Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd - [2021] APO 16

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd [2021] APO 16

Patent Application: 2014253680

Title:Terminal and Disconnection Link

Patent Applicant:                   Pivot Electronics Pty Ltd
Opponent:  Phoenix Contact GmbH & Co. KG
Delegate:  M. G. Kraefft
Decision Date:  29 March 2021
Hearing Date:  Written submissions completed on 1 March 2021.

Catchwords: PATENTS – section 59 – final determination – whether amendments overcome defects identified in previous decision – amendments do not overcome deficiencies – further opportunity to amend allowed.

Representation: Patent attorneys for the applicant: FB Rice.
Patent attorneys for the opponent: Griffith Hack.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014253680

Title:Terminal and Disconnection Link

Patent Applicant: Pivot Electronics Pty Ltd
Date of Decision: 29 March 2021
DECISION
Claims 1-3, 13-17, 21 and 22 do not have an inventive step. As such, the amendments do not overcome the deficiencies identified in the previous decision.
The applicant is allowed one (1) month from the date of this decision to file further amendments to overcome this finding.
REASONS FOR DECISION
BACKGROUND

This matter is a final determination from the decision, Phoenix Contact GmbH & Co. KG v Pivot Electronics Pty Ltd, [2020] APO 35 (“the previous decision”). In that decision, I found that claims 1, 2 and 10-12 were not novel and that claims 1-3 and 10-14 did not have an inventive step. As a consequence, I allowed the applicant an opportunity to propose suitable amendments to overcome these findings.
The applicant filed a request to amend under section 104 on 22 September 2020. That request was allowed on 25 January 2021, unopposed.
The Patent Office subsequently stated in correspondence on 29 January 2021 that the matter was ready for final determination, and requested the parties to advise if they wished to be heard. Neither party indicated that they wished to be heard formally. Both parties though filed informal submissions in connection with the final determination.
APPLICABLE LAW
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision.
THE AMENDMENTS
Under section 104, the applicant proposed several amendments to the claims of the specification. The applicant also proposed amendments to consistory clauses in the descriptive part of the specification. Previously, claim 1 was the only independent claim. That position is unchanged after amendment. Consequently, if new claim 1 is found to be novel and inventive, then it follows that the remaining claims would also be novel and inventive.
Claim 1, with the amendments as indicated, is recited below.
1.A terminal unit comprising:
a terminal unit body;
a first terminal connector located adjacent a first opening in the terminal unit body for connection of a first conductor passing through the first opening;
a second terminal connector located adjacent a second opening in the terminal unit body for connection of a second conductor passing through the second opening, the first terminal connector and the second terminal connector being axially aligned along a longitudinal axis of the terminal unit body;
a link opening arranged intermediate the first terminal connector and the second terminal connector;
a first terminal connector conductive element extending internally of the terminal unit body from the first terminal connector to a first link connection point at the link opening;
a second terminal connector conductive element extending internally of the terminal unit body from the second terminal connector to a second link connection point at the link opening, the first and second link connection points being accessible via the link opening; and
a removable link comprising a link conductor and a link handle, the removable link being removably insertable into the link opening in a normal orientation and in a reverse orientation,
wherein, in the normal orientation, ~~in which~~ the link conductor electrically connects the first link connection point and the second link connection point to electrically connect the first terminal connector to the second terminal connector and the link handle projects from the link opening,
wherein, in the reverse orientation, the link handle is inserted into the link opening without electrically connecting the first link connection point to the second link connection point and the link conductor projects from the link opening,
wherein the link handle comprises an insulator which projects from the link opening when the link conductor is inserted to electrically connect the first link connection point and the second link connection point, such that the link handle enables gripping of the removable link for removal without touching the link conductor,
wherein the removable link includes an insulating sheath surrounding part of the link conductor, and
wherein the link handle and the insulating sheath are of different colours such that the sheath colour is visible when the removable link is inserted into the link opening in the a reverse orientation ~~with the link handle inserted in the link opening or when the removable link is not fully inserted into the link opening in the normal orientation~~.
