Robert Philip Wulff v GB Design Limited
[2019] APO 4
•11 January 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Robert Philip Wulff v GB Design Limited [2019] APO 4
Patent:2004290566
Title:Umbrella
Patentee: GB Design Limited
Opponent: Robert Philip Wulff
Delegate: O L Haggar
Decision Date: 11 January 2019
Hearing Date: 13 November 2018 in Canberra
Catchwords: PATENTS – section 104 – opposition to allowance of amendments filed during re-examination – amendments found to contravene subsection 102(1) and paragraph 102(2)(b) – opposition succeeds – amendments refused – costs awarded against the patentee
Representation: Patent attorney for the patentee: Kate McHaffie of AJ Park
Patent attorney for the opponent: Robert Wulff of Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2004290566
Title:Umbrella
Patentee: GB Design Limited
Date of Decision: 11 January 2019
DECISION
The opposition succeeds. I refuse the amendments, and award costs according to Schedule 8 against GB Design Limited.
BACKGROUND
Patent 2004290566 (the patent) was granted to GB Design Limited (the patentee) on 11 February 2010. The patent was subsequently re-examined as requested by Robert Philip Wulff on 25 August 2016. Mr Wulff is a registered patent attorney with the firm Griffith Hack. To date the re-examination has progressed as follows:
14 September 2016: initial adverse re-examination report issued
14 November 2016: response filed including a first statement of proposed amendments (the first statement)
14 December 2016: subsequent adverse re-examination report issued
13 February 2017: response filed including a second statement of proposed amendments (the second statement)
15 February 2017: non-adverse re-examination report issued
The non-adverse re-examination report noted (with added emphasis) that “Your submissions and amendments, once they have been allowed, will overcome the objections that were raised in [the re-examination report of 14 December 2016]”. It is thus apparent that re-examination of the patent pursuant to the request filed by Mr Wulff on 25 August 2016 will not conclude if the amendments the subject of the first and second statements are not allowed.
Leave to amend was advertised on 2 March 2017. On 2 May 2017 Mr Wulff filed a notice of opposition to the allowance of the amendments the subject of the first and second statements. A statement of grounds and particulars (the SGP) followed on 2 June 2017.
Evidence in support was completed on 4 September 2017, evidence in answer was completed on 7 November 2017, and evidence in reply was completed on 7 December 2017.
A second request for re-examination of the patent was filed by Mr Wulff on 31 March 2017. On 11 April 2017 the parties were advised that this request would not be dealt with until the opposition under section 104 had been finalised.
On 6 March 2018 the patentee proposed a “further amendment” and asked that the opposition be stayed until the further amendment had been examined. The patentee made the same request in respect of the “alternative amendment” it proposed on 23 May 2018. On each occasion the parties were advised that the Commissioner did not intend to consider the amendment in question until either:
the amendments currently under opposition are withdrawn;
the opposition is withdrawn; or
the opposition is heard and finally determined.
In the event the parties respectively confirmed that neither the opposed amendments nor the opposition to them would be withdrawn, and the opposition was accordingly set for hearing. The hearing took place in Canberra on 13 November 2018 by video conference. The patentee was represented by Kate McHaffie assisted by Jane McHenry, and Mr Wulff represented himself with the assistance of Jennifer Wyndham-Wheeler. The inventor, Greg Reid Brebner, was also in attendance as an observer. Both parties filed written submissions prior to the hearing. Mr Wulff’s submissions essentially duplicate the SGP.
THE SPECIFICATION
The specification describes the field of the invention as relating to umbrellas, and in particular to canopy extension and tensioning mechanisms for umbrellas.
The specification begins by explaining that conventional umbrellas include a shaft to which a canopy is attached at one end and a handle is attached at the other end. The canopy is supported by a collapsible frame which, when not in use, allows itself and the canopy to be lowered into a more compact state to facilitate storage of the umbrella. The collapsible frame consists of a number of ribs evenly distributed about the shaft and pivotally connected at their inner ends to the shaft. The perimeter of the canopy is attached to the outer ends of each of the ribs. The end of each rib is generally exposed and provided with a stopper or the like. In order to assist in raising/lowering the ribs and holding them in position, each rib is often provided with a brace or strut which is pivotally connected at one of its ends to a point along the length of the rib and at its other end to a slider able to be retained in position near the canopy end of the shaft to lock the umbrella in its erected state.
A number of problems have emerged with conventional umbrella designs including the safety hazard posed by the exposed rib ends. Also the canopy may become detached from the frame in strong wind conditions while the frame has a tendency to invert, often resulting in irreparable damage to the umbrella frame and/or canopy.
Another problem is that the canopy material is not optimally tensioned. This is because when erecting an umbrella having a conventional frame design, the vertical force exerted by the user on the slider (either manually or spring assisted) is converted to compressive forces acting on the struts which in turn inefficiently convert the vertical force into a radially outwardly directed canopy tension. As a result, resistance to movement becomes increasingly apparent at the end of travel of the slider along the shaft despite the decreasing rate of change of angle between the ribs and the shaft.
An object of the invention is to provide an umbrella and/or umbrella frame which will go at least some way towards addressing the above problems.
After setting out the invention in general terms, the specification provides a detailed description of the invention with reference to a series of drawings. To help understand the issues arising from the opposition, the sequence of operation of the subject umbrella as depicted in Figures 4A to 4E of the drawings will now be discussed.
The umbrella is shown in its fully collapsed state in Figure 4A. The umbrella includes a frame having a shaft 2 with a canopy (not shown) at one end of the shaft and a handle 4 at the opposite end. A washer 5 is fixed at the canopy end of the shaft. A plurality of ribs are pivotally connected to and radially spaced about washer 5. Each rib comprises an inner rod 6 extending between washer 5 and a force spreading means (“spreader”) 8 which is received within a pocket formed on the underside of the canopy.
