Stramit Corporation Pty Limited v Bluescope Steel Limited - [2022] APO 21

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stramit Corporation Pty Limited v Bluescope Steel Limited [2022] APO 21
Patent Application: 2015234361

Title:A Cladding Sheet

Patent Applicant: Bluescope Steel Limited

Opponent:Stramit Corporation Pty Limited

Delegate:R Subbarayan

Decision Date: 28 March 2022

Hearing Date: Written submissions completed on 31 March 2021

Catchwords: PATENTS – opposition under section 104 – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether the amended claims fall within the scope of the claims before amendment - whether the amended claims are not supported or not clear – amendments not allowable – cost awarded against the Applicant

Representation: Patent attorney for the Applicant: Wrays Pty Ltd
Patent attorney for the Opponent: Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2015234361

Title:A Cladding Sheet

Patent Applicant: Bluescope Steel Limited
Date of Decision: 28 March 2022
DECISION

The amendments are not allowable because, as a result of the amendment, amended claim 1 would extend beyond the disclosure of the specification as filed (Ground 1, particular (i)), not fall within the scope of the claims before amendment (Ground 2, particular (i)) and also lack support (Ground 3, particular (iii)). None of the other grounds or particulars have been made out.
I therefore refuse the amendments.
I award costs according to Schedule 8 against the Applicant.
REASONS FOR DECISION