The new reverse orientation feature of claim 1, where the link handle is inserted into the link opening without electrically connecting the first and second link connection points, is drawn substantially from previous claim 3.
SUBMISSIONS
The opponent submitted that the applicant accepted in its amendment request that the proposed amendment was intended to incorporate the features of previous claims 1 and 3 in order to frame a claim it contended was novel and involved an inventive step. On the other hand, the opponent cited paragraphs [100] and [101] of the previous decision to indicate that old claim 3 was found to not have an inventive step. It thus followed that claim 1 as amended failed to overcome the previous decision.
The opponent concluded that the applicant has been unable to overcome the basis of the decision and the amendments incorporate claims which lack an inventive step. Citing Ipsen Pharma S.A.S. v Allergan, Inc (“Ipsen”), [2013] APO 50, the opponent stated the application should now be refused in its entirety.
The applicant noted that the previous decision specified two alternative options regarding the visibility of the sheath colour for the construction of previous claim 1. The applicant outlined previous claim 1, whilst emphasising the two options, as follows:-
“… wherein the link handle and the insulating sheath are of different colours such that the sheath colour is visible
[first option] when the removable link is inserted into the link opening in a reverse orientation with the link handle inserted in the link opening
or
[second option] when the removable link is not fully inserted into the link opening in the normal orientation.”
At [65] of the previous decision, I concluded that previous claim 1 was not novel over the Weidmuller SAKC 10/35 terminal unit where the second option applied.
The applicant’s amended claim 1, amongst other things, deleted the second option and thereby removed the SAKC terminal unit from the claim’s scope. The applicant put it that amended claim 1 excluded those devices which only satisfy the second option and was limited to those devices which satisfy the first option regarding the visibility of the sheath colour in the reverse orientation. The applicant also stated that its understanding was that I did not find that the invention of previous claim 1, when read to include only the first option, lacked novelty or an inventive step.
In respect to previous claim 3, the applicant noted that some of the wording from that claim had been incorporated into new claim 1 to further define the reverse orientation. Whilst previous claim 3 was found to not have an inventive step, the applicant argued that the amendments within claim 1, outside incorporating old claim 3 therein, amounted to a claim that overcame the findings of the previous decision. Effectively, the applicant appeared to argue that the previous combination of the sheath colour being visible when the removable link was not fully inserted into the link opening in the normal orientation (old claim 1, second option) and the removable link being insertable in a reverse orientation (old claim 3) was found to lack an inventive step. The applicant seemed to differentiate this from the combination, now claimed in claim 1, of the removable link being insertable into the link opening in a reverse orientation with the link handle inserted in the link opening, and the sheath colour being visible when the removable link is inserted into the link opening in the reverse orientation.
DISCUSSION
The findings in respect to previous claim 3 need to be seen in context. Previous claim 3 defined the features that the link handle is shaped to fit into the link opening and wherein the removable link is insertable in a reverse orientation with the link handle inserted into the link opening and without connecting the first link connection point to the second link connection point. Being appended to previous claim 1, via claim 2, this necessarily meant in this case that claim 3 qualified features of previous claim 1, at least in respect to the reverse orientation. Whilst it would be fair to say that the reasons for the lack of inventive step of previous claim 1 were not discussed in detail, for example see [94], it would nonetheless follow that the findings in respect to previous claim 3 meant that the feature of insertion of the removable link into the link opening in a reverse orientation in previous claim 1 would not have conferred an inventive step on previous claim 1.
Thus, there remains simply a question of what to make of the feature, to the claimed combination, of the sheath colour being visible when the removable link is inserted into the link opening in a reverse orientation. With reference to the physical device available in evidence, the Weidmuller removable link has a black link handle and a red insulating sheath surrounding part of the link conductor. At [100] of the previous decision, I found that, at the relevant time and in the light of other terminal units in the art, it would have been a very simple modification of the tip of the Weidmuller link handle, with no barrier crossed, to make it fit in the Weidmuller link opening in reverse orientation. If such a modification had been made, the link handle would fit in the link opening and leave the red insulating sheath clearly visible when the removable link is inserted into the link opening in a reverse orientation.