An outer tube 7 is slidable along each inner rod 6 at or near its end furthest from shaft 2. Each outer tube 7 is provided with a coupling 10 (not labelled in Figure 4A) which pivotally receives the outer end of a primary strut 11 (not labelled in Figure 4A). The inner end of each primary strut 11 is pivotally connected to primary slider 12 which is movable along shaft 2. Movement of the primary slider up and down the shaft causes the umbrella to be erected or collapsed respectively. Primary slider 12 includes a lower user gripping portion 12A and an upper spacing portion 12B.
To improve the ease with which the umbrella may be erected, a secondary strut 13 is connected between each primary strut 11 and a secondary slider 14 (not labelled in Figure 4A) which is movable on shaft 2 between washer 5 and primary slider 12. The connection between secondary strut 13 and primary strut 11 allows relative pivotal movement between them. A biasing means such as spring 23 may be provided about the shaft between washer 5 and secondary slider 14. Spring 23 assists the user to avoid “over-shooting” by pushing the primary slider 12 too far during erection of the umbrella but also may assist in avoiding any loose movement of the sliders (that is, the spring will effectively take up any “slack” in the sliders’ movement).
In Figure 4B the primary slider 12 has been moved upwards along shaft 2 to about its mid-point, and inner rods 6/outer tubes 7 pivoted away from shaft 2 by primary struts 11. Secondary slider 14 is still some distance away from but being pushed towards washer 5 by secondary struts 13. At this point spring 23 has been slightly compressed and is therefore providing some resistance to the upward movement of secondary slider 14. Means may be provided for ensuring that the resistance provided is sufficient to temporarily halt this upward movement.
In Figure 4C the secondary slider 14 is in the same position along shaft 2 as is shown in Figure 4B. Primary slider 12 is still being moved upwards and therefore inner rods 6/outer tubes 7 are still pivoting away from shaft 2. The description of Figure 4C continues as follows:
“However, the inner ends of secondary struts 13 are now effectively fixed in position (because secondary slider 14 is temporarily “fixed”) such that the secondary struts 13 are now limited to pivotal movement about their inner ends. The outer ends of secondary struts 13 therefore act as fulcrums to a substantially mid-point of primary struts 11 such that any further upward movement of primary slider 12 causes primary struts 11 to act as levers about these fulcrum points. As a result a mechanical advantage produces a resultant radial force at the outer ends of the primary struts 11 acting along the ribs 6. This resultant force acts upon the outer tubes 7 via couplings 10.”
In Figure 4D the primary slider 12 has now moved further up shaft 2, secondary slider 14 has still not moved any further upward, inner rods 6 have pivoted further away from shaft 2 and outer tubes 7 have slid further along inner rods 6 away from shaft 2. In this state of the umbrella each spreader 8 is practically fully actuated so that the canopy will be tensioned due to the transfer of the radial force acting along outer tubes 7 to the canopy periphery.
In Figure 4E the umbrella is shown in its fully erected state. Spring 23 has been further compressed and primary slider 12 has now caught up to and moved secondary slider 14 into its final position. The umbrella may be locked in this position by conventional means which restrain downward movement of primary slider 12 until released by the user.
In the fully erected state any additional upward force on primary slider 12 is converted into tension in the canopy as spreader 8 attempts to move radially outward, effectively attempting to increase the length of the ribs. Equally, any external force such as a gust of wind acting beneath the canopy will find it difficult to invert the umbrella because to do so would require primary struts 11 to rotate or move upwards which movement is resisted by secondary struts 13. In this position the periphery of the canopy is tightened radially thereby increasing the strength of the umbrella structure. Furthermore, because outer tubes 7 are in compression they are less likely to buckle sideways which is required for the structure to invert.
THE OPPOSITION
Grounds of opposition
The specification as proposed to be amended by the combination of the first and second statements ends with forty-nine claims. Mr Wulff has not raised any objections concerning proposed claims 1 to 26, but contends that the amendments proposed in respect of independent claims 27, 40 and 49 and their dependent claims contravene subsection 102(1) and paragraph 102(2)(b) as it relates to the clarity and fair basis requirements of subsection 40(3).
The evidence
The evidence in support consists of a first declaration made by Timothy Daniel Phillips on 4 September 2017 (Phillips #1) with Exhibits TDP-1 to TDP-5. The evidence in answer consists of a declaration made by Raymond Lindsay Hope on 6 November 2017 (Hope) with Annexures RH-1 to RH-5. The evidence in reply consists of a second declaration made by Timothy Daniel Phillips on 6 December 2017 (Phillips #2).
Mr Phillips graduated as an industrial designer in 2001. After working for several years on the design of products for both private and commercial clients of a company he founded, Mr Phillips commenced work with a product design consultancy in 2007 as a senior industrial designer and in 2012 became its general manger having responsibility for the supervision of a team of mechanical engineers and designers. In 2014 he purchased and rebranded the product design consultancy where he remains as its Managing Director. Dr Hope holds a PhD in mechanical engineering and in 1998 joined an engineering consultancy firm as a specialist research and development engineer where he has been involved in numerous design projects in high-technology fields.
Although Mr Phillips and Dr Hope do not have specific experience with the design of umbrellas, I consider they are both suitably qualified to provide evidence for the purposes of the opposition which I will consequently refer to where appropriate in this decision.
Onus of proof
It is not disputed that in accordance with authority Mr Wulff carries the legal onus of proving his case on the balance of probabilities.[1]
[1] Dunlop Holding Ltd’s Application [1979] RPC 523 at 542-543
THE OPPOSED AMENDMENTS
As stated above, the opposition is confined to proposed independent claims 27, 40 and 49 and their dependent claims. The SGP identifies the features of the proposed claims that allegedly lead to the failure of the amendments to satisfy the requirements of section 102. These features (with original emphasis) are set out below.
Subsection 102(1)
Proposed independent claim 27:
(a)deployable force spreading means having a “deployable load-spreading surface or legs” received within the pocket means “to bear against a bearing surface on the periphery of the canopy”;
(b)a rib that “extends substantially to the deployable load-spreading surface or legs when deployed”; and
(c)the rib “comprises one or more rigid members extending through to the canopy periphery”.
