R F Industries Pty Ltd v Mine Site Technologies Pty Ltd - [2024] APO 16

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
R F Industries Pty Ltd v Mine Site Technologies Pty Ltd [2024] APO 16
Patent Application: 2018101203

Title:Telecommunication system and method, and components therefor

Patent Applicant: Mine Site Technologies Pty Ltd

Opponent:R F Industries Pty Ltd

Delegate:Debasish Dasgupta

Decision Date: 15 April 2024

Hearing Date: Written submissions completed on 1 November 2023

Catchwords: PATENTS - opposition under section 104 – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether as a result of the amendments, the specification complies with subsections 40(2) and 40(3) – amendments are allowable – s40 issues existed at the time of certification – no award of costs – re-examination to continue

Representation: Patent attorney for the applicant: Allens Patent & Trade Mark Attorneys
Patent attorney for the opponent: Davies Collison Cave Law Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018101203

Title:Telecommunication system and method, and components therefor

Patent Applicant: Mine Site Technologies Pty Ltd
Date of Decision: 15 April 2024
DECISION

As a result of the amendment requested on 6 July 2022, the specification does not claim or disclose matter that extends beyond that disclosed at filing. Also, as a result of the amendment, the specification does not result in lack of compliance with s40(2)(a), s40(2)(aa) or s40(3).
The opposition is unsuccessful, and I allow the amendment request.
I make no award of costs.
Reconsideration should be given to grounds of invalidity in the context of re-examination.
REASONS FOR DECISION

