Permaform International Pty Ltd v CSR Building Products Limited - [2022] APO 66

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Permaform International Pty Ltd v CSR Building Products Limited [2022] APO 66
Patent:2019101382

Title:Formwork System

Patentee:CSR Building Products Limited

Opponent:Permaform International Pty Ltd

Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents

Decision Date: 21 September 2022

Hearing Date: Written submissions completed 21 June 2022

Catchwords: PATENTS - opposition under section 104 – building formwork componentry – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether the amendments result in a claim that is not within the scope of the claims before amendment – whether as a result of the amendments, the invention is not clearly and completely described, and whether the claims are not clear and not supported – amendment not allowable – no award of costs

Representation: Patent attorney for the patentee: Griffith Hack
Patent attorney for the opponent: Acumen Intellectual Property

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2019101382

Title:Formwork System

Patentee:CSR Building Products Limited
Date of Decision: 21 September 2022
DECISION

The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed. The amendment does not result in a specification that fails to clearly and completely disclose the invention or lead to the claims lacking support or clarity. However, the amendment results in a claim that would not in substance fall within the scope of the claims before amendment.
I refuse the amendment request of 29 January 2021. I make no award of costs.
REASONS FOR DECISION
BACKGROUND

Innovation patent AU 2019101382 in the name of CSR Building Products Limited (the patentee/CSR) was filed on 11 November 2019 as a divisional application of AU 2018229681. It was examined and certified in early 2020, before a third-party request for re-examination was received on 31 May 2020 from Acumen Intellectual Property. An adverse re-examination report issued on 11 August 2020, following which a request to amend the specification was filed by CSR. A second adverse re-examination report issued on 2 October 2020 followed by further amendments. After another adverse re-examination report on 12 January 2021, another set of amendments were proposed on 29 January 2021. These amendments were considered by the examiner to be allowable, and to overcome outstanding objections in the re-examination process.
On 10 and 11 May 2021 respectively, the amendments were opposed by Burak Dincel and Permaform International Pty Ltd (the opponent/Permaform). At a later date, Burak Dincel withdrew their opposition. No evidence was filed by any of the parties and thus the hearing was set to proceed on the basis of written submissions. Permaform chose to rely on their statement of grounds and particulars as the exhaustive basis of their case and CSR filed submissions in answer on 6 June 2022. On 22 August 2022 I wrote to the parties inviting submissions regarding an issue that was not raised by the opponent. In response a new amendment was filed.
SPECIFICATION
The patent pertains to a connector for building formwork components of the type that comprise a cavity for the receipt of cementitious material. In this context, formwork is used to provide a mould into which concrete is poured to build a wall. Using known arrangements, inspection of internal aspects of the formwork can be difficult, wherein the present invention seeks to improve upon the known arrangements. The invention is described in detail with respect to figure sets 1 and 2 presented below as included in the specification as filed and as proposed to be amended.
Figures 1A to 1D are described as follows:
Referring firstly to Figures 1A, 1B, 1C and 1D, the formwork system 100 comprises building formwork components in the form of a first formwork component 102a and a second formwork component 102b. The formwork components 102a and 102b are to be connected together by a building formwork connector in the form of a corner connector 104.
The formwork components 102a, 102b, and the corner connector 104, are formed of an extruded polymer. The features of each of the formwork components 102a, 102b are generally integrally formed with one another. However, flatpack 20 (disassembled) versions of the formwork components 102a, 102b can be provided.
The first 102a and second 102b formwork components are substantially identical to one another. Each formwork component 102a, 102b comprises two parallel spaced sidewalls 106 and four webs 108 extending therebetween. The sidewalls 106 and webs 108 define cavities 110 that, in use, are able to receive a cementitious material therein. The cementitious material is able to flow between the cavities 110 by way of apertures 112 that are formed in the webs (i.e. the cavities are in fluid communication - fluidly connected). The cementitious material (when set) in the formwork components 102a, 102b and the corner connector 104, define a portion or section of a building structure. In the illustrated embodiment, this structure is a corner section of a wall.
Each formwork component 102a, 102b comprises a first end 114 and an opposing second end 116. The first end 114 comprises opposing grooves 118 formed along the edges of the spaced parallel sidewalls 106 and the second end 116 comprises opposing flanges 120 that extend inwardly (towards one another) from the edges of the sidewalls 106. The grooves 118 correspond to the flanges 120 such that two formwork components 102a, 102b can be connected to one another by positioning of the flanges 120 to be received in the grooves 118 (e.g. by way of sliding or snap-fitting of the formwork components 102a, 102b relative to each other).
In the illustrated embodiment, the formwork components 102a, 102b are oriented so as to be generally perpendicular to one another, and are connected to one another by the corner connector 104.
More specifically, the first formwork component 102a is oriented such that its first end 114 is engaged by a first set of engagement portions 122 of the corner connector 104. Further, the second formwork component 102b is oriented such that its second end 116 is engaged by a set of engagement portions 124 of the corner connector 104. In this way, the building formwork components 102a, 102b and the corner connector 104 can be generally arranged to form the corner section of a wall.
