Sheiman Ultrasonic Research Foundation Pty Limited v Novapharm Research (Australia) Pty Ltd

[2007] APO 32

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application   :          No. 753817 in the name of  SHEIMAN ULTRASONIC RESEARCH FOUNDATION PTY LIMITED

Title:          A sterilisation apparatus

Action:          Opposition by NOVAPHARM RESEARCH (AUSTRALIA) PTY LTD under Section 104 of the Patents Act 1990

Decision:          Issued  20 September 2007

Abstract

The amendments that were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition.   The stated grounds of the present opposition were non-compliance with paragraph 102(2)(a) (the claims do not in substance fall within the scope of the claims before amendment) and paragraph 102(2)(b) (as a result of the amendment the complete specification does not comply with subsections 40(2) or 40(3)).

The invention relates to a sterilisation apparatus with an aerosol generator. The proposed amendments were alleged to be non-compliant with section 102 in two respects. The first of these involved the deletion of the words “to each other” from the expression “operatively coupled to each other”. This was held to be a situation where the deletion of words from a claim had no effect upon the scope of the claim.

The second item of amendment objected to by the opponent concerned a dependent claim whose scope had been changed substantially.  As it was an ordinary appended claim, that is, one which was narrower in scope than the claims to which it was appended, it was held not to contravene paragraph 102(2)(a).  Also, the argument put forward by the opponent that the new claim lacked fair basis was held to be not sustainable.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 753817, in the name of SHEIMAN ULTRASONIC RESEARCH FOUNDATION PTY LIMITED and an opposition by NOVAPHARM RESEARCH (AUSTRALIA) PTY LTD under Section 104 of the Patents Act 1990.

BACKGROUND

1. Patent Application No. 753817 in the name of Sheiman Ultrasonic Research Foundation Pty Limited (Sheiman) was advertised accepted on 31 October 2002.  The application was opposed by Novapharm Research (Australia) Pty Ltd (Novapharm).

1. In his decision on the opposition (Sheiman Ultrasonic Research Foundation Pty Limited v Novapharm Research (Australia) Pty Ltd [2005] APO 40 (issued 26 September 2005)) the delegate concluded:

   ·    Independent claims 1 and 12 are not fairly based on the specification, and lack novelty on the basis of US specifications 3481689 and 4366125;

   ·    That the difficulty arises from the interpretation to be placed on the phrases

   ·    the aerosol generator being adapted to produce said recirculatory flow [Claim 1]

   ·     said recirculatory flow being produced by the aerosol generator [Claim 12]

   ·    That the issue of lack of fair basis and lack of novelty may also apply to certain dependent claims, but that this would likely be rectified as a consequence of better elaboration of the requirements intended by the above phrases.

   ·    Claim 12 is not novel (whole of contents) based on the opponent’s application 2002302109 and related provisional application PP4273.

   ·    Claim 15 is (by concession) lacking in fair basis, and claims 17 and 18 are unclear through the nature of their dependency.

2. However, the delegate also considered that these deficiencies could be readily overcome by amendment and allowed the applicant the opportunity to amend.

1. To this end, amendments under section 104 were filed by Sheiman on 9 November 2005. These amendments were advertised accepted on 13 April 2006. An opposition to these amendments was filed by Novapharm on 4 July 2006, followed by a statement of grounds and particulars on 4 October 2006. These grounds and particulars clearly travelled beyond what was appropriate in an opposition under section 104 of the Patents Act, in that one of the grounds canvassed issues of whether the amendments addressed the issues raised in the hearing officer’s decision, while some particulars of another ground raised section 40 issues which did not arise as a result of the amendment. In view of this, a delegate of the Commissioner dismissed the former ground and directed that further and better particulars be provided in respect of the latter ground. It may be interesting to note that in consequence of this the statement of grounds and particulars went from being ten pages in length to two pages, of which the substantive particulars comprised a mere half page.

1. In filing the amended statement of grounds and particulars, the opponent advised that

“In view of the restriction of the Grounds and Particulars, no evidence will be lodged at this time.”

