Snap-On Technologies Inc v Beissbarth GmbH

[2003] APO 29

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 677139 in the name of SNAP-ON TECHNOLOGIES INC.

Title:          Eight Sensor Wheel Aligner

Action:          Opposition by BEISSBARTH GMBH under Section 104 of the Patents Act 1990

Decision:          Issued            .

Abstract

The amendments which were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition.  This finding was being appealed to the Federal Court.  The opponent alleged that the amendments introduced matter not in substance disclosed in the specification as filed, caused the scope of the claims to fall outside the scope of the claims before amendment and did not meet the requirements of section 40.

The amendments were found to be allowable. Many of the issues raised by the opponent did not result from the amendments and/or re-opened issues that had been determined in the substantive opposition. Section 107 does not apply in the present circumstances. The remaining issues were readily resolvable as being allowable under section 102 of the Patents Act.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 677139 by Snap-On Technologies Inc., and an opposition by Beissbarth GmbH under section 104 of the Patents Act 1990.

BACKGROUND

1. Patent Application No. 677139 in the name of FMC Corporation was advertised accepted on 10 April 1997.  It was subsequently assigned to the present applicant Snap-On Technologies Inc.  The application was opposed by Beissbarth GmbH.  On 17 May 2001 I issued a decision on this opposition (Beissbarth GmbH v Snap-on Technologies Inc. [2001] APO 20, referred to hereinafter as "the substantive opposition") in which I found that there were valid objections to the specification under section 40 (in particular, in respect of fair basis), subparagraph 18(1)(b)(i) (novelty) and subparagraph 18(1)(b)(ii) (inventive step), and allowed the applicant the opportunity to amend. On 6 June 2001 the applicant filed an appeal (No. V638 of 2001) against this decision in the Victorian District Registry of the Federal Court.

1. On 16 July 2001 the applicant filed section 104 amendments to the specification, and leave to amend was granted on 15 November 2001. Beissbarth GmbH filed a notice of opposition to these amendments on 6 March 2002, and served its Statement of Grounds and Particulars on
   6 August 2002 after having been granted an extension of time in which to do so.  No evidence has been served in relation to this opposition.

1. On 20 June 2002 the opponent requested the Commissioner's exercise of her discretionary powers under regulation 5.10(1)(a) to stay the opposition proceedings because of the Federal Court action and negotiations which were proceeding between the parties.  In a letter dated
   9 July 2002 the opponent was advised that the Commissioner was prepared to consider some deferral of proceedings on account of the Federal Court action but not on account of the negotiations, but noted that the timing of the deferral was not clear from the proposed direction set out in the request. The opponent seems not to have pursued this request for a deferral of proceedings any further until being advised on 30 June 2003 that a hearing of the section 104 opposition had been set for 8 July 2003, whereupon the opponent asked for a stay of the hearing for 3 months "or such shorter time as the Commissioner considers reasonable." The applicant stated its non-consent to this stay of proceedings, and the opponent was advised that because of that the Commissioner would proceed with the hearing on 8 July 2003.

1. The hearing on the present matter duly took place in Canberra on the appointed day.  The applicant was represented by Mr Roger Green, patent attorney of Freehills Carter Smith Beadle, Melbourne.  The opponent was represented by Mr Stephen Krouzecky, patent attorney of Wray & Associates, Perth.  Mr Krouzecky appeared by phone.

THE INVENTION

1. In my decision on the substantive opposition, I set forth my understanding of the invention described by the specification as follows:

"The invention relates a vehicle wheel alignment apparatus which comprises eight emitters and eight sensors forming eight sensor emitter-pairs for measuring the toe angles of the wheels of a four-wheeled vehicle.  There are two emitters and two sensors positioned on each wheel, housed in what is referred to in the specification as a "head".  One of the emitters and one of the sensors on each wheel are operatively associated with a sensor and emitter, respectively, on another wheel located on the same side of the vehicle, while the other sensor and emitter on the wheel are operatively associated with a sensor and emitter, respectively, on another wheel located at the same end (that is, front end or rear end) of the vehicle.  Heads, emitters and sensors which are located at the same side or the same end of a vehicle are referred to in the specification as "companion heads", "companion emitters" and "companion sensors", respectively.

Apparatus with these features are stated by the specification to be known in the art.  Two problems with the prior art arrangements are identified by the specification:

·    if a toe angle sensor becomes inoperative, for example by the light beam between operatively associated emitters and sensors being inadvertently blocked, the measurement system is interrupted and the toe angle information will either not be displayed or, if it is, it will not be current

·    the wheel alignment apparatus may get out of calibration and this may not be detected by the operator, in which case incorrect alignments will result.

As I understand the specification, the inventive concept of the present invention involves the recognition that there is a degree of redundancy in the measurements obtained from the eight sensors in terms of the calculations required in order to ascertain the full set of toe angle values.  The invention seeks to utilize this redundancy to obtain the full set of toe angle values even when one sensor or two companion sensors are inoperative.  Thus, in order to address the first problem referred to above, the computational means is configured to detect the occurrence of an inoperative sensor, and to then select an algorithm set for computing the toe angles using the signals generated by the remaining sensors.  The specification also sets out a way of addressing the second problem, which is by configuring the computational means to compare the toe angle values computed using all eight sensors with corresponding values computed using only six sensors, and signalling that the system requires calibration when the difference between these values exceeds a predetermined amount.  As an additional embellishment of the invention, the wheel alignment apparatus is said to be also able to compute wheelbase and trackwidth differences using all eight sensors, thereby eliminating the need for these values to be measured by hand."