The corner connector 104, which is disposed between the building formwork components 102a, 102b, is formed of two elements: an internal corner structure in the form of a connecting (inner) element 126 and an external corner in the form of a detachable (outer) element 128. The connecting element 126 generally locates against to be retained at the building components 102a, 102b, whilst the detachable element 128 defines an external corner of the connector 104 that can be removed.
The connecting element 126 comprises two sidewalls 130, 132 that, in Figures 1A to 1D, are perpendicular to one another so as to form the connecting element 126 as a generally L-shaped profile. The L-shaped profile corresponds to an internal corner that is defined by the proximate ends 114, 116 of the two perpendicular formwork components 102a, 102b. That is, the two sidewalls 130, 132 of the connecting element 126 locate against (and partially cap) the ends 114, 116 of the formwork components 102a, 102b respectively.
Regarding figure set 2, the specification notes:
Referring now to Figures 2A, 2B, 2C and 2D, a further embodiment of the formwork system is illustrated. This formwork system 200 is similar to that described above in that it comprises a corner connector 204 and first 202a and second 202b formwork components that (once filled with cementitious material) form a corner section of a wall. However, the formwork components 202a, 202b of this embodiment differ in the way they engage with one another (and in the way they engage with the corner connector 204).
Another difference is that webs 254 (Fig. 2C) are provided and are formed between the first 242 and second 243 (external) walls of the detachable element 228 and the third curved (internal) wall 246. These webs 254 provide rigidity and strength to the detachable element 228 (i.e. in addition to the strength provided by the hollow shape defined by the sidewalls 242, 243, 246 of the detachable element 228).
The flanges 220 of the formwork components 202a, 202b (at their respective second ends 216) extend inwardly from the sidewalls 206 and at an angle such that an outer surface of each flange 220 generally defines a ramp surface. The grooves 218 of the formwork components 202a, 202b (at their first ends 214) have a generally V-shaped profile that correspond to the flanges 220. To connect two formwork components 202, they are moved laterally towards one another such that the ramp surfaces of the flanges 220 contact the ends of the sidewalls adjacent the grooves 218. Further movement causes the flanges 220 and/or sidewalls 206 to flex until the flanges 220 snap into the grooves 218. In other words, the formwork components 202a, 202b are configured to snap-engage with one another.
This difference in configuration somewhat necessitates an alternative corner connector 204 (i.e. to that described above and illustrated in Figures 1A, 1B, 1C and 1D).
The connector 204 again comprises an internal corner structure in the form of (inner) connecting element 226 and an external corner in the form of (outer) detachable element 228. Unlike the previously described embodiment, these elements 226, 228 are generally symmetrical about a diagonal line of symmetry. As a result, the detachable element 228 is engaged solely with the connecting element 226, and not with either of the formwork components 202a, 202b. This engagement is by way of hook-shaped flanges 256 extending from respective distal ends of the first 242 and second 243 sidewalls of the detachable element 228, and corresponding hook-shaped flanges 258 extending from distal ends of first 230 and second 232 sidewalls of the connecting element 226. The nature (shape) of the hook-shaped flanges 256, 258 is such that the engagement between the detachable 228 and connecting 226 elements is by way of a sliding engagement.
The engagement of the connecting element 226 with the formwork components 202a, 202b also differs. As best shown in Fig. 2C, the sidewalls 230, 232 of the connecting element 226 respectively comprise two engagement portions 222, 224, in the form of flanges extending therefrom, for engagement with a respective formwork component 202a, 202b.
First engagement portions 222 take the form of a first pair of flanges that extend from the first sidewall 230 of the connecting element 226. Each of this first pair of engagement portions 222 comprises a secondary flange that extends inwardly in an angled manner (i.e. similar to flanges 220) so as to snap engage a corresponding groove 218 of the first formwork component 202a.
Second engagement portions 224 take the form of a second pair of flanges that extend from the second sidewall 232 of the connecting element 226 (in the direction of the second building formwork component 202b). Each of this second pair of engagement portions 224 comprises a V-shaped groove that is similar (or identical) to those formed at the first end 214 of each building formwork component 202a, 202b. In this way, the flanges 220 of the second building formwork component 202b can engage with the engagement portions (i.e. grooves) 224 of the connecting element 226 in the same way that they engage with another like-building formwork component. That is, the flanges 220 of the second building component 202b can snap-engage with the grooves 224 of the connecting element 226.
The patent as proposed to be amended ends with 5 claims. All issues raised by the opponent are raised with respect to features in claim 1 which is as follows (mark-up and strikeouts are in respect of the claims as certified):
A building formwork system comprising:
first and second building formwork components, each building formwork component comprising:
two spaced component sidewalls and spaced webs extending between the component sidewalls, the sidewalls and the spaced webs together defining therebetween a cavity for receipt of cementitious material, one of the spaced webs being located at a respective end of each of the first and second building formwork components;
