Rynand Pty Limited v ATF Mining Electrics Ltd - [2006] APO 9

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 704930 in the name of ATF Mining Electrics Ltd

Title: Load Control Module

Action: Section 104 amendment and opposition thereto by Rynand Pty Limited

Decision: Issued 10 March 2006.
Abstract

None of the grounds of opposition to the s104 amendments have been successful. Claims 1 and 3 are clear and fairly based and the claims of the proposed amended specification fall within the scope of the claims before amendment. While there appeared to be a prima facie case, on analysis of the evidence presented, no issues, in fact, arose.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 704930 by ATF Mining Electrics Pty Limited and opposition to S104 proposed amendment by Rynand Pty Limited

BACKGROUND

Patent application 704930 in the name of ATF Mining Electrics Pty Ltd (herein after called ATF) was filed as a PCT application of PCT/AU94/00492 by Metal Manufacturers Limited and was accorded AU74853/94. The PCT application claimed priority from an earlier Australian provisional application number PM0808 filed on 24 August 1993. The application proceeded to acceptance and was subsequently advertised as accepted on 6 May 1999. On 6 August 1999, Bramco Electronics filed a notice of opposition and on 22 November 1999, ATF requested recordal of an assignment dated 17 June 1999 from Metal Manufacturers Limited to itself.
At the hearing of the S59 opposition, the applicant raised a preliminary issue that the opponent was not a “person” within the meaning of S59 and thus was not entitled to be heard. A decision on this point issued as ATF Mining Electrics Pty Ltd v Bramco Electronics [2003] APO 14 (28 March 2003) in which it was held that the true name of the opponent was Rynand Pty Ltd (hereinafter called Rynand).
A decision on the substantive opposition has issued as ATF Mining Electrics Pty Ltd v Bramco Electronics [2003] APO 47 (31 October 2003). In that decision, ATF was given 60 days within which to propose suitable amendments. Subsequently, a S104 request was filed on 29 December 2003 and advertised on 30 June 2004.
Rynand Pty Ltd filed a notice of opposition to the section 104 amendments on 1 September 2004. On 29 November 2004, the statement of grounds and particulars was filed. On 14 December 2004, ATF filed a request for dismissal of the opposition to the S104 amendments. A decision on the dismissal action issued as ATF Mining Electrics Pty Ltd v Rynand Pty Ltd [2005] APO 15 (1 April 2005) in which some of the particulars were directed not to be available at the hearing of the S104 opposition.
Consequently the time for serving evidence-in-support was extended to 1 July 2005. Evidence –in-answer was filed on 30 November 2005. While the opponent served notice that it would serve evidence-in-reply, it advised on 22 December 2005 that no evidence-in-reply would be filed.
The matter was set down for a hearing on 6 February 2006 in Canberra. ATF was represented by John Walsh, patent attorney of Walsh & Associates. Also in attendance was Peter Cockbain who is a director of ATF. ATF handed up submissions. The opponent neither attended nor filed submissions.
HISTORY
GROUNDS and PARTICULARS
As a result of the dismissal action noted above, the available grounds are as follows.
Ground 1
Section 104(5) - Section 102(2)(a)
A claim of the specification would not in substance fall within the scope of the claims of the specification before the amendment.
Particular 1: Section 104(5) - Section 102(2)(a)
The claims do not meet the requirements of Section 102(2)(a) as the claims of the specification would not in substance fall within the scope of the claims of the specification before the amendment.
G1P1              The new phrase “load protection data” as introduced into claim 1 is not restricted to the “operating parameters of the load” as previously stated in the claim.
G1P2              The new phrase “load protection data” as introduced into claim 1 is not restricted to “predetermined” information as previously stated in the claim.
G1P3              The new phrase “load operating data” as introduced into claim 3 is not restricted to “predetermined conditions” as previously stated in the claim.