Background

Innovation patent 2018101203 (the patent) in the name of Mine Site Technologies Pty Ltd (the patentee) was filed on 20 August 2018 as a divisional application of PCT/AU2017/051036, which subsequently entered national phase as application 2017331808.
The patent was certified on 2 April 2019 in the name of R F Industries Pty Limited (the opponent). Subsequently, the patentee filed a request under section 191A(2) for a declaration that it was an eligible person in relation to the patent and R F Industries Pty Limited was not. Following a hearing, the requested declaration was made: Mine Site Technologies Pty Ltd v R F Industries Pty Limited [2021] APO 21.
A third-party request for re-examination (first request) was received on 22 February 2021 from Davies Collison Cave Pty Ltd (DCC), consideration of which was deferred pending resolution of the section 191A matter. DCC has subsequently filed another request (second request) for re-examination on 14 December 2021 to be read in conjunction with the first request and including additional documents.
An adverse re-examination report issued on 14 February 2022, following which a request to amend the specification was filed on 12 April 2022 by the patentee. An adverse report raising the objection that the amendments were not allowable, issued on 7 June 2022, followed by further amendments proposed by the patentee on 6 July 2022. These amendments were considered by the examiner to be allowable, and to overcome outstanding objections in the re-examination process. The amendments were advertised for opposition purposes on 4 August 2022.
To be clear, the amendment request that I am considering in this decision, is the request composed of the proposed amendments filed on 12 April 2022 and 6 July 2022.
The opposition
On 4 October 2022, the opponent filed a notice of opposition under section 104. The opponent filed a statement of grounds and particulars (SGP) on 11 November 2022.[1]
[1] An extension of time under s223 of one month to file the SGP was allowed on 3 January 2023.
Two grounds of opposition to the allowance of the amendments of 6 July 2022 are identified in the SGP: lack of compliance with section 102(1) and lack of compliance with section 102(2).
The evidence in this opposition consists of a declaration by Christopher John Snell (Snell declaration) dated 21 March 2023 which was filed as evidence in support. The patentee did not file any evidence in this opposition.
This opposition was heard by way of written submissions. The opponent filed submissions in support on 1 November 2023. The patentee did not file any submissions.
The specification and the proposed amendment
The amendment proposed to the specification that is subject to the present opposition concerns only the claims. The description and drawings of the specification were already discussed by the Delegate in the previous decision, Mine Site Technologies Pty Ltd v R F Industries Pty Limited [2021] APO 21, which addressed the issue of entitlement to the invention disclosed in the specification.
I do not consider it essential to repeat the Delegate’s discussions from that decision, or to provide any further general comments on the specification at this point. If it becomes necessary for me to consider the body of the specification (e.g., for the purpose of understanding the scope of the invention as proposed to be amended), I will provide more specific analysis to the extent necessary for the purposes of my decision.
The marked-up (as filed by the patentee) claims as proposed to be amended on 6 July 2022 and 12 April 2022 respectively, and the claims as Certified are as follows:
The marked-up claims as proposed to be amended on 6 July 2022
1. A telecommunication system including:
a two-conductor cable, which is adapted to transmit a composite signal, including a data component and a power component;
a plurality of ~~electrical~~ repeater modules, each module operatively connected to the two-conductor cable, each ~~electrical~~ repeater module including a connection point, wherein the connection point is an Ethernet port; and
at least one network device connected to each connection point;
wherein, the ~~electrical~~ repeater module is configured to:
receive the composite signal from the two-conductor cable;
separate the composite signal by filtering the composite signal to extract the data component and the power component;
supply power derived from the power component through the connection point using a Power over Ethernet specification to power the network device(s) connected thereto;
transmit data derived from the data component through the connection point to the network device(s) connected thereto;
receive output data through the connection point from the network device(s) connected thereto; and
transmit the output data along the two-conductor cable,
wherein at least one of the plurality of ~~electrical~~ repeater modules includes one communication module that performs upstream communications and another communication module that performs downstream communications.
2. The telecommunication system of claim 1, wherein each ~~electrical~~ repeater module further includes data packet switching circuitry for routing frames or packets of the data and of the output data between the ~~electrical~~ repeater module and the network device(s).
3. The telecommunication system of claims 1 or 2, wherein each repeater ~~electrical~~ module is further configured to be remotely monitored.
4. The telecommunication system of any one of claims 1 to 3, wherein the repeater ~~electrical~~ module is further configured to be remotely configurable for configuring internal settings of the repeater ~~electrical~~ module.
5. The telecommunication system of any one of claims 1 to 4, wherein the data component has a frequency in the megahertz range.
The marked-up claims as proposed to be amended on 12 April 2022
1. A telecommunication system including:
a two-conductor cable, which is adapted to transmit a composite signal, including a data component and a power component;
a plurality of electrical modules, each module operatively connected to the two-conductor cable, each electrical module including a connection point, wherein the connection point is an Ethernet port; and
at least one network device connected to each connection point;
wherein, the electrical module is configured to:
receive the composite signal from the two-conductor cable;
separate the composite signal by filtering the composite signal to extract the data component and the power component;
supply power derived from the power component through the connection point using a Power over Ethernet specification to power the network device(s) connected thereto;
transmit data derived from the data component through the connection point to the network device(s) connected thereto;
receive output data through the connection point to from the network device(s) connected thereto; and
transmit the output data along the two-conductor cable,
wherein at least one of the plurality of electrical modules includes one communication module that performs upstream communications and another communication module that performs downstream communications.