BACKGROUND

Patent application 2015234361 in the name of Bluescope Steel Limited (the Applicant) was filed on 1 October 2015 as a divisional application of 2008291624 and as a consequence it claims an earliest priority date of 31 August 2007. It was examined and advertised as having been accepted on 20 April 2017.
A notice of opposition to the grant of the patent was filed on 20 July 2017 by Stramit Corporation Pty Limited (the Opponent). The Opponent’s evidence in support was completed on 22 January 2018.
On 17 April 2018, the Applicant filed a statement of proposed amendments comprising substantial amendments to the accepted claims. As the amendments were considered to be allowable, leave to amend was advertised on 14 June 2018.
The Opponent filed a notice of opposition to the allowance of the amendments on 14 August 2018. Evidence in relation to this opposition to the amendments was filed by both parties.
On 9 April 2019, the Applicant formally withdrew the proposed amendments of 17 April 2018 and filed another statement of proposed amendments comprising a new claim set which they submitted addressed the matters raised in the Opponent’s evidence for the opposition to the amendments. As the amendments were considered to be allowable, leave to amend was advertised on 23 May 2019.
On 23 July 2019, the Opponent filed a notice of opposition to the allowance of these amendments as well (the s104 Opposition). Evidence in support and evidence in answer for this s104 Opposition were filed by the Opponent and Applicant respectively.
The matter was heard by way of written submissions. The Commissioner’s direction of 5 February 2021 set the time frames for filing of written submissions in support, submissions in answer and submissions in reply. The Opponent’s written submissions in support were filed on 12 February 2021. The Applicant’s written submissions in answer were filed on 17 March 2021. The Opponent’s written submissions in reply were filed on 24 March 2021.
While the Commissioner’s direction did not allow for it, on 31 March 2021 the Applicant filed further submissions in response to the Opponent’s written submissions in reply “in view of new issues and incorrect assertions by the opponent in respect of the Applicant’s position which need to be addressed and corrected”.
The Opponent wrote to the Commissioner submitting that no new issues arise out of their reply submissions and that “there is no proper basis for the Commissioner to allow the further submissions”. The Applicant responded submitting that they maintain that the Opponent’s reply submissions raise new issues which need to be addressed and that I should therefore have regard to their submissions of 31 March 2021.
The Commissioner wrote to the parties on 7 May 2021 stating that the Commissioner will ensure that parties are afforded procedural fairness and that if anything further is required from either party, the hearing officer will invite submissions.
In arriving at my decision, I did not find anything in the Applicant’s further submissions in response of 31 March 2021, which had not been already articulated in their submissions in answer or which led me to come to a different conclusion. As a consequence, I have decided not to seek further submissions from the Opponent in this regard and furthermore I do not believe that as a consequence, the parties have been denied procedural fairness.
GROUNDS OF OPPOSITION
The Statement of Grounds and Particulars (SGP) lists the grounds as:
·Section 102(1) - as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed;
·Section 102(2)(a) - as a result of the amendment a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; and
·Section 102(2)(b) - as a result of the amendment the specification would not comply with subsection 40(2) or (3).
EVIDENCE
Evidence in support from the Opponent comprises:
·Declaration of John McLanders dated 4 November 2019 with exhibits JM-1 to JM-3
Evidence in answer from the Applicant comprises:
·Declaration of Michael Celeban dated 2 March 2020 with exhibits MC-1 to MC-7
Mr McLanders is the technical marketing manager at Stramit Building Products, a business owned by the Opponent. He holds a certificate in Mechanical Engineering (1975) and has worked mostly in the building products industry since 1973 and has significant experience in product design of metal building products including roof sheeting, wall cladding, rainwater products, structural sections for steel buildings and metal sheets for concrete decks.
Mr Celeban holds a degree in Civil Engineering (1976) and has worked with BlueScope Lysaght, a business unit of Bluescope Steel Limited, since 1988 in various engineering roles and has significant experience in development and testing of various building products such as cladding, purlins, decks and top-hats.
While the experts have given their opinion on how the specification and amended claims should be construed, it is up to me to decide how the claims should be construed. However, I will refer to the opinions of the experts where appropriate.
The Relevant Legislation
The application was filed on 1 October 2015, and the amendment of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (RTB) therefore apply to the present application.
Subsections 102 (1) and (2) of the Act state that:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)   the complete specification as filed;
(b)   other prescribed documents (if any).
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment;
(a)   a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)   the specification would not comply with subsection 40(2), (3) or (3A).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment.[1] If any of these matters was pre-existing then it will not result in an amendment being not allowable.[2]
[1] RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; 42 IPR 353 at page 360
[2] Apotex Pty Ltd v Les Laboratoires Servier (No 2) [2009] FCA 1019
SPECIFICATION
The present invention relates to a method of roll-forming a roof cladding sheet to provide edge formations and/or ribs that are adapted to receive retaining members of concealed retaining clips fastened to a roof supporting structure.
The provision of such edge formations and ribs in roof cladding sheets is known in the art and they generally include two sides and a flat upper portion, with each of the sides having re-entrant sections forming generally flat platforms that, in use, are contacted and engaged by the retaining members of the retaining clips. The specification however notes that the flat platforms may not provide adequate engagement with the retaining clips and that the present invention seeks to address this problem.
The specification then provides a broad summary of the invention as follows:
“In broad terms, the present invention provides a cladding sheet that is adapted to engage a concealed fixing retaining clip and comprises at least one rib or side edge formation that has a lengthwise extending channel that opens upwardly relative to a base plane of the cladding sheet and is adapted to receive retaining members of the concealed fixing retaining clip, wherein the upwardly opening lengthwise extending channel is defined by (a) a side section of the rib or the side edge formation and (b) a re-entrant, i.e. in-turned, section of the rib or the side edge formation that extends inwardly and then upwardly from a lower end of the side section and is upwardly inclined relative to the base plane of the cladding sheet”.[3]
“The applicant has realised that forming at least one of the ribs and the side edge formations of a cladding sheet with a channel that opens upwardly relative to the
base plane of the sheet means that there is more positive engagement of the retaining members of a clip with the sheet than is provided by the above-mentioned platforms.
[3] Accepted specification page 3, lines 20-33
[4] Accepted specification page 4, lines 18-33
Specifically, the retaining members extend into the channel – rather than contacting an essentially flat surface as per the known cladding sheets”.[4]
The present invention provides the edge formations and ribs with a re-entrant section that is roll-formed to have an S-shaped profile 43 creating an upwardly facing channel 61, as shown in figure 2 that is reproduced below.