Ground 2
Section 104(5) - Section 102(2)(b) — Section 40(3)
The proposed amendments result in the specification not complying with paragraph 40(3) of the Patents Act 1990.
Particular 2: Section 104(5) - Section 102(2)(b) — Section 40(3)
The claims do not meet the requirement of Section 40(3) since all the claims are not clear and succinct.
G2P1              The phrase “load protection data” as introduced into claim 1 is not clear.
G2P2              The phrase “load protection data” as introduced into claim 1 is not fairly based on the specification.
G2P3              The term “transmit” as introduced into claim 1 is not fairly based on the specification.
G2P4              The phrase “load operating data” as introduced into claim 3 is not clear.
G2P5              The phrase “load operating data” as introduced into claim 3 is not fairly based on the specification.
EVIDENCE
Evidence–in-support.
Gil Leishman filed a statutory declaration with exhibit GIL1 being a copy of his resume.
Robert McConnell filed a statutory declaration. This declaration was accompanied by exhibit BOBI, which was a copy of the above named Gil Leishman declaration. In his declaration, Mr McConnell simply states that he agrees with the declaration of Gil Leishman and in particular considers that the proposed wording of claim 1 “the first signal which transmits load protection data” includes machine recognition data.
Evidence-in –answer
Peter Douglas Stewartson Cockbain director of ATF Mining Electrics Pty Ltd filed a declaration dated 29 September 2005. This declaration was accompanied by exhibit PC-1 which is a copy of Mr Cockbains’s resume and exhibit PC-2 which is a copy of the specification as proposed to be amended.
S 104 AMENDMENTS
ATF proposed a number of amendments to the description and claims. Only claims 1 and 3 were proposed to be amended. These are as follows.
CLAIMS
1 A load control module for controlling switch gear which, in use, connects a power source to a remotely located electrical load, the module including: a sensor unit associated with the load for providing a first signal which transmits load protection data; [indicative of predetermined operating parameters of the load,] and a controller for receiving said first signal and for selectively providing a second signal to the switch gear to isolate the load from the power source when said load during operation does not comply with said load protection data [parameters.]
3 A load control module according to claim 1 or 2 wherein the sensor unit associated with the load periodically provides a third signal [indicative of predetermined load conditions] which transmits load operating data.
[Added text is bolded, deleted text is italicised]
OPPONENT’S CASE
As previously stated Rynand neither attended the hearing nor filed submissions. A consideration of Rynand’s evidence-in-support, specifically Gil Leishman’s with whom Robert McConnell agrees provides the material upon which I will consider Rynand’s opposition to the proposed amendments. The relevant passages from Mr Leishman’s declaration are copied below.
“Claim 1 – Load protection data
2. I can not determine what the phrase load protection data that the s 104 amendment introduces to claim 1 means.
3. The original specification offers me no assistance in understanding the phrase ‘load protection data’ as it is not used anywhere in the specification. I note that the original specification does use a range of similar terms such as “operating parameters”, “initial and normal operating parameters”, “information about the particular electrical load”, “characteristic settings ... required protection information” and “operating parameters of the load” but not the specific phrase load protection data.
4. The specification states on page 11 that the “Controller 10, either directly or indirectly through sensor unit 9, obtains sufficient information about both the initial and normal operating parameters of the load 4.” Based on this, I consider that the phrase load protection data can mean that the first signal transmits load protection data that is then used by the controller to obtain load data (initial conditions and conditions during normal operation) from another source. That means that ‘load protection data’ includes machine recognition data.
5. I understand that the term protection in the phrase ‘load protection data’ may also be concerned with data that is related to the environmental conditions that are needed to protect the load. That means that the phrase ‘load protection data’ may include parameters associated with the load’s dust load, tolerable humidity levels before being damaged or maximum ambient temperature. It could also include information such as the length of time the load could continue to operate safely while submerged.