Evidence in answer was served on 12 March 2007.   The opponent opted to not file any evidence in reply.

1. The hearing on the opposition to the amendments took place in Sydney on 18 July 2007.  The applicant was represented by Mr David Clark, patent attorney of the firm Blake Dawson Waldron, Sydney.  The opponent was represented by Katrina Howard SC, instructed by Dr Charles Tansey of the firm Shelston IP, Sydney.  The opponent provided written submissions at the hearing which were of considerable value in determining this matter.  Also in attendance was Dr Vladimir Sheiman, a principal of the applicant Sheiman Ultrasonic Research Foundation Pty Limited, who was accompanied by his son.

THE INVENTIVE CONCEPT

1. The nature of the invention may be ascertained from this passage from the decision on the substantive opposition:

“4. The invention relates to a system for sterilising goods using a nebulised sterilising agent. The invention entails the use of a chamber in which the items to be sterilised are placed, a nebuliser to create nebulised sterilising agent – with the advance being that the nebulised agent is circulated through the system as a result of how the nebulisation occurs, rather than by the use of fans or the like to generate fluid flow through the system. The specification does not indicate the size or type of the objects to be sterilised – so that while sterilisation of medical instruments would be an apparent use, the device could be built to sterilise much larger things.

5.  The bulk of the description describes the use of an ultrasonic aerosol generator apparatus. The particular apparatus is designed such that the fountain created by the ultrasonic transducer in such an apparatus passes through a tube, creating a pressure differential over the length of the tube. By having the tube pass between two chambers within the nebuliser, this pressure differential is used to circulate the nebulised material from one chamber through the sterilising chamber and then back to the other chamber in the nebuliser.

6.   However, while the description is focussed primarily on this construct, at page 11 line 25 it clearly indicates that ‘other means of nebulisation such as heating are within the ambit of the present invention’.”

THE STATEMENT OF GROUNDS AND PARTICULARS

1. Because the statement of grounds and particulars is now rather short in length, it is convenient to quote it in full.  This is even more so because included in the particulars is the wording of the claims in issue in the present matter, with proposed changes marked.

1. The statement of grounds and particulars reads:

“GROUNDS OF OPPOSITION

The request to amend the complete specification is not allowable pursuant to Section 102, paragraphs 2(a) and 2(b) of the Patents Act 1990.

The request to amend further does not overcome the objections raised in the Hearing Officer’s decision.

PARTICULARS

1. S102(2)(a) The claims do not in substance fall within the scope of the claims before amendment

The proposed amendment is not allowable because it results in claims (new claims 10 and 13) which would not in substance fall within the scope of the claims of the specification prior to amendment.

Specifically, claim 10 has been amended as below.  Underlined material shows wording added by the proposed amendment.  Struck through material shows material deleted by the proposed amendment:

12.10.  A method of sterilisation comprising the steps of:

providing a sterilisation apparatus including an aerosol generator being adapted to generate an aerosol and a sterilisation chamber operatively coupled to each otherthe aerosol generator which is external to the sterilisation chamber, the generator including an ultrasonic transducer being operatively coupled to or forming part of a reservoir, and a tube positioned adjacent the reservoir;
locating an article requiring sterilisation in the sterilisation chamber; and providing a recirculatory flow of an aerosol of the sterilising agent through the sterilisation chamber, said recirculatory flow being produced by the aerosol generator whereby in operation the recirculatory flow of the aerosol through the sterilisation chamber is effective in sterilising the article.actuating the transducer to produce a fountain of sterilising agent from the reservoir and spouting into the tube, the kinetic energy of the fountain inducing a pressure drop along the tube to propel the aerosol through the tube to produce a recirculatory flow: and providing the recirculatory flow of the aerosol of the sterilising agent through the sterilising chamber to sterilise the article.

Claim 12 (now claim 10) before amendment required that the aerosol generator and sterilization chamber were ‘operatively coupled to each other’.  The claim now only requires ‘a sterilisation chamber operatively coupled to the aerosol generator’.  There is now no requirement in the claim that the aerosol generator is operatively coupled to the sterilisation chamber.

