the proposed amendment.

·    there is no disclosure in the filed specification of the back shielding cover being adapted to be mounted on the duct or an inner wall, as would be defined by Claims 4 and 11 as a result of the proposed amendment.

·    Claims 2, 3 and 6 lie outside the scope of Claims 1, 4, 5, 7, 8, 9, 11, 12, 13 and 14 in respect of the passageway from the further chamber to the second longitudinal chamber and in respect of the connector assembly housing which is defined by claims 1 and 9.

·    while Claim 10 defines the connector assembly as extending at least partially across the open longitudinal sides of the first and second longitudinal channels, Claims 2, 3 and 6 omit this feature; also, Claim 10 differs from Claims 2 and 6 in that it defines that the passageway for cable as being between the inner wall and the connector assembly housing.

·    Claims 2, 3 and 6 differ from Claim 15 in that they do not define a longitudinal groove adapted to facilitate the removal of a part of the inner wall to create an opening in the wall.

·    Claim 14 is not clear, in that it is not clear what the relationship is between the perforations and notches defined in this claim and the longitudinal groove defined in Claim 5, to which Claim 14 ia appended; moreover, such a combination of perforations notches and grooves has not been disclosed in the filed or accepted specifications.

The evidence in answer is a statutory declaration by William Edward Woodward.  Mr Woodward appears to be both independent of the applicant and to approximate the person skilled in the art.  Mr Woodward's declaration is mainly concerned with providing background information in relation to the invention.  Of note is the fact that he states that when reading the specification for the first time he had assumed that the inner wall of the duct was continuous, and that he could readily identify the "further" chamber as being the area bounded by the back shielding cover and the connector assembly.

The evidence in reply consists of a further statutory declaration by Mr Booth in which he comments on specific statements and observations made by Mr Woodward.

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

SUBMISSIONS

Mr Cowin submitted as follows:

·    Mr Woodward's declaration does not specifically challenge any of the statements and explanations made by Mr Booth in his first declaration, and therefore should be accepted in full as an accurate interpretation of what the specifications and proposed amendments to the specification of the application mean to a person skilled in the relevant art.

·    The specification only contained a very brief description of the forms of the invention to which the claims as now proposed to be amended are directed.  Because of this heavy reliance needs to be placed on interpretations of the disclosures by persons skilled in the relevant art.

·    Whether or not the amendments result in the claiming of new matter can only be decided by a comparison with the matter contained in the filed specification.  The benefit of 8 years work on the specification (since the filing of the original parent application of this application) is irrelevant.

·    In United-Carr Incorporated's application [1971] RPC 23, Whitford J accepted as reasonable the rules set out in Mond Nickel Co. Ltd.s application [1956] RPC 189 for testing whether a proposed amendment to a claim had been in substance disclosed in the original disclosure.

·    The feature of the back shielding cover is not being defined in a manner that is commensurate with its disclosure in the originally filed specification, in that it is not defined as isolating the first chamber (the chamber in which the cover is located) rear of the cover.

·    While the decision on the substantive opposition found that the specification would be understood by the skilled addressee to disclose a groove or narrowed portion that would assist the breaking off of a portion of the inner wall, there is no explicit disclosure at all in the specification as filed of any facility on the inner wall to create an opening or a displaceable portion.  Such a non-explicit disclosure, contained in the drawings, is not sufficient to support the broadly generalizeed inner wall facility proposed by the amendment.

·    The proposed amendment of "first longitudinal chamber" to "further chamber" is not allowable because it was not in substance disclosed in the filed specification.  Even if that chamber could be identified in the filed specification by a skilled addressee (and there is no evidence to suggest that possibility) there is no disclosure of cable passing from that further chamber to a second longitudinal chamber.

·    The intended meaning of "continuous inner wall" is quite unclear but, in any event, there was no disclosure in substance of such an inner wall in the filed specification.

·    The proposed amendments to Claims 4 and 11 are not allowable because the feature of mounting the back shielding cover on the duct or on a single inner wall is not disclosed in the filed specification.

·    The first chamber and further chamber are different and are not interchangeable.  Thus the amendment proposed to the various independent claims to substitute the latter chamber for the former would cause the scope of the claims to lie outside the scope of the claims prior to amendment.