Aa building formwork connector ~~for connecting first and second building formwork components that each comprise two spaced sidewalls defining therebetween a cavity for receipt of a cementitious material,~~ configured to connect the first and second building formwork components, the connector comprising:
an internal corner comprising two internal corner sidewalls connected to ~~define an~~ form the internal corner ~~structure~~, the internal corner ~~structure to be~~ sidewalls configured to be connected to extend across the respective ends of the first and second building formwork components such that each internal corner sidewall is proximate to a respective said one of the spaced webs, the internal corner sidewalls of the internal corner ~~structure~~ each comprising engagement portions for engaging the two spaced sidewalls of a respective one of the first and second building formwork components such that, when engaged, the internal corner ~~structure~~ is located and retained at the respective ends of the first and second building formwork components ~~respectively~~ to thereby join the first and second building formwork components; and
an external corner comprising one or more external sidewalls;
wherein:
the external corner is attached to the internal corner ~~structure~~ in a closed position of the connector to thereby define a connector cavity between the internal corner ~~structure~~ and the external corner, with the connector cavity located with respect to the cavities of the first and second building formwork components ~~such that the cavities are in fluid communication~~; and
the external corner is moveable relative to the internal corner ~~structure~~ to an open position of the connector whereby access is provided to the connector cavity.
THE RELEVANT LAW
The application for the patent was filed in 2019, and the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 therefore apply to the present patent.
The requirements for the allowability of amendments are governed by subsections 102(1) and (2) which state that:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)   the complete specification as filed;
(b)   other prescribed documents (if any).
(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), (3) or (3A).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment, the relevant time being the time of certification.
GROUNDS OF OPPOSITION
The opponent has submitted that the proposed amendments are not allowable because, as a result of the amendment, the specification would claim matter that extends beyond matter disclosed in the complete specification as filed (subsection 102(1)). They also submitted that, as a result of the amendment, the specification would not comply with subsection 40(2)(a) resulting in a specification that does not clearly and completely disclose the invention, and the claims would not be clear or supported under subsection 40(3) (s102(2)(b)). I also asked for submissions from the parties as to the removal of a feature by the amendment to determine if the claims failed s102(2)(a) as not falling within scope prior to amendment, this not being a ground relied upon by Permaform, but raised in my capacity as a decision maker.
LEGAL PRINCIPLES
Before I discuss the issues, I will briefly set out the legal principles that apply in the present opposition.
s102(1) - Claim or disclose matter that extends beyond that disclosed at filing
Subsection 102(1) was considered by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328, where he noted the following at [215] to [218]:
“First, as has been pointed out, the test is a strict one.
Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.
Third, the required disclosure may be express or implied, but on any view must be clearly and unambiguously so. In this regard, a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.
Fourth, context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application”.
Thus, the correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn or directly derive from the complete specification as filed.
s102(2)(a) - Claim would not in substance fall within the scope of the claims before amendment
A useful test for the allowability of amendments under s102(2)(a) is:
"would the amendment make anything an infringement which would not have been an infringement before the amendment?"
This test was suggested in relation to s31(1) of the British Act in The Distillers Co. Ld.'s Application (1953) 70 RPC 221 at page 223. Although the wording of s102(2)(a) differs from the wording of the then s31(1) of the British Act, the Commissioner in W.J. Voit Rubber Corp.'s Application (1965) AOJP 1752, when considering the corresponding provision of the Patents Act 1952, at page 1754 stated:
"the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one".
The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner [2000] FCA 1918.
s40(2)(a) - The invention must be clearly and completely disclosed
In Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 at [376] to [378], Rofe J referred to the judgement of Burley J in Cytec Industries Inc. v Nalco Company [2021] FCA 970 who in turn referred to respective decisions of Deputy Commissioners of Patents Barker and McCaffery in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 and Evolva SA [2017] APO 57, presenting the following as guiding the consideration under s40(2)(a):
“At [143] in Cytec Burley J referred to CSR Building Products in which Dr Barker considered at [95] that assessing whether the disclosure requirement was satisfied involved the following steps:
(1) construe the claims to determine the scope of the invention claimed;
(2) construe the description to determine what it discloses to the person skilled in the art; and
(3) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
At [144] his Honour also added two further steps from Evolva SA [2017] APO 57 at [45]:
(1) Is it plausible that the invention can be worked across the full scope of the invention?
(2) Can the invention be performed across the full scope of the claims without undue experimentation?
The last step aligns with what Jacob LJ described in Novartis AG v Johnson & Johnson Medical Ltd [2010] EWCA Civ 1039 (Novartis) as the heart of the disclosure test:
Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?”
s40(3) - The claim(s) must be supported by matter disclosed in the specification