6. The phrase ‘load protection data’ no longer includes the word “predetermined”. I consider that as the load protection data is no longer predetermined, it can be variable. Variable load protection data may include data that changes over time such as internal resistance of the load or the current operating conditions of the load.
7. Further, as claim 1 does not describe when the first signal is sent, I can not conclude that the phrase ‘load protection data’ is limited to ‘load data’ (initial conditions and conditions during operation).
Claim 3 – Transmit
8. I can not determine what the term ‘transmits’ that the s 104 amendment introduces to claim 3 means.
9. The original specification offers me no assistance in understanding the term ‘transmits’ as 1 can not find this term used in the specification.
Claim 3 - Load operating data
10. I can not determine what the phrase ‘load operating data’ that the s 104 introduces to claim 3 means.
11. The original specification offers me no assistance in understanding the phrase ‘load operating data’ as it is not used in the specification.”
DECISION
In the substantive opposition I concluded that there was a common understanding between the parties on the nature of the invention and that while it may be difficult to draft suitable amendments, I believed that it would be possible. In that decision, I concluded that both parties have an understanding that the invention related to the “‘operating envelope’ (or ‘smarts’) of the load that is uploaded at startup from the sensor to the controller” and that this was distinguishable from “mere recognition data”.
Claim 1 – Load protection data - G1P1, G1P2, G2P1, & G2P2 – Leishman paragraphs 1 to 7
The critical amendment to the claims is the replacement of the phrase “indicative of predetermined operating parameters of the load with the phrase “which transmits load protection data.” It is this phrase which occupies most of the opponent’s concern.
The opponent, in its evidence, submitted that the phrase was not clear, included machine recognition data within its scope and included data which is variable in nature. At the onset it needs to be recognised that the phrase “load protection data” is not a phrase used in the specification as filed and that a multiplicity of “similar” phrases are used in the specification. Prima facie, the opponent has raised a legitimate concern. However, in my view, the proposed amendments of the specification provide the context for this phrase and while the applicant has not amended all relevant occurrence of phrases (see for example page 6 line 30 to page 7 line 5 and page 9 lines 21 to 22 in the proposed amended specification), there is sufficient usage of the phrase in the specification for me to conclude that the phrase relates to “operating envelope” of the load.
Rynand have suggested that the phrase “load protection data” (paragraph 5 of the Leishman declaration) may relate to environmental factors which could include parameters associated with dust load, humidity, or maximum ambient temperature. While environmental factor parameters are not specifically mentioned in the specification, there would appear no logical reason for their exclusion. There is a “real and reasonably clear disclosure” of the substance of the phrase “load protection data”. Hence, I conclude that the phrase is clear and fairly based.
In relation to allegation that the phrase includes “mere machine recognition data”, I would point out what was decided in the substantive opposition.
“In summary, on analysis of the words of the claims, I have found that they include the uploading of mere machine recognition data. The invention of the application does not relate to the production of a signal that is merely “indicative” of the “predetermined operating conditions” but rather a signal that transmits the “predetermined operating conditions” to the controller. I have also found that the expression “predetermined operating conditions” is unclear, as it is uncertain whether it was “operating envelope” of the load (i.e. load data) that was uploaded to the controller at startup or mere operating data. Consequently, claim 1 lacks fair basis. As a result of this lack of clarity and fair basis, claim 1 was found to include within its scope the uploading of mere machine recognition data. All claims apart from the omnibus claim were found to be similarly deficient.” [underlining my emphasis]
The issue in not whether the claims include “mere recognition data” but whether the claims include this phrase in the alternative. Consequently, the opponent will need to demonstrate that the phrase “load protection data” can be construed to only include “mere machine recognition” data. While the opponent has referred to a specific embodiment for its conclusion that the sensor includes machine recognition data, this embodiment clearly includes the “operational envelope” data. Consequently, I am unable to agree with the opponent on this issue.
