Roads Corporation v Axent Holdings Pty Ltd
[2011] APO 43
•29 June 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Roads Corporation v Axent Holdings Pty Ltd [2011] APO 43
Patent Applications 2003252764
Title:Changing Sign System
Patentee: Axent Holdings Pty Ltd
Opponent: Roads Corporation
Delegate: Dr S. K. Aggarwal
Decision Date: 29 June 2011
Submission Filed: 31 March 2011, in Canberra
Catchwords: PATENTS – request under section 102(2)(b) of the Patents Act 1990 to disallow amendment to the specification – amended claims use the same terms as used in the accepted claims – any perceived deficiency does not arise as a result of the amendment – amendment allowed - cost in accordance with Schedule 8 awarded against the opponent.
Representation: Patent applicant: Middletons, Melbourne
Opponent:F B Rice and Co, Sydney
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2003252764
Title:Changing Sign System
Patentee: Axent Holdings Pty Ltd
Date of Decision: 29 June 2011
DECISION
I have found that the proposed amendments satisfy the requirements of subsection 102(2)(b), and consequently, the opposition fails on this ground of opposition. Thus subject to appeal, I refuse the opposition and allow the amendments.
I award costs against the opponent, Roads Corporation.
REASONS FOR DECISION
Background
Patent application 2003252764 directed to Changing Sign System was filed on 6 October 2003 by Axent Holdings Pty Ltd (“Axent”). The application claims priority from provisional application 2002951872 filed on 4 October 2002. The application proceeded to acceptance and was advertised accepted on 28 February 2008. Subsequently, a patent was granted in respect of the application which was advertised sealed on 26 June 2008.
On 25 September 2009, Axent filed a request under section 104 to amend the specification. The amendments were advertised on 12 November 2009.
A notice of opposition to the section 104 amendments was filed on 11 February 2010 by Roads Corporation (“Roads”) and a statement of grounds and particulars was served on 11 May 2010. The ground of opposition specified in the statement of grounds and particulars is that the amendments do not comply with paragraph 102(2)(b) of the Patents Act 1990.
No evidence in support, answer or reply was served by the parties.
On 5 January 2011, the Patent Office advised the parties that a delegate of the Commissioner was prepared to issue a decision on the written record if both the parties agreed. Subsequent to the parties’ agreement, a delegate of the Commissioner of Patents directed the opponent and the patentee on 15 February 2011 to provide their submissions within 2 and 4 weeks of the date of direction respectively. Furthermore, the opponent was given 5 weeks from the date of direction to provide their submissions in response to the patentee’s submissions.
Roads provided their submissions on 1 March 2011 and 31 March 2011, while Axent provided their submissions on 15 March 2011 via their respective patent attorneys.
The Particulars
The statement of grounds and particulars opposes the amendments under paragraph 102(2)(b) and asserts that claims 1, 17, 20 and 24-26 lack clarity while claims 17, 20 and 24-26 lack fair basis.
The Specification
The present invention relates to a changing sign system and in particular to a system for use as variable speed limit signs on roadways.
The Nature of Amendments
The specification before amendment included 16 claims. The amendments introduce several new claims besides altering the text of several claims. The amendments also make changes to page 3 of the description.