Claim 13 has been amended as below.  Underlined material shows wording added by the proposed amendment.  Struck through material shows material deleted by the proposed amendment:

16.13.  A sterilisation apparatus according to any one of claims 1 to 119 further comprising a switching device being designed to activate an ultrasonic generator upon detection of a low level of liquid within a reservoir, the switching device comprisinga cavitation signal detector operatively coupled to the ultrasonic generator which is electrically coupled to the ultrasonic transducer located adjacent or defining the reservoir, the cavitation signal detector being configured to deactivate the ultrasound generator upon detection up tobelow a threshold level of cavitation wherein there is insufficient liquid within the reservoir.

The amendment to claim 13 is not allowable because the claim has been broadened by the removal of the functional limitation that the device is designed to activate an ultrasonic generator upon detection of a low level of liquid within a reservoir.  The claim is now not limited by such a functional requirement and accordingly has been broadened.

Further, a changes[sic] to a number of the remaining elements in claim 13 have shifted the scope of that claim.  The original claim required that the cavitation signal detector be configured to activate the ultrasound generator upon detection up to a threshold level of cavitation where there is sufficient liquid within the reservoir.  This has been amended by the Applicant to recite a cavitation signal being configured to deactivate the ultrasound generator below a threshold level where there is insufficient liquid within the reservoir.  The concept of positive switching on when sufficient liquid is present has been replaced with a different concept, namely switching off when the liquid is insufficient so the scope of this claim has clearly shifted.”

EVIDENCE

1. As already mentioned, the opponent has opted to not file any evidence in relation to this matter.  However, nothing of importance attaches to this, since the issues to be decided all comprise issues of construction of documents.  Issues of construction are questions of law which it is ultimately up to a court or tribunal to determine.  Expert witnesses may provide evidence as to the state of the art and the meaning of technical terms and so forth, but that is all (British Celanese Ltd. v Courtaulds Ltd., House of Lords, (1935) 52 RPC 171 at p.196). The specific issues which fall to be decided in the present matter are not overly technical in their nature, such that it is difficult to perceive expert evidence as having any significant role to play in the outcome of this opposition.

1. Sheiman however has filed evidence in answer, namely a statutory declaration by Dr Sheiman himself.  The brevity of this declaration makes it appropriate to set the relevant portion of it out in full.  It reads:

   “1.    Coupling to each other

   Novapharm:  Claim 12 (now claim 10) before amendment required that the aerosol generator and sterilization chamber were ‘operatively coupled to each other’.  The claim now only requires ‘a sterilization chamber operatively coupled to the aerosol generator’.  There is now no requirement in the claim that the aerosol generator is operatively coupled to the sterilization chamber.

   [Sheiman]:   No, that is not true.  Linguistically, I used the verb ‘to couple’ in its intransitive form (with the preposition ‘to’).  I believe its meaning is explicitly non-directional (unlike e.g. the transitive verbs such as: to grasp, hold, catch, teach, etc).  Therefore, the phrase ‘A coupled to B’ is logically equivalent to ‘B coupled to A’, and to ‘A and B coupled to each other’ (as was before the amendment).  I believe the amended wording does not change the original meaning in any way.  However, it is now simpler and clearer in our opinion, and avoids the tautology (’to each other’).

   See e.g. the Merriam-Webster Online dictionary
               Entry:  ²couple, Function:  verb

   1.   to connect for consideration together, to join for combined effect

   2.   to fasten together:  LINK

   2.   Automatic Switch-off

Novapharm: The amendment to claim 13 is not allowable because the claim has been broadened by the removal of the functional limitation that the device is designed to activate an ultrasonic generator upon detection of a low level of liquid within a reservoir.  The claim is now not limited by such a functional requirement and accordingly has been broadened.

[Sheiman]:  No, this is not true because:

1.   The claim’s original wording does not and cannot carry out any function!  Due to editing errors it had lost any meaning:  cavitation signal cannot occur before the generator is switched on!