Proposed independent claim 40:
(a) deployable force spreading means having a “deployable load-spreading surface or legs received within the pocket means to bear against a bearing surface on the periphery of the canopy”;
(b) “one or more rigid members comprising at least the rib arranged from the shaft to the load-spreading surface or legs”; and
(c) “at least the rib and/or at least one of the rigid members extends through the force spreader to provide vertical and/or horizontal stability in the force spreader”.
Proposed independent claim 49:
(a)deployable force spreading means comprising “a hub, a flexible loading spreading surface, and a stopper with a bore extending from the flexible load spreading surface”;
(b)“one or more rigid members arranged from the shaft to the flexible load spreading surface”; and
(c)“the one or more rigid members comprising at least the rib extending through the hub into slidable engagement with the stopper bore”.
It can be seen that feature (a) is defined by proposed claims 27, 40 and 49 in similar if not identical terms. I will refer to feature (a) as the deployable force spreading means feature. The same circumstances apply to features (b) and (c) which will be collectively referred to as the one or more rigid members feature.
The proposed dependent claims:
- Claim 30: “a plurality of rigid members arranged along the line of the rib to the canopy periphery forming the rib and optionally the force spreading means”.
- Claim 38: “wherein the first and second legs [of the force spreading means load-spreading surface] form a “V” shape”.
- Claim 39: “wherein the rib provides vertical stability to the force spreading means in the deployed state”.
- Claim 41: “at least one of the rigid members forms or is part of the force spreading means”.
- Claim 44: “one of the rigid members is a stopper”.
It is apparent from the SGP that these features are related to one or both of the deployable force spreading means feature and the one or more rigid members feature.
Paragraph 102(2)(b)
The following features are said to be unclear:
- Claims 27, 40 and 49: “one or more rigid members”.
- Claim 27: “the rib compris[ing] one or more rigid members” as compared to “one or more rigid members comprising at least the rib” in claims 40 and 49.
- Claim 30: a plurality of rigid members arranged along the line of the rib to the canopy periphery forming the rib “and optionally the force spreading means”.
- Claim 44: “a stopper with a bore on the force spreading means”.
It is again apparent from the SGP that at least some of these features are also related to one or both of the deployable force spreading means feature and the one or more rigid members feature.
LEGAL PRINCIPLES
Statutory framework
The patentee requested leave to amend after 15 April 2013, but requested examination well before that date. As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply. These include the amendment to subsection 102(1) to preclude matter disclosed or claimed by the amended specification that extends beyond that disclosed in the specification as filed. Both parties have proceeded on this footing.
The opposition is grounded on subsection 102(1) and paragraph 102(2)(b). Section 102(1) states:
“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.”
Schedule 1 of the Act defines that “claim” when used as a verb means “to claim in a claim (including a dependent claim) of a complete specification”.
Subsection 102(2) states:
“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).”
Paragraph 102(2)(A) prescribes that for the purposes of subsection 102(2), “relevant time” means after the specification has been accepted. Subsection 40(3) relevantly states that “the claim or claims must be clear … and fairly based on the matter described in the specification”.
The operation of section 102
It is clear from the language of subsection 102(1) and paragraph 102(2)(b) that an assessment of whether an amendment is allowable under either provision must take account of the consequences that would follow “as a result of the amendment”.
This assessment accordingly necessitates a comparison between the specification as it stands and how it would stand if amended as proposed. As affirmed by authority, the starting point of the comparative enquiry for the purposes of subsection 102(1) is the specification as originally filed[2], and for the purposes of paragraph 102(2)(b) is the specification as it stood immediately prior to amendment[3].
[2] RGC Mineral Sands v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; 89 FCR 458 at 466
[3] Apotex Pty Ltd v Les Laboratories Servier (No 2) [2008] FCA 1019; 79 IPR 100 at [88]
In the present case the specification as it stood immediately prior to amendment is the granted specification which, in the absence of any intervening amendment, is identical to the specification in the form it took at acceptance. With further regard to paragraph 102(2)(b), the question that arises from the comparative assessment is whether any failure to comply with subsection 40(3) would arise because of an amendment that is proposed, and did not exist beforehand. Put another way, any pre-existing deficiencies in the specification under subsection 40(3) which are unaffected by amendment are to be disregarded when undertaking the comparison required by paragraph 102(2)(b).[4]
[4] Kornelis’ Kunthars Producten Industrie BV v WR Grace & Co-Conn [1994] FCA 969 at [24]
It is also clear from authority that the question of whether matter is in substance disclosed is at least “very similar to” or has a “close relationship” with the test for fair basis[5]. The Full Court in ICIChemicals expressed the view that it would “be a rare case indeed where a claim which claims matter in substance disclosed in the specification as filed is not, equally, fairly based on the matter described in the specification (and vice versa)”. The enquiry mandated by subsection 102(1) therefore becomes whether there has been a “real and reasonably clear disclosure” of an amended claim when compared against the original disclosure[6].
[5] Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd [2000] FCA 1044 at [18], ICI Chemicals & Polymers Ltd v Lubrizol Incorporation Inc [2000] FCA 1349 (ICI Chemicals) at [118]).
[6] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 1) [2004] HCA 58 (Lockwood) at [69]
Construction of the specification
The case pressed by Mr Wulff gives rise to questions regarding the proper construction of the specification, including the claims, and the meaning to be ascribed to them. The principles of construction are well settled. Relevantly for present purposes, the words used in a claim are to be given the meaning which the person skilled in the art would attach to them, having regard to their own general knowledge and to what is disclosed in the body of the specification, that is, in the context in which they appear.[7] Furthermore, a claim is not ambiguous or lacking clarity simply because it employs imprecise language or is difficult to construe, so long as it provides:
“a workable standard suited to the intended use. The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expressions in question must be understood in a practical, common sense manner. Absurd constructions should be avoided and mere technicalities should not defeat the grant of protection” (citations omitted).[8]
[7] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118]-[120]
[8] Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; 49 IPR 331 at [81]
This involves a practical determination, rather than a strictly literal exercise, of whether the skilled person can understand what acts fall within the scope of a claim.