The particular relates to the amended claims 1, 17, 20 and 24-26. These claims read as follows:
1. A changing sign system for use as variable speed limit sign on roadways including:
a display panel;
a central numeric displaying area formed on the display panel by a plurality of light emitting structures which when activated can display a selected one of at least two possible speed limits displays, each of the at least two possible speed limits display corresponding to a respective speed limit of at least two possible speed limits, the at least two possible speed limits including a normal speed limit;
an annulus formed by a plurality of outer circles on the display panel around the central numeric displaying area by a plurality of light emitting structures;
a control means for selecting the selected speed limit display from the at least two possible speed limit displays according to an input criterion and for varying part of one or more of the display panels, the central numeric displaying area or the annulus to display the selected one of the at least two possible speed limit displays;
wherein the sign system fulfils the criteria of being a speed display sign by always showing a number in a circle of the display panel, when the system is in use, with the circle being illuminated by the light emitting structures of the annulus, while being able to indicate a selected one of the at least two possible speed limits and while simultaneously indicating a change in speed limits when a speed limit different to the normal speed limit is displayed on the a central numeric displaying area, and therefore a change in conditions, by the varying part of one or more of the display panel, the central numeric displaying area or the annulus.17. A changing sign system for use as variable speed limit sign on roadways including:
a display panel;
a central numeric displaying area formed on the display panel by a plurality of light emitting structures which when activated can display a selected one of at least two possible speed limits displays, associated with at least two possible speed limits each indicating change of conditions and which when activated can display a normal speed limit display associated a normal speed limit indicating normal conditions;
an annulus formed by a plurality of outer circles on the display panel around the central numeric displaying area by a plurality of light emitting structures;
a control means for selecting the selected speed limit display according to an input criterion and for varying part of one or more of the display panels, the central numeric displaying area or the annulus to display, when selected, the selected one of the at least two possible speed limit displays;
wherein the sign system fulfils the criteria of being a speed display sign by always showing a number in a circle on the display panel, when the system is in use, with the circle being illuminated by the light emitting structures of the annulus, while being able to indicate a selected one of the at least two possible speed limits, when selected, while simultaneously indicating a change of speed limits from the normal speed limit, and therefore a change in conditions, by the varying part of one or more of the display panel, the central numeric displaying area or the annulus.20. A changing sign system for use as variable speed limit sign on roadways including:
a display panel;
a central numeric displaying area formed on the display panel by a plurality of light emitting structures which when activated can display a selected one of a number of possible speed limits displays;
an annulus formed by a plurality of outer circles on the display panel around the central numeric displaying area by a plurality of light emitting structures;
a control means for selecting the selected speed limit display according to an input criterion and for varying part of one or more of the display panels, the central numeric displaying area or the annulus;
wherein the sign system fulfils the criteria of being a speed display sign by always showing a number in a circle on a display panel while being able to indicate a selected one of the at least two possible speed limits and while simultaneously indicating a change of speed limits, and therefore a change in conditions, by the varying of part of one or more of the display panel, the central numeric displaying area or the annulus.24. A changing sign system according to claim 23, in which, when the sign is of the approximate dimensions of 550mm x 550mm with approximately 450mm diameter annulus and approximately 200mm sized numbers, the approximate amount of the diameter of the annulus to be flashing, as a percentage of the total thickness of the annulus, is 50%.
25. A changing sign system according to claim 23, in which, when the sign is of the approximate dimensions of 750mm x 750mm with approximately 600mm diameter annulus and approximately 240mm sized numbers, the approximate amount of the diameter of the annulus to be flashing, as a percentage of the total thickness of the annulus, is between 25% and 50%.
26. A changing sign system according to claim 23, in which, when the sign is of the approximate dimensions of 1100mm x 1100mm with approximately 900mm diameter annulus and approximately 320mm sized numbers, the approximate amount of the diameter of the annulus to be flashing, as a percentage of the total thickness of the annulus, is between 20% and 40%.
I will discuss the written submissions of the parties as necessary in the reasons for my decision.
Law Relating to Allowability of Amendments
Section 102 of the Patents Act 1990 provides that
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
(2A) For the purpose of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted.
(3)This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.
Section 40 the Patents Act 1990 further provides that
(2)A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are irrelevant to the present action.
Paragraph 102(2)(b): Comply With Subsection 40(2) or (3)
Comply With Subsection 40(3): Claims must be clear
The first particular states that in amended claim 1, there is no clear antecedent for “the at least two possible speed limit displays” at line 11. In response, the patentee submitted that the above phrase has a clear antecedent at line 4 of the amended claim 1. The patentee is correct. As I can see the antecedent, there is no basis for the opponent’s argument in this matter.
