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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2006] APO 9
Decision Date: 10 March 2006

CaseChat Overview and Summary

In the case of Rynand Pty Limited v ATF Mining Electrics Ltd, the opposition to proposed amendments to a patent application for a load control module was considered. The opposition was brought by Rynand Pty Limited against ATF Mining Electrics Ltd, the applicant. The key issue for the court was whether the proposed amendments to the patent claims were clear, fairly based on the specification, and fell within the scope of the original claims. The proposed amendments introduced new phrases such as "load protection data" and "load operating data" into claims 1 and 3 respectively.

The court found that the proposed amendments did not introduce any ambiguities or unclear terms into the claims. The phrase "load protection data" was held to be clear and fairly based as it related to the "operating envelope" of the load and not merely machine recognition data. The term "transmits" was also found to be well understood in the relevant industry and did not introduce any construction issues. Similarly, the phrase "load operating data" was deemed to be clear and fairly based, particularly in light of the deletion of the term "predetermined" from claim 3, which had previously caused some confusion.

Given that none of the grounds of opposition were successful, the court allowed the proposed amendments to proceed to allowance. Costs were awarded against the opponent, Rynand Pty Limited, as they were unsuccessful in their opposition. The decision was issued on 10 March 2006 by G.M. Cox, a Delegate of the Commissioner of Patents.

Orders