·    The deletion from Claims 2, 3 and 6 of the reference to the first chamber rear of the back shielding cover results in these claims being broader in scope than any of the claims of the accepted specification.  Claims 1 and 9 of the accepted specification are limited to a particular passageway formation which claims 2, 3 and 6 are not.  Claim 10 requires that the connector assembly extend at least partially across the open longitudinal sides of both the first and second longitudinal channels, whereas Claims 2, 3 and 6 do not.  Claim 15 requires a longitudinal groove adapted to facilitate the removal of part of the inner wall to create an opening in the wall, whereas Claims 2, 3 and 6 do not.

·    The claims as proposed to be amended do not envisage the pre-existence of the opening or displaceable portion but rather any facility that will achieve their subsequent provision.  Thus Claims 1 and 9 as proposed to be amended do not fall within the scope of claims 1 and 9 prior to amendment, and also do not fall within the scope of claims 2, 3, 6 and 10 because those claims define the passageway as being provided over the inner wall rather than through the wall.  Furthermore, amended Claims 1 and 9 do not fall within the scope of Claim 15 as accepted, even though that claim does define the provision of a longitudinal groove adapted to facilitate the removal of part of the inner wall to create an opening in that wall.  Claim 15 is not so broad as to cover all facilities for creating an opening in the inner wall as encompassed by amended.

·    Claim 14 is generally unclear because of the absence of any description or identification of the "perforations" to form the opening, or the notches to facilitate the displacement of the displaceable portion.  It is difficult to reconcile Claim 14 with Claim 5, to which it is appended.  Claim 5 defines the inner wall as having a longitudinal groove that enables removal of an inner wall part.  How that longitudinal groove then relates to the perforations or notches is simply not at all clear.

·    The claims as proposed to be amended extend beyond the disclosure made in the specification as a whole, in that they do not define the back shielding cover as providing a rear clearance space for passage of cable along the first chamber.  There is no substantive description in the specification as proposed to be amended of an arrangement of a back shielding cover which does not provide this rear clearance space.

Mr Cherry submitted:

·    A liberal construction is appropriate due to  "strong public interest that inventive genius should be encouraged" (Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [1999] FCA 1848 (23 December 1999))

·    The phrase "in substance" in "claims matter not in substance disclosed" permits the incorporation of knowledge of one skilled in the art, together with a construction to make the claim work.  Implied disclosures are sufficient.

·    Without replacing the statutory test, the analysis often used is:

(i)what matter results from the amendment, from a before and after comparison;

(ii)is that matter in substance disclosed in the specification (including drawings) as filed?

·    Onus of proof should be on the opponent.

·    The evidence of Mr Booth is contradicted, although this is not made explicit.

·    Regarding the need for a "clearance" to the rear of the back shielding cover, the term "rear" is used to refer to the locations which are "the other side" of a particular item when viewed from the front, which is from where an electrician or other user of the duct would view the components.  Understood in this context, the term "rear" was not a limitation on the claims before amendment, but rather a description of a general part of the chamber in which the back shielding cover was located, which part is equivalently defined in the amended claim by reference to the "first chamber" in which the back shielding is located.  Deletion of a word does not necessarily result in deletion of a limitation.  In any case, the phrase "the first chamber rear of the back shielding cover" does not imply that that there is a space of any size behind the cover, for example sufficient for a cable to pass.

·    Mr Booth identifies an absence of any description of the "further chamber" in the filed specification, but he makes no mention of the drawings in which it is disclosed.

·    There has been a disclosure of the inner wall being adapted to facilitate the creation of an opening or the displacement of a portion of the wall, in that in some embodiments sections of walls are described as being made of softer material.

·    There has been a disclosure of a longitudinal groove, as was determined in the substantive opposition.

·    A "further chamber" as claimed has been clearly described in the specification as filed.  Further, whilst chambers are described as structural features, they are of course voids in the sense that they are spaces defined by other structural elements, such as duct "walls" and the duct body itself.  In the ducting system assembly described, the further chamber is "in" the first longitudinal chamber.  Therefore it is consistent and accurate to describe something as being "in" one of the longitudinal chambers when it is also in the further chamber as, physically, the two overlap (one in fact replaces part of the other), even though one is segregated electrically from the other.