2.   The wording was meant to be ‘detector configured to keep the generator activated’.  This meaning is also quite clearly stated in the description of the claim.  Thus the amended wording is fairly based on the Description and reflects the rationale of the claim:  the detector keeps the generator activated when cavitation signal is above a threshold, and deactivates it otherwise.

3.   This amendment is not a result of the assessment by the Hearing Officer or the Opponent.  The typo was discovered by [Sheiman] itself after the Hearing.  I saw it as my obligation to bring the parties’ attention to the matter, and to make the amendment.

4.   In accordance with the law I aim to present to IPAustralia only the correct information, to the best of my knowledge.  Nonetheless, mistakes do happen, and the law takes care of that by enabling and requiring of us to correct any bona fide errors ASAP, when found.  The removal of mistakes inevitably broadens the meaning from 0 to 100% (from nonsense to the perfect sense).  The opponent may not like it, but that is what I am obliged to have done by the Australian Patent Law.”

THE HEARING AND SUBMISSIONS

1. Contrary to the statement of grounds and particulars, which only cited paragraphs 2(a) and 2(b) of section 102 as grounds of opposition, the opponent’s submissions ranged over all the provisions in section 102. However, in the final analysis, as shall become apparent, the applicant did not suffer any significant detriment due to this.

1. The opponent’s case in relation to new claim 10 rested upon the premise that the feature of one device being “operatively coupled to” another was broader in scope than the feature of the devices being “operatively coupled to each other”.  In postulating this, the opponent focussed upon the term “operatively” and relied upon the different ways the sterilisation chamber and the aerosol generator were described in the specification as operating upon each other.  Certain scenarios were put forward as being encompassed by the new wording which were not, it was said, encompassed by the old wording.

1. The applicant’s rebuttal of this was described by Mr Clark as three-limbed.  The first limb was along the lines that, as the old wording encompassed two modes of operational coupling, and the new wording only one, then the new wording was narrower in scope and therefore permissible.  The second limb involved recourse to claim 1 of the specification as accepted, which although an apparatus claim rather than a method claim as in the case of new claim 10, it used the same phraseology as new claim 10 in respect of the operational coupling feature. The third limb was the grammatical approach taken by Dr Sheiman in his evidence in answer and was labelled by Mr Clark as the “inherency” approach.

1. The opponent’s case on new claim 13 was that new claim 13 was significantly different in scope to its predecessor (claim 16), and this had been conceded by the applicant in its evidence in answer.  However, according to the opponent the applicant’s resort to there having been a clerical error or obvious mistake was not sustainable, as it had not been satisfactorily established that either of these had occurred.  The opponent contended that there was no fair basis in the specification for new claim 13, which meant that section 40, and thus subsection 102(1) and paragraph 102(2)(b) were contravened.

2. Mr Clark responded by citing Philip Morris Inc v Brown and Williamson Tobacco Corporation 29 IPR 299 in support of the applicant’s contention that there was no non-compliance with paragraph 102(2)(a) (although I understood that the opponent had lost interest in this ground at the hearing). He also disputed the opponent’s contention that new claim 13 differed in what it defined from old claim 16, or that it was lacking fair basis and was not in substance disclosed.

1. More details of what is stated in the evidence, where relevant, will be given later in the decision.

1. At the hearing, Dr Sheiman requested permission to provide a practical demonstration of his apparatus.  The opponent did not object to this (except for the obvious reservation in regard to further evidence).  Dr Sheiman proceeded with his demonstration of what I took to be the utility of his invention and, conversely, the lack of utility of the opponent’s invention of previous mention.  This demonstration was clearly without any relevance to the matter at hand, even putting aside issues such as its unsworn, non-independent nature and the fact that had it been of any potential significance it would have constituted further evidence.

THE LAW

1. The allowability of amendments is governed by section 102, which relevantly provides:

“102. (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 specification has been accepted 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).

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(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification.”

1. Subsection 40(2) requires that a complete specification describe the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention.  Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

In accordance with regulation 5.3(4), these are the only grounds on which the allowance of a proposed amendment of a complete specification may be opposed.