I conclude that amended claim 1 does not have an inventive step over the Weidmuller device.
Claim 2 additionally defines the feature that was previously the second option of old claim 1. I conclude that claim 2 does not have an inventive step.
New claim 3 defines the link handle being shaped to engage a wall of the link opening. A resilient projection on the link handle that engaged the wall of the link opening was the subject of previous claims 4 and 5 which were found to have an inventive step. On the other hand, new claim 3 is silent in respect to projections. This would mean an engagement with the wall with or without projections to effect the engagement is within the scope of claim 3. At [104] of the previous decision, I contrasted resilient elements against a snap-fit arrangement of the prior art. The latter arrangement is within the scope of new claim 3.
I conclude that new claim 3 does not have an inventive step.
New claims 13-17 are substantially the same as previous claims 10-14 which were found to be not novel and/or not inventive. I conclude new claims 13-17 do not have an inventive step.
New claims 21-23 define subject matter not previously claimed directly. Claim 21 defines the removable link having a longitudinal axis and a length of the insulating sheath along the longitudinal axis being approximately equal to a length of the link handle along the longitudinal axis. With the Weidmuller device, the insulating sheath is visibly shorter. Whilst approximation may be imprecise and is a relative term, I nonetheless regard the claimed arrangement as not being disclosed by the Weidmuller device. On the other hand, I regard the claimed arrangement as a modification that would have been well within the domain of the relevant person skilled in the art, with no barrier crossed, at the priority date. I conclude that claim 21 does not have an inventive step.
Claim 22 defines the removable link having a longitudinal axis and a length of the insulating sheath along the longitudinal axis being greater than a length along the longitudinal axis of the link conductor which extends from the insulating sheath. With the Weidmuller device, the insulating sheath is significantly shorter. The length of the link conductor is clearly determined by the need to electrically connect the first and second link connection points in normal operation and in the normal orientation. The length of the red insulating sheath of the Weidmuller device is not constrained by any such parameters. On the other hand, if the length of the insulating sheath were made greater than that of the link conductor extending from the sheath then the removable link would be significantly longer and thus protrude further from the terminal unit body in normal or in reverse orientations. It may also be said that such a length for the insulating sheath would be superfluous to requirements. Nonetheless it may also be said to be a mere design variation. Again, I regard this as a modification that would have been well within the domain of the relevant person skilled in the art, with no barrier crossed, at the priority date. I conclude that claim 22 does not have an inventive step.
Claim 23 defines grooves or ridges formed on side surfaces of the insulating sheath. I have insufficient basis to conclude this claim lacks an inventive step.
CONCLUSION
I have concluded that claims 1-3, 13-17, 21 and 22 do not have an inventive step.
This raises the question of whether the applicant should be given a further opportunity to amend. In the light of the Ipsen decision, the opponent stated the application should now be refused.
The delegate noted in the Ipsen decision that the applicant had already had one opportunity to amend the specification to overcome the adverse findings in that case. The delegate further stated that it was not evident that the applicant had made a genuine attempt to address those findings. Moreover, it was not clear that the applicant could propose allowable amendments to overcome the deficiencies.
In Merial Limited v Zoetis Services LLC, [2017] APO 20, the delegate indicated that the applicant had made a genuine attempt to overcome the deficiencies in that case and that there may have been subject matter in the specification that would overcome the defects. Consequently, the delegate allowed a further short period of time for the applicant to file further amendments.
The present case is somewhat similar to the Merial case. Although perhaps a little misconceived in the present case, I think the applicant has made a genuine attempt to address the findings of the previous decision. Moreover, it is clear that there is patentable subject matter in the specification. The claims in the present claim set without any identified deficiencies would appear to be a useful reference.
I will allow the applicant a further opportunity to file further amendments to overcome the present deficiencies.
M. G. Kraefft
Delegate of the Commissioner of Patents