Furthermore, in relation to the phrase including “machine recognition data”, these matters did not arise as a result of the amendment. Consequently, even if the phrase included within its scope machine recognition data, this is not objectionable as the original “phrase” was found to include that data; See American National Can Company v Cryovac Inc [2000] APO 20 (9 March 2000).
Reading the phrase “load protection data” with the other changes in the claim and in light of the proposed amendments to the specification I am convinced that the phrase under dispute is clear and fairly based and does not introduce ambiguities into the construction of the specification. In particular the claim points to only one construction and to use the words of Mr Cockbain.
The term load protection data is the data transmitted from the “smart” module, installed at the remote load, to the “dumb” controller, installed in a switch box, that sets load protection values in the controller to protect the load according to the manufacturers specifications.
Thus, from my reading of the specification, the phrase “load protection data” would exclude “mere machine recognition”. Consequently, G1P1 and G2P1 and G2P2 are not made out.
The further point raised in paragraph 6 of the Leishman declaration is the whether the load data is now variable due to the absence of the qualifier “predetermined” (G1P2). It seems obvious to me that a “variable” load protection data refers to the load in use whereas “load protection data” sets up the basic parameters for the operation of the machine.
Peter Cockbain makes a similar point wherein he considered that “load protection data to mean the defined individual datum limits that are set to ensure the machine is protected in accordance with the machine manufacturers’ recommendations”. This is contrastable with a “variable load operating data” which refers to the “measurement of each of the load datum to ensure they remain within the safe limits [the protection data].” This is a sensible and logical construction and consequently, in relation to G1P2, I am unable to agree that the opponent has proved its case.
In paragraph 7 of the Leishman declaration, reference is made to whether the phrase “load protection data” is limited to “load data.” As I pointed out with respect to paragraph 4 of the Leishman declaration, this is not an issue for S104 as the original claims had this phrase and lack of clarity (if any) did not arise as a result of the amendment.
I also share Mr Cockbain comments that the “ordinary person skilled in the art knows that load protection data must be known prior to start up of the load so that there is a reference value to compare the load data (initial conditions and conditions during operation) to”. I would agree with his comments. Consequently it seems logical and sensible that “load protection data is established for safety reasons before the load /machine is allowed to start.” I thus echo Mr Cockbain’s conclusion that a person skilled in the art would know the distinction between “load data” and “load protection data.” Consequently, the use of the phrase “load protection data” is clear and fairly based. Consequently, G2P1 and G2P2 are not upheld.
Claim 1 – Transmits - G2P3 – Leishman evidence paragraphs 8 & 9
In its evidence-in-support, Rynand stated that the phrase “transmits” is not used in the specification as filed. Prima facie, the introduction of a different term would seem to suggest that a different function was intended to be defined. ATF submitted that that the term is well understood in the art and would not cause any s40 issues with the proposed amendments to the claims.
I note that the term “transmits” is used in the both of proposed amendments to claims 1 and 3. While the evidence-in-support refers only to claim 3, G2P3 relates to the usage of the term “transmits” in claim 1 and furthermore relates to an allegation of lack of fair basis not lack of clarity. It would seem that the better course is for me to consider what the opponent has put into evidence in relation to both claims rather than dismiss the ground.
Mr Cockbain submitted that Rynand seems to have no problem with this term as it is used in reference to the opponent’s comments on load protection data in respect of claim 1 (see paragraph 4 of their evidence-in-support quoted above). ATF’s submissions would indicate that no clarity / fair basis issues arose with the use of this term in claim 1. Prima facie, I would tend to agree.
In its submission, ATF also referred me to a number of passages from the description which it sought to rely upon. In these passages which are copied below, a number of terms are used – ‘sends’, convey’, ‘provided’ and ‘provides’ to describe the signal.