1. It is clear from section 102, which governs the allowability of a proposed amendment of a complete specification, that the test provided by section 102 is confined to matters which arise as a result of the amendment (see also Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Furthermore, and in accordance with regulation 5.3(4), the only ground for opposition to allowance of a proposed amendment of a complete specification is that the amendment does not comply with section 102. It therefore follows from the combined operation of these provisions that the presence of pre-existing section 102 (and, by implication, section 40) deficiencies which are unaffected by amendment is irrelevant to the present action.

1. As regards the allowability of amendments, in Ethyl Corporation’s Patent [1972] RPC 169 the court considered that corresponding provisions of the United Kingdom legislation should be construed in “a broad common sense way” and “should be given a liberal interpretation”. The liberal interpretation of subsection 102(1) has also been approved by the Full Federal Court of Australia in RGC Mineral Sands Limited v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, relying on the United Kingdom High Court decision in AMP Incorporated v Hellerman [1962] RPC 55.

1. In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (supra), the full Federal Court said that a “two stage” process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by subsection 102(1).  The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment.  Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed in order to determine whether the specification would claim matter not in substance disclosed in the specification as filed.  The court when discussing the second stage emphasised that:

“The subsection [102(1)] focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression ‘matter not in substance disclosed in the specification as filed’.  The key point to keep in mind is that the words ‘as a result of the amendment’ are not to be confused with the expression ‘after the amendment’.”

1. The issue of whether section 102 is complied with is a question of construction to be determined in each case. This is relevantly demonstrated in Kornelis’ Kunsthars Producten Industrie BV v W R Grace & Co (supra) in which the Federal Court considered the allowability under subsection 102(1) of amendments which sought to reinstate claims included in the specification at filing but subsequently deleted prior to acceptance.  Rather than simply look to these claims in isolation, Burchett J noted that:

“ s 102(1) asks whether, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed. The primary issue, therefore, is not one of construction of a claim, but of construction of the specification as filed to determine what matter is in substance disclosed in it.”

1. The test for ‘in substance disclosed’ is for all intents and purposes an equivalent consideration to that of whether matter is fairly based.  Thus I intend to apply to the ‘in substance disclosed’ consideration the same test that I would apply to that of fair basis: in essence, whether there has been a real and reasonably clear disclosure of the claimed matter, as, for example, was approved in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd  [ 2004] HCA 58 at [44-49], CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) at 279 and Leonardis, Nicola v Sartas No 1 Pty Ltd & anor [1996] 449 FCA 1.

1. In relation to paragraph 102(2)(a), it is only a requirement that the claims fall ‘in substance’ within the whole set of pre-amendment claims, per AMP Incorporated v Commissioner of Patents (1974) 3 ALR 283 at 289 in which it was stated: “as a result of the amendment, nothing should become an infringement of the patent which would not have been an infringement of the patent before the amendment”.

1. The so-called first and second stages referred to in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (supra) requires, in effect that the specification be construed, with the focus being upon those aspects of the specification which are proposed to be amended.  As observed previously, any issues concerning the construction of the specification are a matter of law and any opinion in that regard given in the evidence is not binding on the hearing officer, it being ultimately up to the tribunal to construe the specification, albeit after first instructing itself as to the technical matters involved - see Blanco White, Fifth Edition 2 - 101. Observations along similar lines were made by Hely J in the course of comprehensively surveying the law as to the construction of patent specifications in Flexible Steel Lacing Co v Beltreco Ltd 49 IPR 331 at [70-81]:

“Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning: Sartas No 1 v Koukourou at 485-486, N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 26 IPR 513 at 531-532, Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 137-138, Patent Gesellschaft AG v Saudi Livestock Transport and Trading Co (1996) 33 IPR 426 at 455.

However, the construction of the specification is for the Court, not for the expert witness.  Insofar as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the Court reads the patent in the same way: Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 697. See also Glaverbel SA v British Coal Corporation [1994] RPC 443 at 486, Sartas No 1 v Koukourou at 485-486, Patent Gesellschaft at 455.”