2. The telecommunication system of claim 1, wherein each electrical module further includes data packet switching circuitry for routing frames or packets of the data and of the output data between the electrical module and the network device(s).
3. The ~~electrical module~~ telecommunication system of claims 1 or 2, wherein each electrical module is further configured to be remotely monitored.
4. The telecommunication system of any one of claims 1 to 3, wherein the electrical module is further configured to be remotely configurable for configuring internal settings of the electrical module.
5. The telecommunication system of any one of claims 1 to 4, wherein the data component has a frequency in the megahertz range.
The claims as Certified:
1. A telecommunication system including:
a two-conductor cable, which is adapted to transmit a composite signal, including a data component and a power component;
a plurality of electrical modules, each module operatively connected to the two-conductor cable, each electrical module including a connection point, wherein the connection point is an Ethernet port; and
at least one network device connected to each connection point;
wherein, the electrical module is configured to:
receive the composite signal from the two-conductor cable;
separate the composite signal by filtering the composite signal to extract the data component and the power component;
supply power derived from the power component through the connection point using a Power over Ethernet specification to power the network device(s) connected thereto;
transmit data derived from the data component through the connection point to the network device(s) connected thereto;
receive output data through the connection point to the network device(s) connected thereto; and
transmit output data along the two-conductor cable.
2. The telecommunication system of claim 1, wherein each electrical module further includes data packet switching circuitry for routing frames or packets of the data and of the output data between the electrical module and the network device(s).
3. The electrical module of claims 1 or 2, wherein each electrical module is further configured to be remotely monitored.
The law
Amendments to the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to the present patent as it was filed after its commencement.
The standard of proof that applies to section 104 opposition proceedings has not been explicitly stated in the Act. However, I agree with the reasoning of the Delegate in Cytec Industries Inc. v Nalco Company that “it is a logical inference that the standard required is the balance of probabilities … and it is the opponent who carries the onus of proof.”[2]
[2] [2018] APO 4 at [18].
Pursuant to section 104(5), the Commissioner must not allow an amendment that is not allowable under section 102. Subsections 102(1) and (2) of the Act as these apply to the present patent are as follows:
(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).
The relevant time for the purpose of section 102(2)(a) is after the patent has been certified (section 102(2A)(b)).
The applicable parts of section 40 as they apply to the present opposition are set out below:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention; and …
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
Grounds and particulars of the 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)).
The opponent also puts forward the case that, as a result of the amendment, the specification would not comply with s40(2)(a) and s40(2)(aa), resulting in a specification that does not clearly and completely enough disclose the invention and a specification that does not disclose the best method known to the patentee of performing the invention. They also argue that the claims would not be supported under subsection 40(3) as a result of the amendment.
Legal principles
Subsections 102(1) and 102(2) direct attention to matters arising as a result of the amendment. Deficiencies in the specification that are merely retained following amendment are not relevant to the section 102 considerations, as noted by Bennett J in Apotex Pty Ltd v Les Laboratoires Servier (No 2):
“There may be deficiencies in the (existing) complete specification or lack of compliance with s 40 which do not fall for consideration at this time. The question is whether, as a result of the introduction of the proposed new claims, the amendments are not allowable because of the requirements of s 102.”[3]
· s102(1) – Claim or disclose matter that extends beyond that disclosed at filing
[3] [2009] FCA 1019 at [28]
Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH[4] noted the following with regard to subsection 102(1):
“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.”
[4] [2020] FCA 328 at [215]-[218]
Accordingly, the Deputy Commissioner of Patents in Permaform International Pty Ltd v CSR Building Products Limited[5] summarised the approach to be followed on this issue:
“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.”
· s40(2)(a) – The invention must be clearly and completely disclosed
[5] [2022] APO 66 at [13]
Section 40(2)(a) of the Act requires that the complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.
In CSR Building Products Ltd v United States Gypsum Company[6], the delegate formulated the following three steps:
1.   Construe the claims to determine the scope of the invention as 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.
[6] [2015] APO 72 at [95]
In Evolva SA[7], the third question was reformulated as the following two-step consideration:
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?
[7] [2017] APO 57 at [45]
The above approach has found approval with the Federal Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [8] and Cytec Industries Inc. v Nalco Company [9].
· s40(2)(aa) – The specification disclose the best method known to the applicant/patentee of performing the invention
[8] [2022] FCA 540 at [376]-[379] (not disturbed on appeal)
[9] [2021] FCA 970 at [143]-[146]
Subsection 40(2)(aa) requires that a complete specification must ‘disclose the best method known to the applicant of performing the invention’. In Firebelt Pty Ltd v Brambles Australia Ltd[10], the Full Court said:
“The requirement of s 40(2) of the Act is that the patentee is required to give the best information in his power as to how to carry out the invention. That requirement is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention offered, with reference to drawings of specific mechanisms or structures or examples of specific process conditions or chemical formulations, depending on the field of the invention and the nature of the instruction to be conveyed. It is necessary to have regard to what is the invention claimed in the petty patent.” (Emphasis in original)
[10] [2000] FCA 1689; 51 IPR 531 at [53]
In American Cyanamid Company v Ethicon Limited[11], the Court stated:
“The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”
· s40(3) – The claim(s) must be supported by matter disclosed in the specification
[11] (1979) RPC 215 at [269]
Burley J discussed the requirement of support in Merck Sharp & Dohme Corporation v Wyeth LLC[12]:
“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”.
Consideration
[12] (No 3) [2020] FCA 1477 at [546]-[547]
The nature of the amendments