The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 at [546]-[547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
It is therefore the case that under s40(3), the matter in a claim of a specification must be supported by an enabling disclosure in the description and any drawings, graphics, photographs and sequence listing (i.e., the body of the specification).
s40(3) - The claim(s) must be clear
The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
The requirement for clarity will be satisfied if there would be “no difficulty in a third party ascertaining whether or not what he proposes to do falls within the ambit of the claim” (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). Further, “Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to their intended use” (Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890 at [81]).
CONSIDERATION
s102(2)(b) – Clarity
Key to the resolution of issues in the present matter is an understanding of the scope of claim 1 as proposed to be amended. For this reason, I deal with the clarity of the claim first. Most important are construction of features of the ‘end’ of building formwork components, and the ‘proximate’ location of internal corner sidewalls with respect to spaced webs located at the ends of formwork components.
End
Permaform submit that the meaning and scope of the word ‘end’ in the phrase ‘one of the spaced webs being located at a respective end of each of the first and second building formwork components’ is not clear. I understand that Permaform submit that it is not clear if ‘end’ means literally at the very end or near but not at the end. While the comments were made with respect to the ground of clear and complete disclosure, they argue that there is no disclosure or teaching as to the scope of the ‘end’ of the building formwork components.
CSR respond by pointing out in relation to both ‘end’ and ‘proximate’:
“…on reading the specification as a whole, in conjunction with the drawings (especially Figs. 1A and 1B, and 2A and 2B), it is submitted that the person skilled in the relevant art would clearly and unambiguously discern that, in each building formwork component, there is a web located at the end of the component that, in turn, locates proximate to a sidewall of the internal corner (i.e. the red component) – i.e. when the internal corner is connected to extend across the respective ends of the first and second building formwork components. The specification and Figures make it clear that the web can either abut/closely-face an internal corner sidewall, or it can locate near to an internal corner sidewall…
In addition to the clear disclosure of the specification, it is well understood in the relevant art that the term ‘proximate’ is not limited to ‘abut’, nor does the term ‘end’ mean ‘only at the very end’.”
In context of the claim alone, I accept that there is a need to consider more carefully the scope of what is meant by ‘end’ in seeking to understand whether its use means substantially at the very end of building formwork components, or something less specifically definitive. With this in mind, I first turn to the Macquarie Dictionary (The Macquarie Dictionary, 8^th ed. 2022, defining ‘end’ as:
1.  an extremity of anything that is longer than it is broad: the end of a street; the end of a rope.
2.  an extreme or farthermost part of anything extended in space.
3.  anything that bounds an object at one of its extremities; a limit.
4.  a place or section adjacent to an extremity or limit: at the far end of the room…
Clearly the term includes a section or portion of an object which is adjacent to an extremity and not necessarily the extensive limit of an object. Without considering any information extrinsic to the claim it is appropriate to give the term a meaning that includes within its scope the potential for an ‘end’ being a region of the component. I see no difficulty for the person skilled in the art in construing the term, albeit broadly as a region of a formwork component adjacent to an extremity or limit of a formwork component. While not precise, this appears to be a workable standard to apply to the geometry of a formwork component. For completeness, I will turn to the specification to assess the consistency of my construction with the description of the invention therein.
Turning to the use of the terminology in the specification I note that the figures I have provided above include items 114, 116, 214, and 216. With respect to both figure sets 1 and 2, these items generally label ends of the formwork components. For example, I refer to page 17, lines 5-9 of the specification as proposed to be amended (the text also appearing in the specification as filed) which states with respect to the sidewalls 130 and 132 of FIGs 1A-D (my emphasis):
The L-shaped profile corresponds to an internal corner that is defined by the proximate ends 114, 116 of the two perpendicular formwork components 102a, 102b. That is, the two sidewalls 130, 132 of the connecting element 126 locate against (and partially cap) the ends 114, 116 of the formwork components 102a, 102b respectively.