·    The requirement for continuity of the wall was implicit in the filed specification.  The reference to the opening in the wall in Mr Booth's evidence is "a red herring".  The claims are quite clear (when read as a whole) that any opening in the wall must be specifically located so that segregation is maintained.

·           Regarding the issue of the back shielding cover being adapted to be mounted on the duct or an inner wall, the use of "an" in this context is typically construed as "at least one".  The fact that a back shielding cover is mounted on one inner wall does not preclude it being simultaneously mounted on another wall.  As for the back shielding cover being mounted on the duct, this is merely a worksop variation of what is disclosed.  There are numerous ways in which the back shielding cover could be affixed in position.  If this argument is not accepted, the words "the duct or" can easily be excised from Claim 4.

·           An amended claim may include implied features expressly and still fall within the scope of the claim prior to amendment.

·           'In substance disclosed' is not identical to 'fair basis' (ICI Chemicals & Polymers Ltd v Lubrizol Corp [1999] FCA 1417 (15 October 1999)).

·           The meaning of the feature of the passageway for the cable from the further chamber to the second chamber which is defined in Claims 1, 2, 3, 6, 9 and 10 as amended is identical to that conveyed by the claims before amendment.  Cable is passing (according to the amended claims) from exactly the same point to exactly the same point via the same route as in the claims before amendment.

·           Regarding the feature of the inner wall being "adapted to facilitate" the creation of an opening or the displacement of a portion, rather than requiring such an opening or displaceable portion, the amended claims require:

-     the wall being "adapted to facilitate, in situ, the creation of an opening in the wall or a displacement of a portion of the wall at any point along its length"; and

-     there being an "opening or displaceable portion being a passageway for cable" (per Woodward).

·           Claim 14 is not unclear when appended to Claim 5, as alleged by the opponent.  A skilled person could construe this claim (as Woodward indicates), particularly as it is defined by result.

·           Fair basis requires a real and reasonably clear disclosure - thus a pedantic reading of the specification has not been accepted by Australian courts as being appropriate, but must come from a review of the specification as a whole.  In similar circumstances to the present in Leonardis, Nicola v Sartas No 1 Pty Ltd & anor [1996] 449 FCA 1 (13 June 1996) the court found that mere lack of words identifying what is apparent to one skilled in the art is no objection.

I will provide more details of the parties' submissions, where relevant, later in my decision.

DECISION

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 fact 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)It is one of the "rules of construction" for patent specifications that they must be construed in the light of the common general knowledge in the relevant art at the priority date of the application - see Welch Perrin v Worrel (1961-62) 106 CLR 588 at 610, Decor Corp v Dart Industries 13 IPR 385 and Melbourne v Terry Fluid Controls Pty Ltd (1994) AIPC 91-058. It is another rule of construction that where there is a choice between two meanings, one should, if possible reject the meaning that leads to an absurd result (Henriksen v Tallon Ltd [1965] RPC 434) and one should read the specification liberally and be "willing and wishing" to understand the specification (Philpot v Hanbury (1885) 2 RPC 33). Specifically 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 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".

Mr Cherry referred to the fact that in ICI Chemicals & Polymers Ltd v Lubrizol Corp (supra) the court considered that 'in substance disclosed' is not identical to 'fair basis'.  However, to leave it at that does not, I think, give the whole story.  As I understand it, the court was referring to the arm of fair basis which requires conformity between the description part of the specification and the claims as to the nature of the invention, that is, its essential features.  I think it still holds true that the other arm of fair basis - that which requires matter (that is, the integers) defined in the claims to have been described in the body of the specification - is for all intents and purposes an equivalent consideration to that of whether matter is in substance disclosed.  Thus I intend to apply to the latter 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 CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) at 279 and Leonardis, Nicola v Sartas No 1 Pty Ltd & anor (supra).

Before turning to the particular issues to be resolved in this matter, some observations of a more general nature may be in order.