The pertinent aspect of the claimed invention for the present opposition is that the claims define a telecommunication system that includes: (a) a plurality of repeater modules, and (b) wherein at least one of the plurality of repeater modules includes one communication module that performs upstream communications and another communication module that performs downstream communications.
The opponent in their submissions usefully elaborated the scope of feature (b), and I agree with their position. That is, given the use of “at least one” in the claim:
“… amended Claim 1 encompasses a telecommunications system including:
(a)   two repeater modules, one of which includes two communication modules, and one of which has no restriction on the number of communication modules; and therefore
(b)   a repeater module with an unspecified number of communication modules; and therefore
(c)   a repeater module which does not contain two communication modules.”[13]
[13] Opponent’s submissions at [16]
Essentially, the crux of the present opposition goes to whether, in the invention as described, each of the plurality (i.e., each of the at least two) of the repeater modules (i.e., not merely at least one as claimed) requires two communication modules – one communication module that performs upstream communications and another communication module that performs downstream communications. As such, it is appropriate for me to look closely at the specification to understand how the repeater modules function in this regard.
How the repeater module(s) function?
Figures 5, 10-11 and 14-16 of the specification provide various examples of functional block diagrams of a repeater module. Figure 5 is shown below:
Figure 5
As shown in figure 5, the repeater module includes two coaxial communication modules (CCM) – an upstream CCM and a downstream CCM. The specification indicates that each CCM converts data packets between Ethernet frames into a format suitable for transmission on the backbone cables. In the repeater module, one CCM performs the upstream backbone communications and the other performs the downstream backbone communications. The downstream backbone data signal is combined with power before placing the combination onto the downstream backbone cable. The specification further indicates:
“This use of two CCMs in the Repeater allows the backbone data communications to be decoded and digitally re-created through the Data Packet Switch (DPS) 305, which each
[14] Specification at [099]
CCM is connected to via an Ethernet connection. The DPS also provides packet switching to and from the network devices 110 that are connected to the external ports of the Repeater via Ethernet cables 109.”[14]
Following the above disclosures, the specification summarises the functions of the repeater module demonstrated in figure 5 as follows:
“Therefore, Figure 5 illustrates a functional block diagram of an example repeater module adapted to operatively connect to a first transmission line and to a second transmission line. The repeater module includes a power input port configured to receive an input power. The repeater module is configured to receive a composite signal from the first transmission line, the composite signal including a data component, and to separate the composite signal to extract the data component. The repeater module is further configured to decode data and recreate the data to form a recreated data component, to combine a portion, or a first portion, of the input power and the recreated data component to generate a recreated composite signal, and to transmit the recreated composite signal along the second transmission line.” [15]
[15] Specification at [0102]
I note that the other examples of repeater modules demonstrated in figures 10-11 and 14-16 are similar in their functioning as described for figure 5 in that each of the repeater modules disclosed in the specification includes two communication modules – an upstream CCM and a downstream CCM, to execute the similar functions as discussed above.
The specification also makes it clear that the repeater modules decode and retransmit data in a bidirectional manner as follows:
“… a Repeater 112 is inserted inline with the backbone cable, which: reinjects ELV power from a Power Supply Unit and digitally decodes and re-transmits the backbone data signal. The decoding and retransmission operates in a bidirectional manner so that data from the Downstream backbone cable 502 can be retransmitted along the Upstream backbone cable 501, and also data from the Upstream backbone cable 501 can be retransmitted along the Downstream backbone cable 502.”[16] [emphasis added]
[16] Specification at [050]
The specification, however, discloses various other features and functions of the repeater modules, such as:
·The repeater node enables multiple network devices to be connected into the backbone and provides the high-speed data backhaul connection for each connected network device, and optionally supplies the power to these network devices using Power over Ethernet standards. [17]
·In some examples, the repeater module injects power into both the first and second transmission lines. In some examples, the repeater module is further configured to transmit a further portion of the input power along the first transmission line. In some examples, the repeater may be further configured to combine the further portion of the input power with data (such as output data) to generate an output composite signal, and to transmit the output composite signal along the first transmission line.[18]
·In some examples, the repeater module is configured to suppress, or discard the power component.[19]
·In some examples, the repeater module further includes one or more connection points, each connection point being adapted to connect to a network device. In some examples, the repeater module is further configured to transmit data to network devices through the one or more connection points.[20]
·In other examples, the repeater may not include any connection point adapted to connect to a network device. In such examples, the repeater module would decode and recreate data (and combine the recreated data with power for transmission along a transmission line) without directly communicating with or powering any network device.[21]
[17] Specification at [051]
[18] Specification at [0104]
[19] Specification at [0105]
[20] Specification at [0108]
[21] Specification at [0109]
It is to be noted that the above various examples of alternative features and functions of the repeater modules are non-exhaustive, additional alternative features and functions are to be found in the specification as described.