ALLOWABILITY UNDER SUBSECTION 102(1)
The independent claims
As said earlier, Mr Wulff has contested the proposed inclusion of both the deployable force spreading means feature and the one or more rigid members feature in independent claims 27, 40 and 49. My consideration of those grounds now follows.
The deployable force spreading means feature
Proposed claim 27
Mr Wulff has raised a number of objections to proposed claim 27 in relation to this feature. He firstly argues that the specification as filed does not expressly describe the load spreading surface of the force spreading means as “deployable”. This argument is easily countered. As in effect said by Mr Phillips, with the agreement of Dr Hope,[9] the reference in proposed claim 27 to a deployable load spreading surface is consistent with the original disclosure of a load spreading surface that is capable of transforming from an inoperative state when the umbrella is fully collapsed to an operative (i.e. deployed) state when the umbrella is fully erect.
[9] Phillips #1 at [24c] and [31]-[34]; Hope at [5.5] and Annexure RH-5 at pages 1-2
I therefore find that the objection presently under consideration is not justified.
Mr Wulff has next argued that the specification as filed does not disclose that the force spreading means has a load spreading surface or legs received within the pocket means. He submits that in using the word “or” proposed claim 27 draws a distinction between the legs and the load spreading surface which is contrary to the original disclosure of a load spreading surface that is defined by the legs.
It is helpful to refer to the force spreading means exemplified by the specification. Figure 5C shows the force spreading means during opening of the umbrella, and Figure 5E shows the force spreading means when the umbrella is fully erect.
The force spreading means includes a first leg 16 and a second leg 17 connected at a pivot region 22. The outer end of outer tube 7 (previously discussed with reference to Figures 4A to 4E) is held captive within a tube mounting hub 18 having forked legs 19 and 20 which extend to respective legs 16 and 17. Hub 18 includes a central passage through which the outer end of inner rod 6 (also previously discussed with reference to Figures 4A to 4E) extends before terminating in stopper 21. The end of inner rod 6 is preferably slidable within the stopper.
As the outer end of outer tube 7 slides along inner rod 6 during opening of the umbrella, legs 16 and 17 are splayed or spread until they form a substantially straight line or a “T” shape with outer tube 7 when the outer tube reaches the end of its travel and hub 18 contacts stopper 21. The disclosure on which Mr Wulff principally relies comes from the specification at page 16 lines 14 to 20 (with added emphasis):
“ It can also be seen that [when deployed] legs 16 and 17 of [the force spreading means] are practically fully splayed so that the canopy (not shown) will be tensioned due to the radial force acting along outer tubes 7. It will also be noted that this radial force will be transferred to the canopy periphery … along a line or load-spreading surface formed by legs 16 and 17 rather than at a point as in conventional umbrellas.”
Mr Phillips contends that this disclosure supports the view that the legs form the load spreading surface and are not separate to it.[10] Dr Hope acknowledges as much, but qualifies his evidence by stating that if in another embodiment “the force spreading means does not comprise legs, then the load spreading surface could be formed in some other way”.[11] The patentee has in similar vein contended that the original disclosure does not limit the load spreading surface to being formed by legs.[12] It is true that a specification cannot be legitimately construed as limiting the invention to preferred embodiments.[13] However, nowhere does the present specification envisage an embodiment in which the force spreading means includes legs and yet forms a load spreading surface independently of them.
[10] Phillips #1 at 35-36; Phillips #2 at 10-12
[11] Hope at [5.8]-[5.9]
[12] Specification at page 6 lines 22-26
[13] Lockwood at [69]
I therefore find that the objection presently under consideration is justified.
Mr Wulff lastly argues that the specification as filed does not disclose that the load-spreading surface or legs of the force spreading means “bears against” a bearing surface on the periphery of the canopy. He says that the original disclosure instead teaches that the force spreading means “contacts” the bearing surface. Dr Hope and Mr Phillips have not provided evidence on this issue. Nevertheless, I consider Mr Wulff’s criticism to be an example of the meticulous verbal analysis disapproved of by the authorities.[14] As previously explained with reference to Figures 5C and 5E, legs 16 and 17 of the force spreading means are aligned when outer tube 7 reaches the end of its travel and hub 18 contacts stopper 21. The specification further explains at page 15 lines 3 to12 (with added emphasis):
“Additional radial outwards movement of outer tube 7 will move the entire [force spreading means] outward with respect to inner rod 6 and shaft 2 until restrained by the canopy, thereby tensioning the canopy. In practice, legs 16 and 17 will bend in an arc or substantially “U” shape when acting to tension the canopy from within pockets 9 [formed on the periphery of the canopy] as the pockets are convex to allow tensioning force from [the force spreading means] to be smoothly applied to the canopy periphery. As previously mentioned, inner rod 6 slides within stopper 21 and it will be appreciated that in order for the stopper to be retained on the inner rod and for the spreading action illustrated in Figures 5A to 5E to occur, a force must be applied radially inwardly at pivot region 22 and this is provided by the bearing or contact surface within the canopy pockets 9.”
[14] Lockwood at [68]
To my mind the clear inference that emerges from this disclosure is that the force spreading means may equally be said to “contact” or “bear against” the periphery of the canopy.
I therefore find that the objection presently under consideration is not justified.
Proposed claim 40
Proposed claim 40 repeats proposed claim 27 in that it also speaks of deployable force spreading means having “a deployable load spreading surface or legs … to bear against a bearing surface on the periphery of the canopy”. Accordingly, my above consideration of proposed claim 27 regarding this feature likewise applies to proposed claim 40.
Proposed claim 49
Proposed claim 49 specifies that the deployable force spreading means comprises “a hub, a flexible load spreading surface, and a stopper with a bore extending from the flexible load spreading surface”. Mr Wulff has argued that the specification as filed does not disclose a load spreading surface that is flexible. I again do not have the benefit of evidence from Mr Phillips or Dr Hope. Nevertheless, Mr Wulff’s criticism is in my opinion not well-founded. The specification as filed has stated on numerous occasions that the force spreading means may be formed from a plastics material[15] which I am satisfied that, when read in conjunction with the previously discussed description of legs 16 and 17 that “bend in an arc or substantially ‘U’ shape”, constitutes a real and reasonably clear disclosure of a flexible load spreading surface.