THE AMENDMENT

1. The proposed amendments with which this opposition is concerned are those to claims 1, 2, 7 and 8.  Those amendments are as follows, with additions shown by underline and deletions by strike-through:

1.     An apparatus for determining toe angle information of the supporting wheels of a four-wheeled vehicle which comprises:

companion sensor means mountable relative to the planes of each laterally and longitudinally adjacent pair of wheels for generating data indicative of the relative orientation of each wheel;

means in communication with the sensor means for calculating toe angle information for all four wheels from the data generated by a first set of at least six companion sensor means;

means for determining whether at least one sensor means in the first set of companion sensor means is operable; and

means responsive to the determining means for calculating toe angle information for all four wheels from the data generated by a second set of at least twosix companion sensor means when the at least one sensor means in the first set of companion sensor means is inoperable;

wherein the first set of companion sensor means is different from the second set of companion sensor means.

2.     The apparatus of claim 1 further comprising means for comparing at least one toe angle value calculated from the firstone set of at least six companion sensor means with the corresponding toe angle value calculated from a differentthe second set of at least two companion sensor means and for indicating that the apparatus is out of calibration when the difference between the toe angle values exceeds a predetermined amount.

7.     An apparatus for determining toe angle values of the wheels of a vehicle having at least two front and two rear wheels which comprises:

at least eight angle measuring instruments mountable relative to the planes of the wheels, including two companion angle measuring instruments mountable to each laterally and longitudinally adjacent pair of wheels, for generating data indicative of the angles between the plane of each wheel and the planes of the laterally and longitudinally adjacent wheels;

computing means in communication with each angle measuring instrument for calculating a set of toe angle values for the vehicle from the data generated by a first set of at least six companion angle measuring instruments and for calculating the set of toe angle values from the data generated by a second set of at least twosix companion angle measuring instruments;

the first set of companion angle measuring instruments being different from the second set of companion angle measuring instruments;

means for displaying the toe angle values;

means for determining whether at least one angle measuring instrument in the first set of companion angle measuring instruments is inoperative; and

means for selecting for display on the displaying means the set of toe angle values determined from the second set of companion angle measuring instruments when the at least one angle measuring instrument in the first set of companion angle measuring instruments is inoperative.

8.     The apparatus of claim 7 further comprising means for comparing at least one toe angle value calculated from the firstone set of companion angle measuring instruments with the corresponding toe angle value calculated from a differentthe second set of at least two companion angle measuring instruments and for indicating that the apparatus is out of calibration when the difference between the toe angle values exceeds a predetermined amount.

GROUNDS OF OPPOSITION

1. The grounds of opposition are stated to be:

(a)The amendment is not allowable because, as a result of the amendment, the specification claims matter not in substance disclosed in the specification as filed.

(b)The amendment is not allowable because, as a result of the amendment, a claim of the specification does not in substance fall within the scope of the claims of the specification as accepted.

(c)The amendment is not allowable because, as a result of the amendment, the specification no longer complies with sub-section 40(2) or (3)

These grounds rely on subsection 102(1), paragraph 102(2)(a) and paragraph 102(2)(b), respectively, of the Patents Act.

THE LAW

1. The allowability of amendments is governed by section 102, which 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 relevant time [in the present circumstances, acceptance] 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."

2. 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.

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

11. 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 grounds 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.

12.  It is pertinent to the present matter that a delegate of the Commissioner has already issued a decision having determined certain issues in relation to the present matter.  Any such determination is final, and may not be varied subsequently except on appeal - Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119.

13.  The opponent submitted that section 107, and in particular subsection 107(4) applied in the present circumstances.  Subsection 107(4) states:

"If the Commissioner is satisfied that the amendments set out in a statement (or an amended statement) are allowable and would, if made, remove all lawful grounds of objection to the patent request and complete specification, the Commissioner must allow the amendments."

However, section 107 is not applicable to the present situation, as section 107 concerns amendments directed by the Commissioner.  Its relevance seems to be in respect to the re-examination process, noting that subsection 99(2) makes reference to section 107.  In the present matter, there has been no direction, as such, to amend.  The opponent's belief that section 107 has effect in the present situation appears to have had the consequence that much of its case is founded upon whether the amendments in suit overcame the findings in the decision on the substantive opposition and, perhaps even more inappropriately, re-argue issues that had already determined in the decision on substantive opposition.

14.  The opponent also relied upon paragraph 16.5.1 of Volume 3 of the Australian Patent Office Manual of Practice and Procedure Oppositions Courts Extensions & Disputes in asserting that it was open to me to take into account whether issues identified in the substantive opposition had been overcome. However, as Mr Green pointed out, the relevant passage in paragraph 16.5.1 does not relate to the situation of an opposition to a request to amend a specification under section 104, but rather its context is that of a final determination while an appeal is pending.