However, most importantly, the specification does not disclose any alternative repeater embodiments that include a different number of communication modules. Consistent with figure 5, each of the repeater modules described in the specification requires, and includes, two communication modules – an upstream CCM and a downstream CCM – to enable the repeater module to be able to carry out its functions in the context of the present invention.
The opponent in their submissions at [19] noted the following observations made by Mr Snell in his declaration as follows:
(a) Every use of the term “repeater” in the specification is in the context of a device that decodes and recreates data, and in reference to a module that contains two communication modules, without exception.
(b) The specification does not provide a single disclosure of a repeater module having any less or more than exactly two communication modules – one for performing upstream communications and one for performing downstream communications.
(c) The specification discloses that the repeater module both receives a composite signal from a first transmission line and transmits a recreated data component down a second transmission line. In order to do this, the repeater module must include at least two communication modules – one for performing upstream communications and one for performing downstream communications.
(d) If the described repeater module included only a single communication module, it would not be capable of decoding and recreating signals between the upstream and downstream communications lines, and could therefore not function as a repeater.
(e) The specification contains six figures which are illustrative examples of repeater modules, all showing that the repeater module 112 includes a downstream coaxial communications module 505 and an upstream coaxial communications module 504.
I find the above submissions from the opponent to be consistent with my own findings of how a repeater module functions in the context of the present invention, and the requirement of each repeater module being comprised of two communication modules – one for performing upstream communications and one for performing downstream communications.
I note that the invention as described in the specification does not place any limitations on exactly how many repeater modules are to be used to implement a particular telecom network. Depending on the network requirements, I can accept that any number of repeater modules may be used.
However, irrespective of how many repeater modules are being used in the telecom network, it follows that when a repeater module is indeed used in the telecom network, each of the repeater modules would require two communication modules – one for performing upstream communications and one for performing downstream communications, to be able to perform the functions of a repeater module as described in the specification.
I also agree that the specification does not describe how to implement a repeater module with only one communication module as declared by Mr Snell:
“The specification does not describe how to implement a repeater module with only one communications module. In fact, it is impossible to construct a repeater module with a single communications module. This is because each communications module can either:
·Decode a data signal from a transmission line, for delivery to the Data Packet Switch, or
·Encode a packet from the Data Packet Switch for sending on a transmission line.
Thus, if a repeater module was attempted to be constructed with a single communications module, that device could either decode data signals from one of its transmission lines, or send data packets out one of its transmission lines. However, such a device is unable to decode a data signal from one transmission line into a data packet, and re-encode that packet for sending on a second transmission line.
In order to complete the decode operation from one transmission line and the encode operation on a second transmission line, at least two communications modules are required inside the device.”[22]
[22] Snell declaration at [35]
Thus, it is plainly clear that when the telecom network as described in the specification includes repeater modules, the description does not contemplate or teach that the invention can be performed when each of the repeater modules does not include such two communication modules – one for performing upstream communications and another for performing downstream communications.
The scope of the claimed invention as Certified
Following on from my above findings with respect to repeater modules, it is necessary for me to look at the claimed invention at certification and construe the claims to determine the full scope of the claimed invention.
Once I determine the scope of the claims as certified, I can consider whether my understanding of the repeater modules at [44] and [46] above leads to any potential adverse findings regarding the claimed invention at certification. It is the nature of the claims and their validity prior to amendment that is relevant to consideration of amendment allowability.
For reference, claim 1 as certified is as follows:
1. A telecommunication system including:
a two-conductor cable, which is adapted to transmit a composite signal, including a data component and a power component;
a plurality of electrical modules, each module operatively connected to the two-conductor cable, each electrical module including a connection point, wherein the connection point is an Ethernet port; and
at least one network device connected to each connection point;
wherein, the electrical module is configured to:
receive the composite signal from the two-conductor cable;
separate the composite signal by filtering the composite signal to extract the data component and the power component;
supply power derived from the power component through the connection point using a Power over Ethernet specification to power the network device(s) connected thereto;
transmit data derived from the data component through the connection point to the network device(s) connected thereto;
receive output data through the connection point to the network device(s) connected thereto; and
transmit output data along the two-conductor cable.
Does “repeater” module(s) fall within the scope of “electrical” module(s) of claim 1?
As it can be seen, claim 1 at certification does not explicitly refer to any repeater module(s). Instead, claim 1 defines “a plurality of electrical modules” in generic terms.