[15] Specification at e.g. page 5 lines 14-15 and page 14 line 29
I therefore find that the objection presently under consideration is not justified.
Summary of findings
I have found that if amended as proposed to include the feature of deployable force spreading means having “a deployable load-spreading surface or legs”, claims 27 and 40 would contravene subsection 102(1).
The one or more rigid members feature
Proposed claim 27
Proposed claim 27 speaks of a rib that “comprises one or more rigid members extending through to the canopy periphery”. Mr Wulff has directed a good deal of attention to the phrase “one or more rigid members”. He argues that the specification as filed does not disclose a rib comprised of only one member, or a rib comprised of any rigid members. The patentee contends in response that Mr Wulff “misrepresents this feature of the opposed amendment by analysing it in parts, rather than considering it in its entirety.” I agree. As a matter of ordinary construction, the feature “one or more members” cannot be disassociated from the word “rigid”, and nor can the feature “one or more rigid members” be read in isolation from the phrase “extending through to the canopy periphery”.
The issues that consequently arise for determination are whether the specification as filed discloses that the rib is comprised of at least one rigid member and, if so, whether the specification as filed additionally discloses that the rigid member(s) extend(s) through to the canopy periphery.
The composition of the ribs
It is generally agreed between Mr Phillips and Dr Hope that as originally disclosed each rib comprises two members, namely, inner rod 6 and outer tube 7 (shown in Figures 5C and 5E above)[16]. I am of the same opinion.
[16] Phillips #1 at [37]; Hope at [5.11] and Annexure RH-5 at page 3
The specification states at page 11 line 3 that each rib “comprises an inner rod 6”, and at line 27 that an outer tube 7 “is provided about and slidable along each inner rod”. There is no indication here of whether outer tube 7 is part of the rib. However, after taking account of (i) the disclosure at page 4 lines 26 to 28 and page 6 lines 18 to 20 of rib members having an inner rod and an outer tube, (ii) the broader disclosure at page 7 lines 21 to 23 of rib members having a first portion and a second portion slidable relative to the first portion and (iii) the several references to “rib(s) 6/7” later in the specification,[17] I have formed the view that on balance the original disclosure is restricted to a rib having an inner rod and an outer tube. Ms McHaffie did not submit to the contrary during the hearing. I will have more to say on this shortly.
Are either of the rib members rigid?
[17] Specification at e.g. page 11 at lines 1 and 12 and page 12 line 15
The physical properties of the inner rod are discussed at page 11 lines 18 to 26:
“Each inner rod 6 may be made of a single rod or may comprise a plurality of (for example two) contiguous or abutable but separate rods in touching contact, end to end. In this way, a first inner rod having particular physical properties (such as relative inflexibility) such as a 2mm diameter steel rod can form the section of inner rod closest to the shaft but a more lightweight and flexible rod material (such as fibreglass) may form the section of inner rod furthest from the shaft where greater bending force is expected. In this way, overall weight can be reduced by selecting a material for the outer rod portion with a lower weight per unit length than the inner rod portion.”
At page 12 lines 22 to 28 the inner ends of the inner rods are said to be desirably covered with a relatively stiff tube. As further stated at page 14 lines 4 to 7:
“… inner rods 6 and outer tubes 7 may be formed from fibreglass pultrusion or folded/rolled metal. Preferably, inner rods 6 (and to a lesser extent outer tubes 7) are manufactured from a flexible or elastically bendable material to allow the canopy to assume a curved shape once erected. As previously mentioned, inner rods 6 may include a less flexible inner portion formed for example from steel rod”.
It can thus be seen that the specification as filed does not expressly describe the inner rod or the outer tube as “rigid”. This is to be contrasted with the specific reference at page 14 to other components of the umbrella that are made from a rigid plastics material.
Mr Phillips and Dr Hope have both expressed the opinion that when read in context the word “rigid” is to be understood as meaning “relatively rigid” which they say is an apt description of the originally disclosed physical properties of the inner rod and the outer tube.[18] Mr Wulff effectively rebuffed this evidence during the hearing. He submitted that although the specification as filed discloses that the inner rod may comprise a relatively inflexible portion, the ribs must nevertheless exhibit some degree of flexibility to enable the canopy to assume a curved shape once erected which is contradictory to the notion of rigidity.
[18] Phillips #1 at [40]; Hope at [5.14]-[5.15]
The patentee has not contended that the word “rigid” bears a meaning other than its ordinary meaning. The dictionary meanings of this word all reflect the central idea of the resistance of an object to deformation under an applied force. For example, the Macquarie Dictionary defines “rigid” as “stiff or unyielding; not pliant or flexible; hard”. I did not understand Mr Wulff to imply that such a meaning was to be taken literally, but in any event it is clear from authority that where a word used in a claim has no special meaning it is to be read in the light of its context, i.e., in the light of the meaning of the word as conveyed by the specification in a practical sense.[19]
[19] Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9, 144 CLR 253 per Aickin J at [44]-[45]; Martin v Scribal Pty Ltd [1954] HCA 48 per Dixon CJ at [14]
In the present case the specification as filed has indicated that the ribs primarily serve to structurally support the umbrella canopy which is clearly fundamental to conventional umbrella design.[20] The specification further indicates that inner rods 6 and outer tubes 7 are subjected to a radial force which is transferred to the force spreading means during opening of the umbrella, and that the outer tubes are placed under compression when the umbrella is fully erect. The original disclosure considered so far can in my view be reconciled with Dr Hope’s description of a rigid member as “a structural element that is stiff in at least one direction and thus capable of carrying a load in that direction”[21]. This description has not been challenged in the evidence in reply.