Similarly, with respect to items 214 and 216 the specification as proposed to be amended at page 22 lines 14-18 (my emphasis, the text also appearing in the specification as filed):
The flanges 220 of the formwork components 202a, 202b (at their respective second ends 216) extend inwardly from the sidewalls 206 and at an angle such that an outer surface of each flange 220 generally defines a ramp surface. The grooves 218 of the formwork components 202a, 202b (at their first ends 214) have a generally V-shaped profile that correspond to the flanges 220.
The specification thus refers to the term ‘end’ as not only being the very end of a component, but instead to mean the general ‘end region’ of the component, which appears to be suggested by the graphical representation of the figure sets to include a web (of a plurality of webs) that is located at an end region of an elongate building formwork component. The use of the word 'end' with respect to the formwork components in the body of the specification is not inconsistent with my interpretation of the word as used in the claim. With spaced webs being located at respective ends of the components it is the identified webs themselves in their relationship to other webs of the formwork component that defines the ‘end’ of the components. In this regard the claim defines ‘one of the spaced webs being located at a respective end of each of the first and second building formwork component’.
I find the claim as proposed to be amended clear in this regard. However, my construction appears to potentially differ from that applied in the latest re-examination report which may have consequences for the claim’s novelty.
Proximate
Permaform submit that the meaning and scope of the word ‘proximate’ is not clear. Most relevantly, although with respect to the ground of clear and complete disclosure, Permaform submit that:
“There is no discussion or teaching as to whether proximate means or is to be interpreted as meaning very close, next to or just nearby? Further, irrespective of this interpretation there is no discussion or teaching as to when a web is far enough away from an internal corner sidewall that the internal corner sidewall is not proximate to the web.”
Thus, there is a question to answer as to what way, if any, the term ‘proximate’ is intended by the claim to limit the distance between an internal corner sidewall and the web that is located at the respective end of the formwork components.
As is the case in claim construction, provided there is no clear definition in the specification itself or that a word does not have a special meaning in the art, it is again most useful to turn to the dictionary to understand the ordinary scope of a word used in a claim. The ordinary meaning of the word ‘proximate’ according to the Macquarie Dictionary (The Macquarie Dictionary, 8^th ed. 2022, is:
1.  next; nearest.
2.  closely adjacent; very near.
3.  fairly accurate; approximate.
4.  next in a chain of relation…
Thus, on its ordinary meaning, the use of the word ‘proximate’ can include a closeness that simply means next or nearest. In the case (as in claim 1) that there is more than one spaced web in each formwork component, the extension of an internal corner sidewall across a respective end of a building formwork component provides for a nearest spaced web (i.e., the one located at the end of the building formwork component) that may be considered thereby, proximate. To this extent, on ordinary meaning of the word proximate, it appears that reference is simply being made in the claim to a potential orientation of a formwork component with respect to the internal corner such that the web located at the end of the building formwork component may be located nearest to the internal corner structure when compared to the other webs of the particular formwork component. Consistent with my consideration above in relation to the term ‘end’, this provides for a broad construction of the distance of a web from an internal corner sidewall in use such that no specific distance is defined in the claim. Instead, the use of the word ‘proximate’ appears to limit the claim to a potential neighbouring relationship between a web and a sidewall in use.
Proximate could mean that an internal sidewall and a web are abutting, or it might not. How far away from the very end of the formwork component a web is, and thereby the distance between the between the web that is located at the end of the building formwork component and an internal corner sidewall, is not a requirement of the claim on my reckoning. Instead, as I note above, the use of the term proximate suggests a potentially operative orientation of the formwork component with respect to an internal corner sidewall such that one of the spaced webs in each formwork component is closer to the internal corner sidewall that the other spaced webs of that formwork component.