Regarding the scope of the term “electrical module”, following the rules of construction, the claims must be read for their plain meaning in as much as “...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”[23]. I note that there is neither a special technical meaning nor a dictionary principle present in the specification to displace using this rule of construction. There is no other limitation to this term, and therefore, it must include any type of module (including a repeater) having the features defined in the claim.
[23] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118]-[120]
Therefore, I find that within the scope of the plurality of electrical modules as defined in claim 1, the said electrical modules within the scope may include different types of modules such as portal modules, repeater modules, and quadports as described in the specification.
I note that the opponent’s submissions do not include any indication that contradicts the above understanding. Furthermore, I note that in this opposition the opponent is not relying on the ground of s102(2)(a) – that the amended claims of 6 July 2022 are not within the scope of claims as certified.
I also note that the patentee appears to agree with the above understanding as per the patentee’s submission below:
“As a person skilled in the art would appreciate from reading the specification as a whole, the repeater module is a narrower form of the electrical module with further features. This is why the present application outlines, for example, the telecommunication system may include 'a repeater module instead of, or in addition to, an electrical module'. Accordingly, 'statements [in regard to the electrical module] may apply analogously to a repeater module”.[24] [emphasis added]
[24] Patentee’s response (in page 2) dated 6 July 2022 in reply to the re-examination report dated 7 June 2022.
Therefore, I conclude that repeater modules fall within the scope of “a plurality of electrical modules” as defined in the claims as certified.
In summary, I consider that:
(1) repeater module(s) fall within the scope of “a plurality of electrical modules” as defined in the claimed invention as certified, and
(2) when a repeater module is used in the telecom network as described in the specification, each of the repeater modules would essentially require two communication modules – one for performing upstream communications and one for performing downstream communications, to be able to perform the functions of a repeater module as described in the specification.
Consequently, it is clear that claim 1 at certification omitted the essential feature that when one or more of the plurality of electrical modules is a repeater module(s), each of the repeater modules includes two communication modules as identified above.
s102(1) – Claim or disclose matter that extends beyond that disclosed at filing
Under s102(1), the clause “as a result of the amendment” prescribes that a proposed amendment is not allowable where that amendment introduces claimed or disclosed matter that extends beyond that disclosed at filing. In accordance with this requirement, it is the case that an amendment that does not claim new matter is therefore allowable under this provision. Importantly, to avoid a failure under this provision, in the words of Beach J identified above, the matter added by amendment must be clearly and unambiguously disclosed in the application as filed.
As identified at [30] above, the pertinent aspect of the claimed invention for the present opposition is that the claims define a telecommunication system that includes: (a) a plurality of repeater modules, and (b) wherein at least one of the plurality of repeater modules includes one communication module that performs upstream communications and another communication module that performs downstream communications.
Regarding (a), I have found that a plurality of repeater modules falls within the scope of a plurality of electrical modules defined in the claims before amendment. Furthermore, a plurality of such repeater modules are clearly disclosed in the specification as originally filed.
Regarding (b), as identified above, this is an essential feature of a repeater module in the context of the present invention as described in the specification. While feature (b) defines that only one (i.e., at least one) of the plurality of repeater modules include such feature, I have found that in the invention as described, each of the repeater modules would require to include one communication module that performs upstream communications and another communication module that performs downstream communications.
As such, based on my preceding analysis of the specification, the specification as filed does not disclose feature (b) insofar as not all the repeater modules include one communication module that performs upstream communications and another that performs downstream communications. This is a feature that the skilled person would not directly derive from the specification as filed and extends beyond the disclosure of the specification as filed.
However, I found above at [57] that the claims at certification did not require that each repeater module include two communication modules performing upstream and downstream communications respectively. Accordingly, the claim to matter that extends beyond the disclosure of the specification as filed is pre-existing and does not arise as a result of the amendment.
It follows that I must consider the amendment allowable under s102(1).
s102(2)(b) – Compliance with s40
The grounds of opposition under s102(2)(b) that “as a result of the amendment” the specification would not comply with s40(2)(a), s40(2)(aa) and s40(3) respectively, rely on essentially the same issue discussed above under the ground of s102(1).
s40(2)(a) – The invention must be clearly and completely disclosed
As discussed earlier under the legal principles, the relevant steps, inter alia, for consideration of this ground are: “Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims” and then ask, “Can the invention be performed across the full scope of the claims without undue experimentation?”.
Based on my finding above, the full scope of the claimed invention as proposed to be amended includes a scenario where not all of the repeater modules included in the telecom network are required to have two communication modules. However, the invention as described clearly requires that each of the repeater modules includes two communication modules – one communication module that performs upstream communications and another communication module that performs downstream communications. The evidence from the opponent supports the proposition that there is an undue burden in performing the claimed invention across its whole scope.

