Pacific Enterprises (Aust) Pty Ltd v ASSA ABLOY Australia Pty Limited - [2016] APO 20

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pacific Enterprises (Aust) Pty Ltd v ASSA ABLOY Australia Pty Limited [2016] APO 20

Patent Application: 2008243070

Title:A lockable Chain Winder

Patent Applicant:                   ASSA ABLOY Australia Pty Limited
Opponent:  Pacific Enterprises (Aust) Pty Ltd
Delegate:  Dr S.D. Barker
Decision Date:  27 April 2016
Hearing Date:  Written Submissions completed on 24 February 2016

Catchwords: PATENTS – opposition to the allowance of amendments –amendments allowable according to subsection 102(1) and subsection 102(2)(b) – costs awarded against the opponent.

Representation: Applicant: Phillip Ormonde Fitzpatrick
Opponent:Minter Ellison

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008243070

Title:A Lockable Chain Winder

Patent Applicant: ASSA ABLOY Australia Pty Limited
Date of Decision: 27 April 2016
DECISION
The opposition fails on all grounds.
I allow the amendments.
I award costs according to Schedule 8 against Pacific Enterprises (AUST) Pty Ltd
REASONS FOR DECISION
Background

This matter relates to patent application 2008243070 in the name of ASSA ABLOY Australia Pty Ltd (the applicant). The application was advertised as accepted on 11 August 2011. A notice of opposition to the grant of the patent was filed by Pacific Enterprises (AUST) Pty Ltd (the opponent) on 11 November 2011. A hearing was held in Canberra on 17 September 2014 and the decision issued 10 December 2014 as Pacific Enterprises (Aust) Pty Ltd v ASSA ABLOY Australia Pty Limited [2014] APO 81 (the first decision). The first decision found that claim 13 and its dependent claims (claims 14 – 22) lacked clarity. However, by adopting one interpretation of claim 13 for the purpose of the decision, the delegate considered that all claims were novel and inventive. The applicant was allowed 60 days to propose suitable amendments to overcome this finding.
Amendments were filed on 6 February 2015 and 9 February 2015, and leave to amend was advertised on 26 March 2015. The opponent filed a notice of opposition to the amendments on 26 May 2015. It is that opposition that is the subject of this decision.
Grounds of opposition
The statement of grounds and particulars specifies the following matters: subsections 102(1), 102(2)(a) and 102(2)(b) of the Patents Act 1990 (the Act). At the hearing, the ground of subsection 102(2)(a) was not pressed.
Evidence and submissions
Evidence in support consists of a declaration by Graeme Byrne (Byrne 1) dated 15 September 2015. Evidence in answer consists of a declaration by Kevin Francis Sullivan (Sullivan) dated 17 November 2015. Evidence in reply consists of a second declaration by Graeme Byrne (Byrne 2) dated 15 December 2015.
The matter was heard by means of written submissions. The applicant and opponent both filed submissions on 10 February 2016 and reply submissions on 24 February 2016.
The law
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application.
Section 102 of the Act governs the allowability of amendments. It relevantly provides:
(1)   An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2)   An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)   a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)   the specification would not comply with subsection 40(2) or (3).
As set out in subsection 102(2A) the "relevant time" is after the specification has been accepted. Therefore, as the present specification had been accepted when the amendments were requested, the requirements of subsection 102(2) apply.
Relevant principles applying to subsections102(1) and 102(2) are conveniently laid out by Yates J in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [38] to[40] (Bristol-Myers Squibb):
"38. Consideration of the prohibition in s102(1) of the Act requires a comparison between what would be claimed as a result of the proposed amendment and what is disclosed in the specification as filed. The steps involved in this comparison were described in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 at 466C-E. As there emphasised, the key point is that the words 'as a result of the amendment' in s102(1) are not to be confused with the expression 'after the amendment'. The amendment is identified by considering the specification as it stands with how it would stand after the proposed amendment. It is only by that step that one can determine what matter results from the amendment. Once that is determined, the next step is to read the specification as a whole (that is, amended in the manner proposed) and to compare it with what is 'in substance disclosed' in the specification as filed. If by reason of the amendment proposed, and for no other reason, the specification would then claim matter not in substance disclosed in the specification as filed, the amendment would not be allowable.
39. As to the notion 'in substance disclosed', the Full Court in ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 at [ 118] referred to the close relationship between that notion and the test for fair basis, saying that it would be a rare case where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification: see also GambroPty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2000) 49 IPR 321 at [18] where the two requirements were said to be 'very similar'. In Ethyl Corporation's Patent [1972] RPC 169 at 195, Lord Denning MR said that the requirements were 'virtually the same', although in Lubrizol the Full Court thought it unnecessary to go that far. It is thus expedient to test whether matter is 'in substance disclosed' in the specification as filed by asking whether there is a 'real and reasonably clear disclosure' of that matter.
40. Consideration of the prohibition in s 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Once again the prohibition is conditioned on a state of affairs existing as a result of the amendment, namely that a claim would not in substance fall within the scope of the claims before amendment. Thus the identification of the amendment is, once again, an important first step. Moreover, the reference to 'within the scope of the claims' before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression 'within the scope of the claims' directs attention to all the claims. For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment. If the answer is 'yes', the amendment is proscribed by s102(2)(a) of the Act: AMP Incorporatedv The Commissioner of Patents (1974) 3 ALR 283 at 289-290; Fina Research SA vHalliburton Energy Services Inc (No 2) (2003) 127 FCR 561 at [29]; W J Voit Rubber Corp 's Application, Re (1965) AOJP 1752 at 1754-1755."
The terms of subsection 40(2) and 40(3) are:
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3) The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
The nature of the amendments
Although the claims, description and drawings were amended, it is the amendment to the claims that is the focus of the opposition.
The amendment to claim 13 consists simply of the addition of the words "on the drive component". The claim is reproduced here, with the added words shown underlined:
A lockable chain winder comprising an outer body, a chain at least partially in the body, drive means to drive the chain, a winding handle which is operated to extend or retract the chain from the body, a key cylinder for locking the chain winder, a rotatable drive component, which has a thread which engages with the drive means, attachment means on the drive component to attach to the winding handle, and a locking means on the drive component which interacts with the key cylinder to lock the chain winder, wherein the winding handle and the key cylinder are spaced apart such that the winding handle can be rotated to extend or retract from the chain body while a key is in the key cylinder.
This amendment was proposed to address a lack of clarity that the delegate found in the first decision. The delegate found that it was unclear whether the locking means was located on the rotatable drive component, or could be elsewhere. The amendment clarifies that the locking means is located on the drive component.
In order to understand the way in which the device works it is helpful to refer to the first decision, where the delegate referred to Figure 8 of the specification. The delegate reproduced Figure 8 with the names of the components used in place of reference numbers. That drawing is shown here:
It is clear in this drawing that the locking means is on the rotatable drive component and interacts with the key cylinder via a locking plate.
Paragraph 102(1) - Matter not in substance disclosed in the specification as filed
As noted in the Bristol-Myers Squibb case, subsection 102(1) requires a comparison between what would be claimed as a result of the proposed amendment and what is disclosed in the specification as filed. When determining whether matter is in substance disclosed in the specification as filed the courts have basically applied the test for fair basis. Thus it is necessary to ask whether there is a 'real and reasonably clear disclosure' of the matter claimed in the amended claim.
The opponent's issue with the amendment is best summarised in paragraph 2.1 of the statement of grounds and particulars which states:
The specification only describes one type of locking means effective to lock the chain winder, being a chain locking mechanism support by the casing, and comprising a ratchet and a lock plate.
In other words, the specification as filed only provides an in substance disclosure of a locking means on the drive component when there is a locking plate to communicate between the key cylinder and the locking means. Thus, the absence of an explicit reference to a locking plate means that feature is optional in claim 13, and in so doing it claims matter not in substance disclosed.
The applicant's assertion seems to be that the issue is pre-existing, or that there is support for an arrangement which does not require a locking plate:
"The Applicant submits that if the scope of clam 13 was indeterminant, it cannot be said that the result of the amendment is a change in the scope of that claim. If it cannot be said that the result of the amendment is a change in the scope of the claim, the ground of opposition under section 102(1)(a) (sic) cannot be made out.
Even if the proposed amendment can be said to result in a change in the scope of the claim 13, that change is with respect to the location of the locking means only. Claim 13 as proposed to be amended requires a locking means which interacts with a key cylinder to lock the chain winder, the locking means being located on the drive component. Claim 13 does not include any specific limitation as to the mechanism by which the locking means interacts with the key cylinder. Such a locking means was clearly foreshadowed in the specification as filed."
It seems to me that there are two issues here. First, does a claim to an arrangement in which the locking means is on the drive component and there is no explicit reference to a locking plate arise as a result of the amendment (or was it present before amendment)? Second, if the claim arises as a result of the amendment, is such an arrangement in substance disclosed in the specification as filed? The second issue only arises if the answer to the first is YES.
Turning to the first issue, does the lack of reference to a locking plate arises as a result of the amendment? This question requires an assessment of whether this option was covered by the claims before amendment. Claim 13 before amendment was found to be unclear. However, this does not mean that no assessment can be made of what subject matter it covered. Normally in a situation of lack of clarity it is apparent that some subject matter falls within the ambit of the claim, but it is uncertain whether other subject matter falls within the claim. In the present case the delegate found lack of clarity, but adopted a construction matching claim 13 as amended for the purposes of his decision, see [31] of the first decision. This strongly suggests that the delegate considered that this was within the scope of claim 13, although it was unclear whether other subject matter was within the claim. It follows that this feature does not arise as a result of the amendment, and a ground of opposition does not arise.
I will briefly consider the second issue, although it is not necessary to do so. In the applicant’s submission in response they referred to page 5 lines 4 – 10 of the specification as describing an embodiment of the invention which does not require a specific mechanism by which the locking means interacts with the key cylinder and is generally consistent with claim 13 as proposed to be amended. This passage reads:
"In one form, the invention resides in a lockable chain winder comprising an outer body, a chain at least partially in the body, drive means to drive the chain, a winding handle which is operated to extend or retract the chain from the body, a key cylinder for locking the chain winder, and a rotatable drive component, which has a thread which engages with the drive means, attachment means on the drive component to attach to the winding handle, and locking means on the drive component to form part of a chain locking mechanism."
While brief, I consider that this is an in substance disclosure of this feature.
I conclude that the opposition in relation to subsection 102(1) does not succeed.
Paragraph 102(2)(b) - the specification would not comply with subsection 40(2) or (3).
The opponent argued that as a result of the amendment claim 13 would not be fairly based. This is said to follow for the same reasons as presented in relation to subsection 102(1). I agree that this ground rises and falls with the former ground, and in this case the ground fails.
It follows that amendment claim 13 meets the requirements of subsection 102(2)(b) and the opponent is unsuccessful on this ground.
Conclusion
The opposition fails on all grounds. I will allow the amendments.
Costs
Ordinarily in proceedings such as these, costs follow the event. There appears to be no special circumstances which warrant varying that approach. Therefore, I will award costs in accordance with Schedule 8 against the opponent.
Dr S.D. Barker
Delegate of the Commissioner of Patents