Firstly, it was strongly argued by Mr Cherry, based on decided cases, that a "liberal" approach should be taken in assessing whether the amendments were allowable.  To the extent that a liberal approach is one where full account is taken of what is conveyed by reading the specification as a whole and what the person skilled in the art could be assumed to know in order to fill-in gaps in the information contained in the specification, I fully concur.

Secondly, Mr Cowin criticized the specification for its paucity, noting that in the specification as proposed to be amended not much more than one page of the description is devoted to describing the best method of performing the invention as it would then be.  Since that description is in reference to five different drawings, it could not help but be quite superficial.  I consider Mr Cowin's criticism of the specification is, generally speaking, not misplaced, and the decision on the substantive opposition affirms this.  However it must also be said that the invention is a quite simple one, being essentially a duct or conduit of rectangular cross-section which is sub-divided into two or more parts by one or more longitudinally extending walls.  In principle a structure such as this lends itself to being described by a drawing and potentially requires very little in the way of written description as elucidation when account is taken of to whom the description is directed.

And thirdly, circumstances such as these practically demand that opponents in opposition matters sift through the proposed amendments and fully scrutinize them for allowability.  That process in itself poses the possibility that individual amendments will be focussed upon in isolation from the document as a whole and that inconsequential variations in wording of claims will take on an enhanced significance.  Where, as appears to be the case with Mr Booth, the person doing the scrutinizing is unschooled in the finer legal points regarding the construction of patent specifications and allowability of amendments, that situation is exacerbated.  The situation will be further exacerbated where, as in the case of Mr Booth, the person doing the scrutinizing has a vested interest in the outcome of the opposition.  Accordingly, I have treated the evidence of Mr Booth with considerable caution.
I turn now to the consideration of the specific amendments.

Matter not in substance disclosed (Section 102(1))

The applicant wishes to amend each of its independent claims to stipulate that the inner wall or walls dividing the duct into longitudinal chambers is continuous.  The opponent contends this would be matter not in substance disclosed, as nowhere in the specification as filed is the wall referred to as being continuous (or the like), but rather the wall is described as having openings, perforations, notches and holes.

To my mind, a "continuous wall" is capable of two interpretations in the present context.  Firstly, it can mean that the wall has no openings whatsoever: that is, it is a so-called "solid" wall.  This is the meaning that the opponent sees as applying.  However, it can also have a second connotation, that of the wall having lengthwise continuity for the entire extent of the duct.  In situations where ambiguities of this sort arise, it is permissible to read the specification as a whole in order to resolve the ambiguity (Rosedale Associated Manufacturers v Carlton Tyre Saving Co. [1960] RPC 59). Upon reading the present specification as a whole it is clear that the first meaning cannot apply (there are pieces of wall missing), but it is the second meaning which is both described and relevant. Merely the reference to "longitudinal chamber" is enough to give this, but it also comes out in understanding what the invention is trying to achieve and from what is depicted in the drawings. In my view the provision of a continuous inner wall has been amply disclosed in the specification as filed.

Another aspect in which the opponent alleges the claims as proposed to be amended would claim matter not in substance disclosed is in respect of the feature of the back shielding cover which is proposed to be added to Claims 1 and 9.  It is not the back shielding cover per se which the opponent alleges has not been disclosed, but rather the form in which it is defined in the claims.  The opponent contends that the specification as filed has not disclosed any arrangement in which there may not be a clearance retained in the part of the first chamber which is not occupied by the further chamber or in which the clearance may not be to the rear of the back shielding cover.  That is so.  However, that would seem to me to be as the claims define it: it seems to me to be implicit in the claims that there is a clearance to the rear of the back shielding cover.  I think Mr Cherry's view of what the term "rear" conveys is a reasonable one in the present context, that is, that the term "rear" is used to refer to the locations that are "the other side" of a particular item when viewed from the front.  In the present case the "front" is the direction from where an electrician or other user of the duct would view the components.  Before the claims define the back shielding cover, they define the presence of a first longitudinal chamber.  The back shielding cover defines, with the connector assembly, a further chamber (that is, further to the first mentioned chamber).  That further chamber lies within the first longitudinal chamber but, as the claims are worded, the first mentioned chamber retains its essential character of being both a chamber and being longitudinal, that is, a chamber which extends the length of the duct.  That longitudinal chamber must be behind (that is, to the rear of) the back shielding cover because of the relative positioning of the other components - the connector assembly is on the open side of the first longitudinal chamber and the back shielding cover is in the first chamber behind the connector assembly.  Accordingly on my reading of the claim the feature which the opponent complains of as missing is in fact implicitly present, and the matter defined by the claim is in substance disclosed in the specification as filed.