1. Other observations on the law on the construction of patent specifications made by Hely J in Flexible Steel Lacing Co v Beltreco Ltd of relevance to this matter are:

“73 When determining the nature and extent of the monopoly claimed, the specification must be read as a whole.  But as a whole it is made up of several parts, and those parts have different functions: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610, Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 391, 398. The claim, cast in precise language, marks out the legal limits of the monopoly granted by the patent. What is not claimed is disclaimed: Walker v Alemite Corporation (1933) 49 CLR 643 at 656, Electric & Musical Industries Ltd v Lissen Ltd (1939) 56 RPC 23 at 35 and 39. The specification describes how to carry out the process claimed and the best method known to the patentee of doing that.

74 Hence, although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim, by adding to those words glosses drawn from other parts of the specification: Welch Perrin at 610, Decor at 391, 398, Braas & Co GmbH v Humes Ltd (1993) 26 IPR 273 at 284. If a claim is clear and unambiguous, it is not to be varied, qualified or made obscure by statements found in other parts of the document. (Welch Perrin at 610, Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478-479, Electric & Musical Industries at 41, Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69, Cooper Industries Inc v Metal Manufactures Ltd (1994) 29 IPR 106 at 113, Lantech Inc v First Green Park Pty Ltd (1995) 31 IPR 327 at 333).

75 It is legitimate, however, to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims.  Where the language of the claim is “obscure or doubtful” (Martin v Scribal Pty Ltd (1954) 92 CLR 17 at 97 per Taylor J) the doubt was sometimes resolved by referring to words in the body of the document to explain it. (See Welch Perrin at 610-611, Electric & Musical Industries at 41-42, Interlego at 478-479, Decor at 400, Melbourne v Terry Fluid Controls Pty Ltd (1994) 28 IPR 302 at 308, Freeman v T J & F L Pohlner Pty Ltd (1994- 1995) 30 IPR 377 at 383-384, Sartas No 1 Pty Ltd v Koukourou & PartnersPty Ltd (1994-1995) 30 IPR 479 at 486).

76 In Decor at p 410, Sheppard J rejected the notion that the claims are first to be construed without reference to the body of the specification, and it is only if ambiguity is exposed by that process that reference to the body of the patent is permissible. In his Honour’s view, that approach ignores the “fundamental rule of construction” that the specification must be read as a whole, and the modern approach to interpretation, which requires that the context be considered in the first instance, and not merely at some later stage when ambiguity might be thought to arise. In addition, Sheppard J enunciates that “if there is disclosed in the specification an intention on the part of the draftsman that words used elsewhere are to have a particular meaning, that meaning must be given those words because the draftsman has used his own dictionary” (Sheppard J at 410-411).

77 The decision of Aickin J, in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 exemplifies that approach. Focussing on the “essence of the invention” (at 267), Aickin J proceeded to construe various terms in the claim which were in dispute. In the course of so doing, his Honour made repeated reference to the body of the specification in order to understand the context in which words had been used. His Honour did this even though the specification did not provide a “ dictionary” for such terms, and without first making a finding that any of the terms or questions were ambiguous. At 272 his Honour said:

‘This is not a case where the specification supplies its own dictionary meaning but it is legitimate to look at the specification to see whether it shows the word to have been used in some special sense. In fact it shows that it was not so used.’”

DECISION

1. The question as to whether the amendment resulting in new claim 10 is compliant with section 102 firstly requires an assessment as to the impact the deletion of the words “to each other” has upon the phrase “operatively coupled to each other”. If the answer to that question is none (the applicant’s so-called “third limb”), then the case against new claim 10 being allowable falls away.

1. The grammatical approach on this put forward by Dr Sheiman is not a valid one, in my opinion.  It appears to imply that the skilled addressee upon reading the specification would undertake an analysis of verbs occurring in the specification in order to categorise them into transitive and intransitive.  In my view, this is fanciful.