“sensor unit sends a serial coded message … to the controller” (at page 12 lines 11 to 14),
“if the load is an electrical motor the message can convey the power requirements of that motor as well as its starting characteristics” (at page 12 lines 15 to 17)
“If required, a reset button can be depressed and the controller will adopt the overload settings provided by sensor unit 9” (at page 13 lines 6 to 8),
“remote sensor unit which provides requested information about the load” (at page 15 lines 11 to 13). [underlining my emphasis]
In the claims, the language of use is one of providing a signal which transmits data.
In my view, the term “transmits” is a well known term used compendiously in electrical / electronics industries. In the context of the claims and specification, it seems to me that the term “transmits” merely indicates that the signal (which is provided by the sensor) carries the data to the controller. This is a meaning which is apparent from a reading of the claims and one that is consistently referenced in the description as evidenced by the above quotes. In the context of the specification, when read as a whole, the term “transmits” is synonymous in meaning with the equivalent terms “sends” or “conveys” that are used in the specification. The use of the term “transmits” in claims 1 and 3 is thus both clear and fairly based. Consequently, G2P3 is not upheld.

In summary, I have found that claim 1 is clear and fairly based and that the claims of the proposed amended specification fall within the scope of the claims before amendment.
Claim 3 - Load operating data- G1P3, G2P4 & G2P5 – Leishman paragraphs 10 & 11
As correctly put by the opponent, the phrase “load operating data” is not used in the specification as filed. Prima facie, this would indicate a change in meaning. In the proposed amendments to the specification, this phrase is only used in relation to the consistory clause and while it would have assisted me if this phrase was more widely used in the proposed amended specification, I believe that there is sufficient reference in the body of the specification for me to decide on this issue. It would have also helped if the opponent had provided more in the way of further explanation. As it currently stands, the opponent has made little progress in expanding upon this ground of opposition.
Mr Cockbain indicated that the phrase is one that a person skilled in the art would understand as information being transmitted to the controller when the load is operating. This submission appears, on the face of it, to be both sound and reasonable. While a number of other phrases are used in the specification, the delegate in his substantive decision was able to distinguish between different the types of data and concluded that both parties had a clear understanding of the difference between load protection data and load operating data. Given this background, it is unsettling to find that this issue is raised. Notwithstanding, ATF have provided numerous examples from the specification which clearly point to the “real and reasonably clear disclosure” of the matter claimed. I have satisfied myself that these references are sound and in my view put the issue beyond contention. Hence, G2P4 & G2P5 are not made out.
In relation to G1P3, the opponent has made no comment in its evidence-in-support. I note that the use of “predetermined” was an issue with the substantive opposition and given the proposed amendments to claim 1, the deletion of the phrase from claim 3 is welcome as it removes a problem with construction of the claim. Claim 3, simply stated, relates to the transmission of data relating to how the load is performing and the use of the phrase “load operating data” to refer to this function is appropriate. As ATF submitted the phrase “predetermined” related to the fact that the sensor must first determine the data before it is sent to the controller and in that sense the data is predetermined. Deleting the phrase “predetermined” and clearly defining the type of data as “load protection data” properly clarifies the scope of the claim and its appendency to claim 1. In summary, claim 3 as it now reads is both clear and fairly based. Accordingly, G1P3 has not been made out.
CONCLUSION
I have found that none of the grounds of opposition to the s104 amendments have been successful. I have found that the claims 1 and 3 are clear and fairly based and that the claims of the proposed amended specification fall within the scope of the claims before amendment. While there appeared to be a prima facie case, on analysis of the evidence presented, no issues, in fact, arose. Thus subject to appeal, I direct that the amendments which are the subject of the request dated 29 December 2003 proceed to allowance.
COSTS
Costs normally follow the event and I see no reason to depart from this in this case. Rynand has not been successful in its opposition. Consequently, I award costs against the opponent.
G.M.Cox
Delegate of the Commissioner of Patents
10 March 2006
Patent attorneys for the applicant :Walsh & Associates , Sydney
Patent attorneys for the opponent :F B Rice, Sydney