Again, I will consider the consistency of my construction with the specification, where the term ‘proximate’ is used in two locations. A first was identified above at paragraph 26 in defining ends 114 and 116 as proximate. To this extent, in figure set 1, it is the ends of the formwork components that are seemingly proximate to the internal corner. A second use of the term is at page 18 lines 8-10 of the specification as proposed to be amended (the text also appearing in the specification as filed) where it is noted:
One of the engagement portions 124 is disposed at an end of the second sidewall 132 that is proximate its intersection with the first sidewall 130.
Here, as with the former use of the term, ‘proximate’ appears to suggest a general closeness, however it is notable that the term is not used in the specification with respect to spaced webs themselves, and their closeness to an internal corner sidewall. Thus, I do not consider there to be anything specific in the specification that gives meaning to the word ‘proximate’ in the context of a web and the internal corner sidewall.
Regarding the scope of the term ‘proximate’, CSR suggest that the specification teaches functionality of webs in providing stiffness to structure. They argue that (their emphasis):
“… the skilled addressee would readily understand the functional relationship between the engagement portions and webs of the formwork modules, namely, that a web is located next to the engagement portions of the building component to provide a stiffness to the engagement portions, i.e. to the flanges, such that they can deform and snap-engage with a corresponding building component. This functional relationship [is described in the specification, although in the context of the external corner] at page 8, lines 7-9 which states:
(i)‘…webs can help (e.g. in addition to the hollow section itself) to stiffen the external corner. This increased stiffness can assist with resistance of hydraulic pressure…’”
I generally accept that the function of webs between internal side walls is to provide increased stiffness to resist hydraulic pressure when concrete is introduced between side walls. In this regard, it is clear that the webs serve a particular functional purpose. However, as far as I can tell, to an extent such functional purpose would appear to be served to a degree by locating the webs at any particular location with respect to the ends of the formwork component.
With this in mind, I do not consider the discussion regarding snap-engagement posed by CSR assists in construing the term ‘proximate’. This is particularly so as there is no concept of snap-engagement within the claim itself such as to import such functionality on the term. The claim is merely directed towards the feature of ‘internal corner sidewalls of the internal corner each comprising engagement portions for engaging [formwork components] such that, when engaged, the internal corner is located and retained at the respective ends of the [formwork components]’. Given engagement could be by any means, it is not apparent to me that there is a functional limitation to the scale of the term ‘proximate’ beyond a general function of the webs to provide for structural support against hydraulic pressure outwardly on the walls of the formwork components.
Hence, I find the claim as proposed to be amended clear in respect of the term ‘proximate’. I construe the term broadly to identify a potential orientation of the formwork component with respect to an internal corner sidewall such that one of the spaced webs in each formwork component (the end spaced web) is closer to the internal corner sidewall that the other spaced webs of that formwork component.
As above, my construction appears to potentially differ from that applied in the latest re-examination report which may have consequences for the claim’s novelty.
s102(1) – Is there new matter?
Proximate and engagement portions
With reference to figure sets 1 and 2, Permaform submits that there is no disclosure in the specification as filed of a building formwork connector with the following combination of features (my emphasis):
1. Each internal corner sidewall is proximate to a respective said one of the spaced webs; and
2. The internal corner sidewalls of the internal corner each comprising engagement portions for engaging the two spaced sidewalls of a respective one of the first and second building formwork components.
Essentially Permaform submit that neither embodiment represented by the two figure sets discloses features 1 and 2.
With regard to FIGs 1A-D Permaform argue that:
“The version of figures 1a to 1d has the internal sidewall 130 only connecting to the inner wall of panel 102a and it is the external cover that connects to the outer wall of panel 102a. This is best seen in figure 1a where the yellow outer corner is flush with the outer wall.
Because the version of figures 1a to 1d does not have one of the internal corner sidewall engaging both walls of the panel 102a, by itself it does not disclose all of the features of the proposed claim 1.
Further in the version of figures 1a to 1d in panel 102b the web is spaced from both ‘the end’ and the internal corner sidewall and is not proximate to the web.”
Regarding FIGs 2A-D Permaform argue that:

“The version shown in figures 2a to 2d has the internal corner engaging both inner and outer walls of each panel. However, both panels have the nearest web located away from the end of each panel and neither is close to the internal corner sidewall. Accordingly, each internal corner sidewall is not ‘proximate’ to a respective said one of the spaced webs.”
I first turn to the disclosure in figure set 1. I also note that CSR point out that proximate is not limited to touching or abutting. In figure set 1 (in particular FIG 1C) it is clear that the nearest spaced web in the formwork component 102a is abutting its respective internal corner sidewall and the nearest space web in the formwork component 102b is not abutting its respective internal corner sidewall. However, in accordance with my construction of term ‘proximate’ above under the ground of clarity, I conclude that both nearest spaced webs in figure set 1 are proximate an internal corner sidewall. In addition, following my interpretation of the term 'end' with respect to a building formwork component, I can see no reason to consider that these nearest webs are not located at the end of their respective building formwork components.
The same applies to figure set 2 regarding the proximity of the nearest spaced webs to their respective internal corner sidewalls. While not for want of a better phrase, ‘very close to’ internal corner sidewalls, the webs located at an end of the formwork components are such that they have a potential orientation such as to be located nearest to the internal corner and one of its sidewalls when compared to the other webs of the same formwork component.
For the amendment to be allowable on this ground I must find a disclosure of internal corner sidewalls each comprising engagement portions for engaging the two spaced sidewalls of a respective one of the first and second building formwork components in combination with proximate location of internal corner sidewalls with respect to a spaced web located at the end of the respective building formwork component. Such disclosure is clearly present in figure set 2 where the internal corner sidewalls each have two engaging portions which physically connect directly to both of sidewalls of the formwork components. In figure set 2, flanges and grooves are present at the ends of the sidewalls of the formwork components to engage with corresponding components of the internal corner sidewalls.
Regarding figure set 1, CSR submit that the claim’s language is not limited to direct engagement of the two spaced sidewalls with internal corner sidewalls. This submission reflects the fact that in figure set 1, although difficult to see in the earlier provided figures, the outer wall of formwork component 102a physically connects directly via interlocking mechanism with the external corner component and not the internal corner component. CSR provided the following mark-up of an enlarged portion of FIG 1C in their submissions to illustrate their point.