Moving now to the next issue relating to whether matter is in substance disclosed, Mr Cowin asked me to consider whether the non-explicit disclosure, contained in the drawings, of the feature of the inner wall being adapted to facilitate the creation of an opening in the wall or the displacement of a portion of the wall at any point along its length is sufficient to support the broadly generalised inner wall facility proposed by the amendment.  Once again this is a question of what would be disclosed by the specification to the person skilled in the art.  In his decision in relation to the substantive opposition, the delegate of the Commissioner stated:

"Also while the existence of a groove to facilitate removal of a portion of the inner wall is not explicitly disclosed in the parent or in the specification as filed I accept that the small deformation at the junction of parts 18 and 19 in figures 10, 12 and 13 would be understood by the skilled addressee to disclose a groove or narrowed portion that would assist the breaking off of the wall portion 18."

Finding that the person skilled in the art would understand the purpose to be served by the groove is tantamount, in my view, to finding that the specification discloses the broad concept of adapting the inner wall to facilitate the creation of an opening in the wall or the displacement of a portion of the wall at any point along its length.  By being aware of the purpose to be served by the groove I am in no doubt that it would immediately occur to the person skilled in the art that there are other techniques that could be used for achieving the same result.

The opponent also contends that all the independent claims (excluding the omnibus claim) claim matter not in substance disclosed because in the last phrase of each claim it is proposed to change the reference to "first longitudinal chamber" to "further chamber".  The main cause of the opponent's concern appears to be that the specification as filed did not identify the further chamber.  This is understandable, as it has only risen to prominence as an essential feature in an endeavour, presumably, to avoid prior art.  However, the expression "further" is only a label - for example it could well have been referred as a "third chamber", and in fact I have no difficulty in identifying the "further chamber" in the drawings as they were in the specification as filed.  It would, in my view, be clear, even without the foreknowledge that it is intended to be a chamber, that the feature depicted in the drawings which is now given the appellation of "further chamber" is clearly a chamber.

The final aspect in which the opponent alleges the specification claims matter not in substance disclosed is in respect of the feature defined in claims 4 and 11 that the back shielding cover is mounted on the duct or an inner wall.  As the opponent has pointed out, none of the illustrated embodiments of the invention now claimed (that is, those shown in figures 9 to 13) show the back shielding cover mounted on just one inner wall.  However, the reason for this apparent inconsistency would appear to be that the claims to which Claims 4 and 11 are appended only define one inner wall.  These circumstances were also present in the specification as filed, although there were nothing equivalent to Claims 4 and 11 in that original specification.

The question to be answered is would the person skilled in the art have understood the original disclosure of Figures 9 to 13 as contemplating that the back shielding cover be mounted on just one inner wall, notwithstanding that all the preferred embodiments utilized two inner walls?  I think the answer to that question is yes.  I think the person skilled in the art would understand the specification as disclosing that the embodiments of figures 9 to 13 could be pared back so as to involve the utilization of just one inner wall.  This being the case, it follows that Claims 4 and 11 do not by referring to "an inner wall" claim matter not in substance disclosed.
As to the other matter of whether it is in substance disclosed that the back shielding cover is mounted on the duct, the fact that in figure 12 of the drawings the back shielding cover is shown as abutting the duct constitutes an in substance disclosure that it is mounted on the duct.  Mr Cowin submitted that it could not be said that figure 12 discloses the back shielding cover as being solely mounted on the duct, which may be correct.  However Claims 4 and 11 are not so limited.