However, it is not necessary to make a definitive finding on this point. The question is not whether the claims are not clearly enough and completely enough disclosed in the specification as filed, but whether a defect in this regard arises as a result of the amendment. I have already concluded at [57] that the claims as certified encompassed the embodiments that are the subject of the opponent’s complaint.
It follows that the claims do not fail under s40(2)(a) as a result of the amendment. The relevant issue existed in the same manner at the time of certification.
Therefore, I must consider the amendment allowable under s102(2)(b) with respect to s40(2)(a).
s40(2)(aa) – The specification must disclose the best method known to the applicant/patentee of performing the invention
The opponent submitted the amendment is not allowable because it fails to disclose the best method known to the applicant/patentee of performing the invention under s40(2)(aa).
The opponent’s submission on this ground is essentially the same as for the other grounds that the specification does not disclose “…constructing the claimed telecommunications system with more than one repeater module, where one repeater module includes two communication modules, and another repeater module has an unspecified number of (but not two) communication modules”.[25]
[25] Opponent’s submission, at [28]
However, I cannot agree with the opponent. The specification includes significant length of disclosures about how the repeater modules work, and based on the explicit disclosures, I found that each of the repeater modules indeed requires two communication modules to carry out the functions of a repeater in the context of the present invention. There is clearly a relevant method disclosed. The onus[26] lies with the opponent to show with evidence that at the time of filing the applicant was aware of a better method than that currently disclosed. There is simply no evidence to this question provided by the opponent. Furthermore, any issue of a lack of best method in the present context would not arise as a result of the amendment. Therefore, I consider the opponent’s argument fails under this ground.
[26] F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29]
I conclude that the ground of opposition under s102(2)(b) with respect to best method is not made out.
s40(3) – The claim(s) must be supported by matter disclosed in the specification
This ground was raised in a similar vein by the opponent as was the case with the ground under s102(2)(b) with respect to s40(2)(a) discussed earlier in my decision. In that same vein I consider that the claims as certified omitted an essential feature that when one or more of the plurality of electrical modules is a repeater module(s), each of the repeater modules includes two communication modules as identified above. Such an issue appears to remain present in the current claims and cannot arise as a result of the amendment.
I conclude that the ground of opposition under s102(2)(b) with respect to support is not made out and that the amendment is allowable.
Conclusion
The amendment does not result in a claim directed to matter not originally disclosed in the specification as filed under s102(1). The amendment does not itself create an issue whereby the specification does not satisfy the requirements of clear and complete disclosure (s40(2)(a)) or best method (s40(2)(aa)), or a claim is not support (s40(3)) under s102(2)(b).
Any issues as to the failure to meet the requirements of s40(2)(a) and s40(3) appear already present in the claims prior to amendment. Reconsideration should be given to claim construction and substantive grounds in re-examination.
I allow the amendment.
Costs
The opposition to the s104 amendments is unsuccessful. The present circumstances involve re-examination proceedings and dismissal actions regarding the opposition to the present amendments. While I consider in the present circumstances that I must allow the amendment, there appears to remain significant issues regarding the claims. In this light I make no award of costs.
Debasish Dasgupta
Delegate of the Commissioner of Patents