[20] See also the Macquarie Dictionary definition of “rib”
[21] Annexure RH-5 at pages 3-4
Dr Hope goes on to say, again unchallenged, that in engineering terms “a member is still considered rigid even if it does flex to some degree under load”. I consider the original disclosure to also be commensurate with this evidence. The specification as filed has stated that inner rod 6 and outer tube 7 may be formed from fibreglass or metal which is in itself suggestive of an element of rigidity. In one embodiment, and on which Mr Wulff relies, each rib is said to bend or flex so as to allow the erect canopy to assume a curved shape. However, even here the specification is only concerned with an outer portion of inner rod 6. It is apparent from my discussion above that, when understood in a practical sense, the remaining greater part of inner rod 6 resists deformation under the action of the forces it normally encounters in use of the umbrella. For like reasons I consider that this property is shared by outer tube 7.
I therefore find that inner rod 6 and outer tube 7 can be properly characterised as “rigid”.
Does at least one of the rigid rib members extend through to the canopy periphery?
According to Mr Wulff, the original disclosure confirms that the ribs extend to the force spreading means and not, as in conventional umbrellas, to the canopy periphery. Mr Phillips has approached this issue somewhat differently in arguing that it is the force spreading means which bears against the canopy:
“For example, the rib … is described on p14 at lines 18-26 of the original specification as filed: ‘The outer end of outer tube 7 is held captive within a tube mounting hub 18 having forked legs 19 and 20 … which pivotally connect to respective legs 16 and 17. Tube mounting hub 18 includes a central passage through which the outer end of an inner rod 6 is passed before terminating in stopper 21, the end of which is coterminous or integrally formed with the pivot region 22 between legs 16 and 17.’ The force spreading means includes the tube mounting hub 18 and the stopper 21, both of which engage the outer tube 7 and the inner rod 6 respectively. Movement of the outer tube 7 moves the entire force spreading means outward with respect to the inner rod 6 until it is restrained by the canopy to tension the canopy …” (original emphasis).[22]
[22] Phillips #1 at [42]
He also points out that:
“One of the problems the claims of the present application are seeking to solve is the exposed rib ends (in the form of a point) of conventional umbrella designs which are positioned at or about eye level of passers-by and pose a safety hazard … both concealing and blunting the exposed rib ends is achieved through providing the deployable force spreading means on the rib ends which is received within the pocket means. In seeking to solve this problem, however, this means that the rib does not extend to the canopy periphery.”[23]
[23] Phillips #2 at [20]
Dr Hope has responded to Mr Phillips’ contention that the ribs are spaced from the canopy periphery as follows:
“It can be understood from Figures 5A to 5E and from the disclosure on page 14 at lines 17-28 that the inner rod 6 extends through the force spreading means 8 and into stopper 21. The rib or a part of the rib, being inner rod 6, therefore clearly extends essentially all the way to the canopy periphery”.[24]
[24] Hope at [5.18]
Dr Hope does not explain what he means by “extends essentially all the way to the canopy periphery”, and his submission that inner rod 6 extends through the force spreading means presumably relates to tube mounting hub 18. As said on multiple occasions now, the specification as filed discloses that outer tube 7 is held captive within tube mounting hub 18 which includes a central passage through which inner rod 6 passes before terminating in stopper 21. The end of the stopper is stated to be coterminous or integrally formed with the pivot region between legs 16 and 17 which at first instance creates the impression that the inner rod extends no further than the force spreading means. This impression corresponds with several statements made in the specification as filed that each rib includes an inner rod extending between the umbrella shaft and a force spreading means.[25]
[25] Specification at e.g. page 4 lines 23-24, page 5 lines 3-4, page 6 lines 18-19 and page 11 lines 3-4
However, it must be borne in mind that the safety hazard posed by conventional umbrellas to which Mr Phillips has referred is apparently due to the extension of the ribs beyond the canopy periphery, thereby exposing their outer ends.[26] Proposed claim 27, on the other hand, speaks of ribs that extend through to the canopy periphery. Most importantly, the specification as filed states that each force spreading means is received within pocket means formed around the periphery of the canopy.[27] The pocket means is one feature of proposed claim 27. It is evident even from a casual inspection of Figures 5C and 5E that as a matter of logic the force spreading means could not possibly be received within the pocket means to the exclusion of at least stopper 21 and, consequently, the outer end of inner rod 6. Thus the clear inference that arises from the original disclosure is that inner rod 6 effectively extends through to the canopy periphery.
[26] Specification at page 1 lines 16-20
[27] Specification at e.g. page 11 lines 3-17
It is here that difficulties arise for the patentee. I have determined that the specification as filed is limited in its disclosure to a rib comprised of an inner rod and an outer tube, each of which is rigid, but only one of which (the inner rod) extends through to the canopy periphery. However, in stipulating that the rib comprises “one or more rigid members …”, proposed claim 27 provides for the extension of both the inner rod and the outer tube through to the canopy periphery and as such is inconsistent with the original disclosure.
Proposed claim 40
Proposed claim 40 speaks of “one or more rigid members comprising at least the rib arranged from the shaft to the force spreading surface or legs”. Mr Wulff has criticised this feature as an attempt to reverse the entire teaching of the original disclosure. The patentee rejects this criticism by arguing that the rib merely forms part of the “greater ‘rigid member’” of proposed claim 40 which could also include other components of the umbrella such as tube mounting hub 18 or stopper 21. I am not persuaded by this argument. As already discussed at length, the specification as filed discloses that the rib is comprised of two rigid members, one of which (inner rod 6) extends from the umbrella shaft to the force spreading means. There is no suggestion whatsoever of rigid members other than those comprising the rib that are arranged in this manner. Ms McHaffie submitted at the hearing that the word “arranged” simply meant that the other members of the “greater rigid member” were located part-way between the umbrella shaft and the force spreading means, but this submission ignores the plain language of proposed claim 40 that such members are arranged from the shaft to the force spreading surface.
I therefore find that the objection presently under consideration is justified.