Scope of claims within scope of claims before amendment (Section 102(2)(a))

The first objection under this heading is to the substitution in the independent claims of "first longitudinal chamber" with "further longitudinal chamber".  The opponent contends that these are clearly separately and individually identifiable chambers, and prima facie that would seem to be so.  However, on a proper analysis, I do not consider is the case.  Viewed broadly, the apparatus of the invention consists of a duct which is sub-divided into two or more longitudinal chambers.  That basic structure is disclosed as having a number of refinements, but it is still the case that, generally speaking, the invention can be said to consist of a duct which is sub-divided into two or more longitudinal chambers.

One of the refinements to which I refer is that in one of the longitudinal chambers ("the first chamber") there is a further chamber.  That the further chamber is in the first chamber would seem to have been explicitly defined in the claim - the claim states that the back shielding cover, which forms the further chamber with the connector assembly, is in the first chamber.  At the hearing there was some debate between the parties as to where the spatial limit of the first chamber might lie, and whether the further chamber could be said to lie entirely within the first chamber.  In my view it can, because, having due regard to all the wording of the claim and reading it in light of the specification as a whole, it is quite clear that conceptually the part of the connector assembly housing which forms, with the back shielding cover, the further chamber, also forms part of the boundary of the first chamber.  The claims refer to the connector assembly as being:

"located on the open longitudinal side of the first longitudinal chamber"

which is reinforced by the specification as filed, which states:

"In figure 9 a different illustration of the invention is shown which does not rely upon the provisions [sic] of resilient arms or flexible fingers 8.  Rather the extended connector housing support 12 is part of duct 1 and a connector housing 9 is mounted on it." [emphasis added]

Thus it would seem reasonable to conclude that the replacement of "first chamber" with "further chamber" in the independent claims does not have a broadening effect upon their scope, since "first chamber" in the claims prior to amendment would be taken to encompass the further chamber.

However, one difficulty arises with this line of reasoning.  That difficulty comes from the circumstance that the claims contain this limitation:

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

This appears to regard the first chamber and the further chamber as physically distinct entities, and  thus contrary to the notion of the further chamber being a part of the first chamber.
Nonetheless, I believe that, all considered, the proper construction of the specification is to take the further chamber as being narrowing down of previous references (prior to amendment) to the first chamber.  The conflicting passage which I have quoted above may, I think be resolved by being regarded as a section 40 deficiency of the claim.  I will have more to say regarding this when I come to consider the amendments in relation to section 40.

The next aspect in which the opponent objects to the amendment on the basis that it involves a broadening of the scope of the claims is in relation to the deletion from the claims of the reference to the first chamber rear of the back shielding cover, that is, the retention of a space or gap in the first chamber to the rear of the cover.

As I have already explained, I do not accept the opponent's contention that this "deletion" has occurred.  To my mind the material that the opponent claims has been deleted is in fact implicit in what is defined in the claims.  Thus I do not consider that there has been a broadening of the scope of the claims in this regard.

The final aspect in which the opponent says the scope of the claims has been broadened is that whereas Claims 1 and 9 defined the inner wall as having an opening and a displaceable portion per se, after amendment this would be replaced by just an adaption to facilitate these characteristics.  I do not think there is any question that these are not the same thing.  Having an adaption which facilitates something is not the same as actually having that thing.  That there might be a problem with Claims 1 and 9 in this respect appeared to be accepted by Mr Cherry at the hearing, although he asserted that if one looked at the claim as a whole it was apparent that the opening or displaceable portion was intended to be a per se  integer.  I cannot agree with this.  The opening or displaceable portion (or rather, the adaption to facilitate the creation of such) does not appear until the end of the claim, and appears to be quite unequivocal.  Passing mention was made by Mr Cherry of a possible need to make clarifying amendments (which is, of course, beyond the reach of the present proceedings).  I am satisfied that Claims 1 and 9 as proposed to be amended extend outside the scope of Claims 1 and 9 at acceptance in respect of this "adaption to facilitate" feature.

However, there were a number of other independent claims in the specification at acceptance.  Mr Cowin explained in his written submissions why Claims 1 and 9 as proposed to be amended did not fall within the scope of those claims as well, as follows:

"In essence, claims 1 and 9 as proposed to be amended will not fall within the scope of independent claims 2, 3, 6 and 10, and their dependent claims, as accepted, simply because those claims define the passageway as being provided over the inner wall rather than through the wall.  A ducting system assembly with an inner wall having a facility for the creation of an opening in that wall or the displacement of a portion of the wall would certainly not infringe any of those claims 2, 3, 6 and 10."