1. Nevertheless, I am disposed towards the contention by the applicant that the words “to each other” are inherent (or, in Dr Sheiman’s words, a tautology) in the phrase in which they occur, and in the context of that phrase within the claim.  The words “operatively coupled” are typical of those employed by practitioners in the field of drafting patent specifications when they wish to say very little, although in the present usage I do consider them to be qualified a little by what is defined subsequently in the claim (I will return to this shortly).

1. The verb “to couple” is a broad term suggesting, as Dr Sheiman’s dictionary extract evidences, the connecting or linking of two things.  If two things are connected or linked, it is clearly implicit that that linkage or connection is to each other.  The same holds for “coupling”, even if that coupling feature should be expressed as the coupling of one thing to another. The presence of the word “operatively” does not disturb this clear connotation.  It merely qualifies the coupling as enabling the cooperation of the two things that are coupled to each other.  When one reads further into the claim it is clear that what the operative coupling enables is recirculating flow.

1. Consequently I find that the deletion of the words “to each other” has nil effect upon the scope and meaning of what is defined by new claim 10 and therefore fulfils all the requirements of section 102 of the Patents Act.

1. Turning now to the second aspect of the amendments with which the opponent takes issue, at the hearing, Mr Clark argued that the new claim 13 defined the same invention as did its predecessor claim 16.  However, this was undermined somewhat by the evidence of his declarant Dr Sheiman.  I think Dr Sheiman and the opponent are clearly right when they say that there has been an alteration to the scope of claim 16 as a consequence of the amendment.  For example, previously claim 16 defined that the cavitation signal detector was configured to activate the ultrasound generator.  It is now silent on the cavitation signal detector activating the ultrasound generator, and has substituted a feature of the cavitation signal detector deactivating the ultrasound generator.  In fact Mr Clark attempted to use graphs to illustrate that old claim 16 and new claim 13 in effect defined identical things, but, as the opponent was quick to draw attention to, this graphical demonstration was clearly flawed in this activation-deactivation aspect, despite Mr Clark’s attempts to equate the two.

1. However, this difference in scope is not necessarily fatal for the amendment, or otherwise it would be impossible to amend claims after acceptance except in the case of a clerical error or obvious mistake. It is possible that an amendment will alter the scope of a claim yet still meet all the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act.

1. As already mentioned, the opponent did not appear to pursue its paragraph 102(2)(a) ground against new claim 13 - with good cause, it would appear.  Claim 13 is an appended claim, and if, as it appears is the case, it is a normal type of dependent claim which defines features which result in it being narrower in scope than the claims to which it is appended, then obviously it will not fail the so-called “Distiller’s Test”.  That test asks, when assessing the allowability of an amendment under paragraph 102(2)(a) whether a proposed new claim would extend the patent monopoly such that it would make something an infringement which was not an infringement prior to amendment (The Distiller Co Ltd’s Application 70 RPC 221; Voit Rubber Corp’s Application  (1965) AOJP 1752; AMP Incorporated v Commissioner of Patents (supra)).

1. In regard to this Mr Clark cited Philip Morris Inc v Brown and Williamson Tobacco Corporation (supra).  In that decision the hearing office stated:

“It is not uncommon in the drafting of patent claims for the main claim to define an invention with certain features and appended claims to define inventions with additional features which inventions still fall within the scope of the main claim.  Unless an additional feature is explicitly excluded from the main claim or is inconsistent with the invention as defined by the main claim there is no problem.”

1. It appeared from the opponent’s submissions at the hearing that the main thrust of the opponent’s case against the amendment resulting in new claim 13 was that the new claim is not fairly based on matter described in the body of the specification and thus contravenes section 40 and thus paragraph 102(2)(b).  (I think it would follow if that fair basis allegation were to have been sustained the amendment would also have fallen foul of subsection 102(1) by claiming matter not in substance disclosed in the specification as filed).