Proposed claim 40 continues by specifying that “at least the rib and/or at least one of the rigid members extends through to the force spreader to provide vertical and/or horizontal stability in the force spreader”. When viewed sensibly, the expression “force spreader” is a clearly a reference to the “force spreading means” defined earlier in proposed claim 40. Nevertheless, Mr Wulff has argued that the above-mentioned functionality of the rib and/or at least one of the rigid members is not expressly disclosed by the specification as filed. Mr Phillips has adopted the same position, and adds that “nor would I consider this to be disclosed by implication”.[28] Dr Hope considers that:
“… it is clear that the rib or part of the rib (inner rod 6 and/or outer tube 7) will locate and position the force spreader relative to the rest of the umbrella, and provide stabilising forces against the canopy forces. As I state in [Annexure RH-5], the ‘rigid members’ are structural elements that are stiff in at least one direction and thus capable of carrying a load in that direction. They are not floppy like cooked spaghetti, and therefore can provide some structural stability.”[29]
[28] Phillips #1 at [49]
[29] Hope at [5.27]
While this evidence has not been contradicted in the evidence in reply, it is most noticeable that Dr Hope does not identify any rigid member (apart from the rib) that extends through to the force spreading means so as to provide, either in conjunction with or separately to the rib, stability in the force spreading means. Dr Hope has also failed to specifically comment on the requirement by proposed claim 40 that the force spreading means is stabilised vertically and/or horizontally.
The original disclosure is of no assistance to the patentee either. Nowhere does it use the word “stability”. The closest it seems to come is at page 17 lines 1 to 14 where reference is made to the “structural rigidity” of the umbrella and its ability to resist inversion by an external force such as a gust of wind, but even here these properties seem to be mainly attributable to struts 11 and 13 which, although undoubtedly rigid, do not extend through to the force spreading means. This falls well short of constituting a real and reasonably clear disclosure of the feature in dispute.
I therefore find that the objection presently under consideration is justified.
Proposed claim 49
Proposed claim 49 is similar to proposed claim 40 in its reference to “one or more rigid members arranged from the shaft to [a] flexible load spreading surface” which comprise “at least the rib” and extend “through [a] hub into slidable engagement with [a] stopper bore”. Accordingly, my above consideration of proposed claim 40 with respect to this feature likewise applies to proposed claim 49. It is worth repeating that as taught by the original disclosure, the only rigid member that extends from the umbrella shaft into engagement with stopper 21 after passing through tube mounting hub 18 is inner rod 6.
I therefore find that the objection to proposed claim 49 is justified.
Summary of findings
I have found that:
a)if amended as proposed to include the feature of a rib that comprises “one or more rigid members extending through to the canopy periphery”, claim 27 would contravene subsection 102(1);
b)if amended as proposed to include (i) the feature of “one or more rigid members comprising at least the rib arranged from the shaft to the force spreading surface or legs”, or (ii) the feature of “at least the rib and/or at least one of the rigid members extends through to the force spreader to provide vertical and/or horizontal stability in the force spreader”, claim 40 would contravene subsection 102(1); and
c)if amended as proposed to include (i) the feature of “one or more rigid members arranged from the shaft to the flexible load spreading surface”, or (ii) the feature of “the one or more rigid members comprising at least the rib extending through the hub into slidable engagement with the stopper bore”, claim 49 would contravene subsection 102(1).
The dependent claims
Proposed claim 30
Proposed claim 30 speaks of “a plurality of rigid members arranged along the line of the rib to the canopy periphery forming the rib and optionally the force spreading means”. Mr Wulff has argued that the specification as filed does not disclose a plurality of rigid members. In response the patentee points to the following disclosures of what it says are rigid members provided along the line of the rib:
inner rod 6 may comprise a plurality of separate rods arranged end-to-end;
outer tube 7 has a coupling 10 that may be formed from polycarbonate; and
the exposed inner end of inner rod 6 may be covered with a stiff tube.
I have previously determined that inner rod 6 and outer tube 7 may similarly be regarded as rigid members. However, there is no disclosure of any rigid member other than inner rod 6 “arranged along the line of the rib to the canopy periphery”. There is also no disclosure of any rigid member forming the rib “and optionally the force spreading means”.
I therefore find that the objection to proposed claim 30 is justified.
Proposed claim 38
As a consequence of its chain of dependency, proposed claim 38 requires the force spreading means of proposed claim 27 to comprise first and second legs that “form a ‘V’ shape”. Mr Wulff has argued that in accordance with the original disclosure, the legs form this shape only when the umbrella is fully collapsed. The patentee agrees, but says that “the claim is clearly not intended to cover the case where the legs can form a ‘V’ shape when in the deployed state”. However, this intention is not brought to light by the plain language of proposed claim 38 which suggests to me that the patentee is attempting to add an impermissible gloss to the claim.
I therefore find that the objection to proposed claim 38 is justified.
Proposed claim 39
Proposed claim 39 requires the rib to provide vertical stability to the force spreading means in the deployed state. Mr Wulff has argued that there is no mention in the original disclosure of the rib providing any stability to the force spreading means. The patentee submits that:
“the [specification as filed] discloses that the rib exerts force on the force spreading means for deployment of the legs of the force spreading means into a splayed or straight line or a T-shape as seen in Figure 5E. This clearly provides stability to the force spreading means subsequently allowing the tensioning force from spreader 8 to be smoothly applied to the canopy periphery.”
I am not convinced by this submission for reasons corresponding to those discussed earlier with respect to the vertical and/or horizontal stability spoken of by proposed claim 40. Furthermore, it appears from the original disclosure at page 15 lines 3 to 12 that the effect to which the patentee has referred is the product of the opposing forces exerted on the force spreading means by the rib and the canopy pocket means. In my view, this falls well short of constituting a real and reasonably clear disclosure of any relationship between the effect in question and the provision of vertical stability to the force spreading means by the rib.
I therefore find that the objection to proposed claim 39 is justified.
Proposed claims 41 and 44
These claims can be dealt with together. Proposed claim 41 requires at least one of the rigid members of proposed claim 40 to form or be part of the force spreading means, while proposed claim 44 stipulates that one of the rigid members is a stopper.