The second particular states that in newly added claims 17 and 20, the expression “control means … for varying part of one or more of the display panel, the central numeric display area or the annulus” is unclear. It has been asserted that it is not clear as to how the control means can vary the display panel which is described in the specification as forming a black background without any means of varying it. In response, the patentee submitted that the above expression has been clearly stated. They argued that “a black background” is not specified in the newly added claims 17 or 20, and referring to “a black background” is to read a feature into the claims that is simply not present there.
I note that the above expression in newly added claims 17 and 20 also appears in accepted claim 1. In view of this, before taking the matter any further, I need to determine whether the clarity of the above expression is open to argument within the meaning of the section 102(2)(b) considering that any existing deficiency in the specification which is unaffected by the amendment is irrelevant to the present action.
Here, I will be guided by the office decision in Cryovac Inc. v American National Can Company [2000] APO 20, where the delegate stated:
“Just because claim 2 is a new independent claim does not mean that every term in the new claim can be reargued. Claim 2 contains the same terms used in the same way as many of the claims before amendment. It is not plausible that a term such as “comprising” which was widely and consistently used through the claims prior to amendment would suddenly change meaning in one of the claims because of the amendment and the opponent has not provided any explanation for why such a change of meaning would occur. I find this particular does not fall within the scope of section 102(2)(b) and is therefore untenable.”
It is clear from the above decision that a term which has been consistently used in the claims before and after the amendment cannot be argued within the meaning of section 102(2)(b).
After construing the claims before and after the amendment, I consider that the use of the above expression in newly added claims 17 and 20 is entirely consistent with its use in the accepted claim 1. Furthermore, there is no suggestion by the opponent that the above expression carries a different meaning in the newly added claims.
Therefore, I am of the opinion that even if it could be argued that the use of the above expression introduces some deficiency in the newly added claims 17 and 20, it does not arise as a result of the amendment. Hence, the above particular is untenable under section 102(2)(b).
The third particular states that in newly added claims 24, 25 and 26, the use of the word “approximately” renders the actual dimensions of the signs unclear and that there is no guidance as to the criticality of the dimensions, and as to what degree of deviation from the dimension would remain within the scope of the claims. In response, the patentee submitted that the newly added claims 24, 25 and 26 correspond directly with the accepted claims 11, 12 and 13 respectively. They also argued that simply because a claim contains a term such as “approximately” does not give rise to an objection of lack of clarity and that the claims 24, 25 and 26 provide a workable standard consistent with the requirements of established case law.
It is evident to me that newly added claims 24, 25 and 26 are renumbered versions of the accepted claims 11, 12 and 13 respectively and I cannot see how the word “approximately” would carry a different meaning in the renumbered claims. Therefore, I conclude that this particular is also untenable under section 102(2)(b).
Comply With Subsection 40(3): Claims must be fairly based
The fourth particular states that the newly added claims 17 and 20 lack fair basis because of the expression “a control means for selecting the selected speed limit display according to an input criteria and for a varying part of one or more of the display panel, the central numeric display area or the annulus...” as the display panel is simply described in the specification as being of unchanging background without any way of varying the display panel itself. This particular is identical to the second particular except that a lack of fair basis has been raised here.
I have already determined that the above expression has been consistently used in the claims before and after the amendment. Therefore, any deficiency due to the presence of the above expression in the claims after the amendment is pre-existing and cannot be argued in the present action. In view of this, I consider that there is no basis for the opponent’s argument in this matter.
The fifth particular is very similar to the third particular and states that in newly added claims 24, 25 and 26, the use of the word “approximately” in connection with the dimensions renders these claims lacking in fair basis. Once again, for the reasons provided in respect of the third particular, I conclude that the above particular is also untenable under section 102(2)(b).
Conclusion
I have found that the proposed amendments satisfy the requirements of subsection 102(2)(b), and consequently, the opposition fails. Thus subject to appeal, I allow the amendments.
Costs
Ordinarily in proceedings such as these, costs follow the event. There appears to be no special circumstances applying in relation to this matter which warrants varying that approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against the opponent, Roads Corporation.
Dr S. K. Aggarwal
Delegate of the Commissioner of Patents
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