DECISION

15.  Turning now to each of the amendments and arguments put by the parties on the allowability of those amendments, the only amendment proposed to claim 1 is to define the second set of companion sensor means as consisting of six companion sensor means rather than at least two.  This feature is actually a central aspect of the invention, but the fact that it is clearly fairly based and in substance disclosed is illustrated by this passage which was in the specification as filed and remains in the specification:

"The respective heads, in turn, transmit an appropriate signal to computer 36 indicating that the companion sensors are inoperative.  When this happens, computer 36 accesses an appropriate algorithm set, identified by which companion sensors are inoperative, and computes the above-identified variables and toe angle and vehicle geometry values from the Processed Signal Values generated by the remaining six sensors."

Clearly also, this amendment has narrowed the scope of the claim and there is no question of paragraph 102(2)(a) being contravened.

16.  The opponent also contended that the expression "at least six" is not clear.  I have some difficulty with the notion that a numerical value or, as in the case here, a range of numerical values might not be clear.  Perhaps what the opponent found ambiguous was whether the range of values includes the number 7.  In my view it does not (and clearly does not), and the range of values consists of just six and eight.  As I concluded in my decision on the substantive opposition, it was implicit in the wording of claim 1 that the apparatus defined by the claim consists of eight companion sensor means, and thus this constitutes an upper limit.  Moreover, when referring to companion sensor means logic would indicate there has to be an even number of sensor means.

17.  The amendment to claim 2 is in the nature of a consequential amendment arising from the amendment to claim 1.  Whereas in the specification prior to amendment claim 2 could carry over the same references to sets as were employed in claim 1, this is no longer possible after the amendment since the size of the second set has been changed from at least 2 to at least 6.  The wording used in claim 2 serves, at least so far as the ranges of numbers which are defined goes, to maintain the status quo.  There is no question, as was reflected in the decision on the substantive opposition, that the applicant is entitled to claim the "at least two" feature in respect of the calibration aspect of the invention.

18.  The opponent's main points of contention (of those that were available to it) with the amendment to claim 2 appear to be twofold.  In the first place it argues that because the nexus between the "first set" of claim 1 and the "one set" of claim 2, respectively, has been broken, the scope of claim 2 has changed.  I am not convinced of that, given that the features in question each involve a choice among the same possibilities.  But even assuming that is the case, I do not see it as making the amendment not allowable under subsection 102(1) or paragraphs 102(2)(a) or 102(2)(b).  The reading of the specification both as filed and as now proposed to be amended clearly contemplates that the set of six companion means used for the beam-blocking feature of claim 1 may be different from the set of six companion sensor means used for the calibration feature defined in claim 2.  There is thus no lack of fair basis (paragraph 102(2)(b)) or matter not in substance disclosed (subsection 102(1)) arising from the amendments.  As regards whether paragraph 102(2)(a) has been contravened, as was pointed out by Mr Green, given that Claim 2 is an appended claim it is difficult to see how amending it could cause the scope of a claim of the specification to fall outside the scope of the claims prior to the amendment.  The effect of this requirement was expressed by Jacobs J in AMP Incorporated v. Commissioner of Patents (1974) 3 ALR 283 at 289 as being:

"that 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."

The proposed amendment of claim 2 would not have that result.

19.  The opponent's other point of contention with the amendment to claim 2 appears to lie with the introduction of the word "different" into the claim, which the opponent alleges results in the claim being unclear.  I fail to see this.  As I have already indicated, I regard the inclusion of this term as necessary to maintain the status quo in relation to the subject matter of claim 2.  In particular, because prior to amendment the "sets" in claim 2 were those of claim 1, the requirement for them to be "different" was imported from claim 1.  As a consequence of the change to the constitution of the "second set" in claim 1, it then became necessary to disassociate the "sets" in claim 2 from those in claim 1 and to define these sets as being "different".

20. The amendments to claims 7 and 8 are on all fours with those to claims 1 and 2, except for the additional amendment to claim 7 to delete the words "at least" in the third line of claim 7. The opponent has not taken issue with this amendment, and this amendment clearly complies with the requirements of section 102. The other amendments to claims 7 and 8 are also compliant with section 102 for the same reasons discussed above in relation to claims 1 and 2.

CONCLUSION

21.  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

22.  Ordinarily in proceedings such as these, costs follow the event.  The opponent requested that costs be awarded to it whatever way the decision goes, and be awarded on a true costs basis and an indemnity basis.  The reasons advanced for doing so would appear in effect to require me to anticipate what the outcome of the action before Federal Court in relation to this application, as well as any final determination which the Commissioner might be required to make in respect of the substantive opposition on this application, will be.  This I obviously may not do.  Thus there are no special circumstances applying in relation to this matter which warrant varying the approach which is ordinarily taken.  Accordingly, I award costs in relation to this matter against the opponent Beissbarth GmbH.

E J Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Freehills Carter Smith Beadle, Melbourne

Patent attorneys for the opponent  :  Wray & Associates, Perth