Mr Wulff has in short argued that neither claim is supported by the original disclosure. The patentee contends in response that:
“it would be understood that at least portions of the force spreading means must have some rigidity for it to transfer the force from the rib to the canopy periphery. For example stopper 21 as seen in Figures 5A to 5E must have rigidity to stop the further movement of the outer tube 7.”
100. Even if the patentee’s contention as to the rigidity of stopper 21 is accepted, the fact remains that as taught by the original disclosure the only rigid member that is arranged from the umbrella shaft to the force spreading means in accordance with proposed claim 40 is inner rod 6 which clearly does not form, and is not part of, the force spreading means.
101. I therefore find that the objections to proposed claims 41 and 44 are justified.
Summary of findings
102. I have found that if amended as proposed, claims 30, 38, 39, 41 and 44 would contravene subsection 102(1).
ALLOWABILITY UNDER PARAGRAPH 102(2)(B)
103. Mr Wulff has additionally contended that the proposed amendments do not comply with paragraph 102(2)(b) as it relates to the clarity and fair basis requirements of subsection 40(3). I now turn to consider those grounds.
Subsection 40(3): Fair Basis
104. Mr Wulff has in effect argued with respect to paragraph 102(2)(b) that any amended claim found to claim matter not in substance disclosed in the specification as filed would not, equally, be fairly based on the matter described in the specification as filed. The patentee appears to be of the same view.
105. This argument is to some extent misguided. I have previously explained that there is a distinction between the baseline disclosure against which the allowability of an amendment is to be assessed for the purposes of subsection 102(1) as compared to paragraph 102(2)(b). Put simply, any amendment made to the specification after the time of filing is to be excluded from the assessment under subsection 102(1). Conversely, the assessment under paragraph 102(2)(b) must have regard to the specification as it would stand if amended as proposed and not, as said by Mr Wulff, the specification as filed.
106. However, I note that in the present case the effect of the amendments proposed to the body of the specification would be to simply ensure that its language coincides with that of the proposed independent claims. As held in Lockwood, “ a ‘coincidence of language’ between a claim and part of the body of the specification does not establish fair basing if that part of the language of the specification does not reflect the description of the invention in the light of the specification as a whole”.[30] I have already found that many disconformities exist between the proposed claims and the specification, read as a whole. These disconformities are substantial, and as such cannot in my opinion be remedied by a mere “coincidence of language”. In these circumstances, I agree with Mr Wulff that a finding of non-compliance with the fair basis requirement encompassed by paragraph 102(2)(b) would inevitably follow from an adverse finding in respect of subsection 102(1).
[30] Lockwood at [87]
107. I therefore find that if amended as proposed, claims 27, 30, 38 to 40, 41, 44 and 49 would contravene paragraph 102(2)(b) as it relates to the fair basis requirement of subsection 40(3).
Subsection 40(3): Clarity
Proposed claims 27, 40 and 49
108. Mr Wulff has argued that these claims are unclear in defining “one or more rigid members”. On further analysis it is apparent that Mr Wulff is here relying on the same reasons advanced by him under subsection 102(1) in relation to the deployable force spreading means feature and the one or more rigid members feature. While in the main viewed favourably by me under that ground, I do not consider that any of these reasons establishes that the claims in dispute lack clarity.
109. I therefore find that this objection is not justified.
Proposed claim 27
110. Proposed claim 27 includes the feature of “the rib compris[ing] one or more rigid members”, whereas proposed claims 40 and 49 include the feature of “one or more rigid members comprising at least the rib”. Mr Wulff has argued that these claims are, as a consequence, in contradiction to one another and thus not clear. I am not persuaded by this argument. While the construction of the latter claims has presented some initial difficulty, it is evident from my consideration of them in terms of subsection 102(1) that they do not contradict proposed claim 27. As succinctly put by the patentee:
“there is no inconsistency between the rib comprising/including constituent rigid members of claim 27, and the rib forming part of a greater ‘rigid member’ of claim 40 [and claim 49].”
111. I therefore find that this objection is not justified.
Proposed claim 30
112. Proposed claim 30 includes the feature of “the plurality of rigid members arranged along the line of the rib to the canopy periphery forming the rib”, and then states that the plurality of rigid members “optionally [form] the force spreading means”. Mr Wulff has argued that it is not clear whether proposed claim 30 is limited to this optional feature. I disagree. It is well understood that as a matter of ordinary language the word “optional” is non-limiting.
113. I therefore find that this objection is not justified. I should add that although the phrase “arranged along the line of the rib … forming the rib” in proposed claim 30 is not altogether clear, I consider that any resulting element of doubt can, as permitted by authority, be resolved by recourse to the specification for clarification.
Proposed claim 44
114. Proposed claim 44 speaks of “a stopper with a bore on the force spreading means”. Mr Wulff has argued that in accordance with the original disclosure, the stopper forms part of the force spreading means and thus cannot be “on” (and impliedly distinct from) the force spreading means. The specification as filed states at page 14 lines 25 and 26 that the end of stopper 21 “is coterminous or integrally formed with the pivot region 22 between legs 16 and 17” of the force spreading means. I fail to see how in either case stopper 21 could be sensibly said to be located “on” the force spreading means. The patentee has submitted that “’[o]n’ may refer to being … integral, such as a handle on a fork”, but the analogy it thereby seeks to draw is misconceived in the context of the specification.
115. I therefore find that this objection is justified.
Summary of findings
116. I have found that if amended as proposed to include the feature of “a stopper with a bore on the force spreading means”, claim 44 would contravene paragraph 102(2(b) as it relates to the clarity requirement of subsection 40(3).
CONCLUSION
117. The amendments the subject of the first and second statements contravene subsection 102(1) and paragraph 102(2)(b), and consequently are not allowable. I accordingly refuse the amendments.
118. As foreshadowed at the commencement of this decision, this means that re-examination of the patent as requested by Mr Wulff on 25 August 2016 has not yet concluded.
COSTS
119. The opposition is successful. I can see no reason to depart from the usual practice that costs follow the event. I accordingly award costs against the patentee.
O L Haggar
Delegate of the Commissioner of Patents
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