I am satisfied that the region circled includes an engaging portion of an internal corner sidewall that is ‘suitable for’ engaging the relevant outer sidewall of building formwork component 102a. This engagement does not involve any direct interlocking, but I agree with CSR that this is not a requirement of the claim.
In light of the discussion above, I find that the feature relating to proximate location of each internal corner sidewall with respect to spaced webs is disclosed in the specification as filed in combination with engagement portions on each internal corner sidewall for engaging both spaced sidewalls of the formwork components.
Respective end and proximate
Permaform submit that there is no disclosure in the specification as filed of ‘one of the spaced webs being located at a respective end of each of the first and second building formwork components’. They also submit that there is no disclosure of the use of the phrase ‘proximate’ in relation to internal corner sidewalls and spaced webs.
Regarding the latter argument, in accordance with my analysis above under the ground of clarity I agree that the specification as filed does not use the word ‘proximate’ explicitly in relation to the claimed relationship. However, on my construction of the use of the term as defining a potential orientation of a formwork component with respect to the internal corner, it is clear that disclosure is provided in the specification as filed by way of the figures themselves.
Similar applies to the location of spaced webs at respective ends of each of the building formwork components. Applying a necessarily broad construction to the term ‘end’, it is clear that disclosure is provided in the specification as filed by way of the figures.
Proximate, engagement portions and respective end
Permaform submit that there is no disclosure in the specification as filed of the combination of the following features:
1.   Both internal corner sidewalls comprising engagement portions for engaging the two spaced sidewalls of a respective building formwork component;
2.   Both of the building formwork components each having a web located at a respective end, and
3.   Each internal corner sidewall is proximate to a respective web
This ground is not presented with any further detail.
I consider it straight forward in light of the analysis above that each of these three features is disclosed in combination in the specification as filed by way of the figures. Having construed the terms ‘end’ and ‘proximate’ broadly, figure sets 1 and 2 each show nearest webs to internal corner sidewalls being located at end regions of elongate formwork components. Those figure sets also disclose internal corner sidewalls comprising engagement portions for engaging the two spaced sidewalls of a respective building formwork component.
Thus, I find the amendment does not add new matter.
s102(2)(a) – Claims within the scope of the claims before amendment
On 22 August 2022 I wrote to the parties with an observation that the proposed amendment removed the feature ‘such that the cavities are in fluid communication” from claim 1 as certified. I invited submissions from the parties as to whether this was an allowable amendment as on the face of it, it appeared that this constituted an amendment resulting in a claim that did not in substance fall within the scope of the claims before amendment, effectively broadening the defined relationship between the connector cavity and cavities of the formwork components. In response, CSR filed a new amendment request on 26 August 2022 that reintroduced this feature into the claims.
The claim as proposed to be amended on 29 January 2021 appears to contemplate no fluid communication between connector and building formwork cavities, the cavities merely being located with respect to each other, where the claim prior to amendment is limited to such fluid communication. Hence, I consider it clear that the broadening of a feature as has occurred by way of the amendment of 29 January 2021 would result in the potential for infringement where none previously existed. CSR made no submissions to refute this position.
Thus, I find the amendment request of 29 January 2021 not allowable as it results in a claim that would not in substance fall within the scope of the claims before amendment.
s102(2)(b) – Support
Proximate and End
Permaform’s submission under the ground of support essentially reflects the arguments provided with respect to clarity in that they submit that there is no disclosure in the specification of the relevant phrases and so the claim is not supported.
In accordance with the analysis above regarding the clarity of the claims, I can see no lack of enabling disclosure in the specification of the claimed features. There is clear presence of the relevant features in the specification, and there is no evidence of a burden to the person skilled in the art in implementing these features. The opponent does not suggest that the claims are broader than would be justified by the technical contribution. I find the claim as proposed to be amended supported.
s102(2)(b) – Clear and complete disclosure
Proximate and End
Permaform’s submission under the ground of clear and complete disclosure essentially reflects the arguments provided with respect to clarity and support. The key question requiring consideration at this point is whether the skilled person can readily perform the invention over the whole area claimed without undue burden and without needing inventive skill. The answer to this question is essentially found above in my analysis for clarity and support. On the information before me, I simply see no burden or need for inventive skill in the present matter. Furthermore, I have no doubts as to the plausibility of working of the invention.
Hence, I find the claimed invention as described in the specification as proposed to be amended is clearly and completely disclosed.
CONCLUSION
The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed. The amendment does not result in a specification that fails to clearly and completely disclose the invention or lead to the claims lacking support or clarity. However, the amendment results in a claim that would not in substance fall within the scope of the claims before amendment.
I therefore consider it appropriate to refuse the amendment request of 29 January 2021.
It appears that my construction of the claimed invention potentially differs from that applied in the latest re-examination report. This may have consequences for the claim’s novelty which should be considered by the examination section.
COSTS
The opposition to the s104 amendments is successful but only because of a ground I have raised during my considerations. On this basis I consider it appropriate to make no award of costs.
Dr N. R. Madsen
Deputy Commissioner of Patents