Mr Cherry did not provide any rebuttal of this.  I do not think it is strictly true to say that the passageway is defined as being over the inner wall, but nonetheless it is true that Claims 1 and 9 as proposed to be amended fail to define the role of the cover plate or connector assembly housing/support in forming the passageway such as is defined in Claims 2, 3, 6 and 10.  Thus Claims 1 and 9 as proposed to be amended cannot be considered to fall within the scopes of Claims 2, 3, 6 and 10 prior to amendment.

The specification as accepted had another independent claim, Claim 15.  This did define a specific adaption (a longitudinal groove) to facilitate the removal of a part of the inner wall to create an opening in it, but did not define the adaption in the general terms Claims 1 and 9 now do.  Thus Claims 1 and 9 as proposed to be amended cannot be considered to fall within the scope of Claim 15 prior to amendment.

The omnibus claim, Claim 16, is too narrow in scope to impact this consideration.

On the basis of the foregoing I find that the amendment to Claims 1 and 9 would contravene Section 102(2)(a) in respect of the feature:

wherein the inner wall extends transversely substantially across the duct and is adapted to facilitate, in situ, the creation of an opening in the wall or the displacement of a portion of the wall at any point along its length, the opening or displaceable portion being a passageway for cable from the further chamber to the second longitudinal chamber.

Compliance with section 40 as a result of amendment (section 102(2)(b))

The opponent has raised two issues in relation to this ground of opposition.

The first concerns the deletion from the claims of the reference to the first chamber rear of the back shielding cover, that is, the retention of a space or gap in the first chamber to the rear of the cover.

As already explained, I do not accept the opponent's contention that this "deletion" has occurred.  To my mind the material that the opponent claims has been deleted is in fact implicit in what is defined in the claims.  It follows that no lack of fair basis arises as a result of this aspect of the proposed amendment.

The second issue concerns the interrelationship between the features of Claim 14 and Claim 5 (to which Claim 14 is appended), as proposed to be amended.  Claim 5 defines the adaption to facilitate the removal of a part of the inner wall to create the passageway, which is defined in Claim 1, to be a longitudinal groove.  Claim 14 defines the wall as being perforated to form the opening or having notches to facilitate the displacement of the displaceable portion.  I agree with Mr Cowin that it is difficult to see the tie-in between the groove on one hand and the perforations and notches on the other, and that this is apt to cause confusion with potential infringers as to the precise scope of Claim 14.  This is a situation where the rather meagre description does cause difficulties in determining the scope of the monopoly sought.  Thus Claim14 is not clear.

I find the amendment to append Claim 14 to Claim 5 is not allowable because it would result in non-compliance by the specification with section 40(3).

I have indicated previously that I consider the passage in the independent claims as proposed to be amended that

"where there is a cable, in use, in the first chamber then that cable is thereby isolated from both the further chamber and the connector assembly"

should be viewed as wrong and contrary to section 40.  From the reading of the specification as a whole, it appears the reference to "the first chamber" should be construed as being the whole of the first longitudinal chamber, and to include the further chamber.  However, the passage quoted does not make sense unless "first chamber" is taken to mean some portion of the first chamber not including the further chamber.  The result is a lack of clarity within the claims in which this passage occurs, and I find accordingly.

CONCLUSION

I have found that the proposed amendment does not satisfy the requirements of paragraphs 102(2)(a) and 102(2)(b), and therefore I uphold the opposition to the amendment and refuse the amendment.

COSTS

The power of the Commissioner to award costs is based on section 210 and regulation 22.8.  The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Company v W.R. Grace & Co.-Conn (1994) AIPC 91-063, 30 IPR 292).

In the present case the opposition was successful on the grounds that as a result of the amendment a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment and that that as a result of the amendment the specification would not comply with subsection 40(3).  The first of these grounds, in particular, is a major ground, and in my opinion it is appropriate for costs to be awarded against the applicant.

Accordingly, I award costs in this matter against the applicant Moduline 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