1. In my view, the paragraph at lines 14 to 24 of page 10 of the specification provides the fair basis for new claim 13.  It states:

“When liquid in the nebulisation chamber is present, cavitation occurs and the piezoceramic transducer 50 receives the cavitation signal.  The signal is passed through the filter/filters 54 and the detector 56 to the switch 58.  The switch 58 will not change the on state of the ultrasonic generator 52 and voltage is applied to the piezoceramic transducer 50.  If the liquid in the nebulisation chamber is not available, the signal of cavitation does not pass to the filter 54 and the switch 58 and hence the switch 58 turns off the ultrasonic generator 52 by the blocking signal.”

1. I found this paragraph, and more so the surrounding paragraphs, less than easy to comprehend (which may be a pointer as to how the “editing errors” that Dr Sheiman refers to in his evidence may have been made).  This may have been due to the technical nature of what was being described, but could also be attributable to the manner in which these paragraphs have been drafted.

1. Nevertheless, I am satisfied that the quoted paragraph adequately conveys the notion that the switch 58, as part of, or linked to, the cavitation signal detector, deactivates the ultrasonic generator 52 when there is insufficient liquid in the nebulisation chamber (the “reservoir” of the claim), and thus provides a fair basis for what is defined in new claim 13.

1. The opponent did not really address the issue of whether the paragraph quoted above disclosed the subject matter of new claim 13.  Dr Sheiman in a sense introduced a “red herring” into this matter in his evidence by resorting to clerical error or obvious mistake (subsection 102(3)) to substantiate the allowability of the amendment to old claim 16 when, as I have already indicated, the amendment of old claim 16 is allowable without needing to utilise subsection 102(3).

1. The upshot was that a considerable amount of effort was expended on submissions and counter-submissions on whether the amendment of old claim 16 to new claim 13 was properly the correction of an obvious mistake in accordance with the principles set down in Tee-Pak Inc’s Application [1958] RPC 396. To my mind, it is a closely run thing, since while it is fairly apparent that a mistake has been made in old claim 16 (the claim is internally inconsistent), it is questionable whether it is clear on the face of the specification that the correction of that mistake is to re-jig the claim completely to align it with the paragraph at lines 14 to 24 of page 10 of the specification. The opponent in its written submissions leaps straight from answering that question (in the negative, of course) to extending the answer to a completely different question, that of whether the amended claim is fairly based on that paragraph, as follows:

“The fact that no basis can be found for an obvious error in claim 13 likewise leads us to submit that no basis for claim 13 in its amended form can be found in the specification as filed, so accordingly the amendment to claim 13 should be refused on the basis that it contravenes section 40 as a result.”

As I have already indicated, my finding is rather to the contrary; that is, new claim 13 is, in my view, fairly based on matter described in the body of the specification.

1. The amendment to old claim 16 has however had some other adverse effects.  The deletion of the phrase “being designed to activate an ultrasonic generator upon detection of a low level of liquid within a reservoir, the switching device” has meant that there are no antecedents in new claim 13 for the references to “the ultrasonic generator” and “the reservoir”.  However, one possible reading of the claim is that these references can be taken as introducing these features into the claim, and I will adopt this approach even though it leaves the claim less clear than it possibly could be.  I note that the opponent has not taken issue with this aspect of the amendment.

1. I note also that there is no strict antecedent in new claim 13 for the term “the ultrasound generator” (emphasis added).  However, this flaw, if it be such, was present in the claim prior to amendment, and as a consequence is not available for consideration in these proceedings.

1. Consequently I find that the amendment to include new claim 13 in the specification complies with the requirements of section 102 of the Patents Act.

CONCLUSION

1. I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b), and, as a consequence, the opposition fails on all grounds relied on.  I therefore dismiss the opposition and allow the amendments.

COSTS

1. Ordinarily in proceedings such as these, costs follow the event.  There appear to be no special circumstances applying in relation to this matter which warrant varying that approach.  Therefore I award costs in accordance with Schedule 8 of the Patent Regulations against the opponent Novapharm Research (Australia) Pty Ltd.

E J Knock
Delegate of the Commissioner of Patents

20 September 2007

Patent Attorneys for the applicant:  Blake Dawson Waldron, Sydney

Patent Attorneys for the opponent:  Shelston IP, Sydney