The specification provides the following description of the shape of an edge formation and its re-entrant sections.
“With reference to Figure 2, the leading edge formation 31 of the cladding sheet 3 includes two sides, generally identified by the numerals 35a, 35b that are separated by a flat upper section 33. The side 35a includes a section 41 that extends outwardly and downwardly from the upper section 33, an in-turned, i.e. re-entrant, section 43 that extends upwardly and inwardly from the lower edge of the section 41, and a section 45 that extends downwardly and outwardly from the section 43 and merges with a pan 51. The side 35b of the leading edge formation 31 of the cladding sheet 3 includes a section 41 that extends outwardly and downwardly from the upper section 33, an in-turned, i.e. re-entrant, section 43 that extends upwardly and inwardly from the lower edge of the section 41, and a relatively short section 45 that extends downwardly and outwardly and forms a leading end of the cladding sheet 3.
The sections 41 and 43 of both sides 35a and 35b of the leading edge 31 of the cladding sheet 3 define upwardly and inwardly opening channels 61 that are adapted to receive the flanges 9 of the clips 29. The channels 61 are upwardly and inwardly opening in relation to the base plane BP-BP of the cladding sheet 3”.[5]
[5] Accepted specification page 8, line 29 – page 9, line 15
The specification also describes a method and apparatus for roll-forming an edge formation and the re-entrant section, with reference to figures 5-18 of which figures 5-9 are reproduced below.
Each of these figures show a roll-forming stand with upper and lower rolls that are separated by a notional roll centreline Z-Z. The roll segments 81, 83 seen in figures 5-7 are arranged to rotate about the axes X-X and Y-Y respectively that are parallel to the roll centreline Z-Z and are designed to form the edge formation with standard flat re-entrant sections that are typical of known cladding sheets.
The roll segments 89 shown in figure 8 are opposed idler rollers that are rotatable about axes 91 that are transverse to the roll centreline Z-Z and have complementary roll former surfaces 93 that are shaped to deform the essentially flat re-entrant section of Figure 7 to the S-shaped profile 43 shown in Figure 8.
The roll segments 81a, 83b and 83a, 83b in the next roll forming stand shown in Figure 9 further develop the re-entrant section 43 to start to form the section 41 of the edge formation. The section 41 and the re-entrant section 43 define an upwardly facing channel 61.
Further roll forming stands then provide a similar re-entrant section on the opposite side of the edge formation and then complete the shape of the edge formation. The roll-forming of the ribs of the cladding sheet is also performed in a similar manner.
The accepted specification ends with 7 claims that read as follows:
1. A cladding sheet that is adapted to engage a concealed fixing retaining clip comprises at least one rib or side edge formation that has a lengthwise extending channel that opens upwardly relative to a base plane of the cladding sheet and is adapted to receive retaining members of the concealed fixing retaining clip, wherein the upwardly opening lengthwise extending channel is defined by (a) a side section of the rib or the side edge formation and (b) a re-entrant, i.e. in-turned, section of the rib or the side edge formation that extends inwardly and then upwardly from a lower end of the side section and is upwardly inclined relative to the base plane of the
cladding sheet.
2. The cladding sheet defined in claim 1 wherein the re-entrant section is inclined upwardly at an angle of at least 3° to the base plane of the cladding sheet.
3. The cladding sheet defined in claim 2 wherein the re-entrant section is inclined upwardly at an angle of at least 5° to the base plane of the cladding sheet.
4. A method of roll-forming the cladding sheet defined in any one of the preceding claims from strip using a roll former that comprises a plurality of roll forming stands, each stand including upper and lower rolls and a notional roll centreline between the rolls in each stand, which method comprises roll forming at least one side of at least one rib and side edge formation of the
cladding sheet to have at least one lengthwise extending channel that opens upwardly relative to the base plane of the cladding sheet in at least one roll forming stand that has upper and lower rolls that rotate about axes that are transverse to the roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip and form the channel.
5. The method defined in claim 4 comprising roll forming both sides of the rib or ribs of the cladding sheet to have lengthwise extending channels that open upwardly relative to the base plane of the cladding sheet in a plurality of roll forming stands that have upper and lower rolls that rotate about axes that are transverse to the roll centrelines of the stands and have complementary roll former surfaces that are shaped to deform the strip and form the channels.
6. The method defined in claim 4 or claim 5 comprising roll forming side edge formations on both lengthwise extending sides of the cladding sheet to have lengthwise extending channels that open upwardly relative to the base plane of the cladding sheet in a plurality of roll forming stands that have upper and lower rolls that rotate about axes that are transverse to the roll centrelines of the stands and have complementary roll former surfaces that are shaped to deform the strip and
form the channels.
7. A roll former for roll-forming the cladding sheet defined in any one of claims 1 to 3 in the method defined in any one of claims 4 to 6 from strip, the cladding sheet comprising opposed lengthwise extending sides, one or more than one lengthwise extending rib, side edge formations
that enable the sheets to be positioned side by side in overlapping relationship, and pan sections that separate the side edge formations and the rib or ribs, and being characterised in that at least one rib or side edge formation has a lengthwise extending channel that opens upwardly relative to the base plane of the cladding sheet and is adapted to receive a retaining member of a concealed fixing retaining clip, the roll former comprising a plurality of roll forming stands, each stand including upper and lower rolls and a notional roll centreline between the rolls in each stand, and the roll former stands comprising at least one stand that has upper and lower rolls that rotate about axes that are transverse to the roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip and form the re-entrant section of the side of the rib or the side edge formation that defines a part of the channel.
THE AMENDMENTS
The proposed amendments are solely to the claims as accepted, with the description remaining in the state it was at acceptance. Broadly, the amendments to the claims have the effect of deleting accepted independent claim 1 which is directed to the cladding sheet per se but retaining claims 4 and 7 directed to the method of roll-forming and roll former respectively which have now been drafted as independent claims with additional features to allegedly narrow the scope of these claims. The amended claims read as follows with the independent claim 1 and pseudo-independent claim 13 being marked up to show deletions with strikethroughs and additions with underlining.
1. A method of roll-forming a ~~the~~ cladding sheet that is adapted to engage a concealed fixing retaining clip and comprises side edge formations and at least one rib that is parallel to the side edge formations ~~defined in any one of the preceding claims~~ from strip using a roll former that comprises a plurality of roll forming stands, each stand including upper and lower rolls and a notional roll centreline between the rolls in each stand, ~~which~~ the method comprising ~~comprises~~ roll-forming ~~one side of at least~~ at least one rib and at least one side edge formation of the cladding sheet to have ~~at least one~~ lengthwise extending re-entrant sections with S-shaped profiles that define channels that open upwardly relative to ~~the~~ a base plane of the cladding sheet in at least one roll forming stand that has upper and lower rolls that rotate about axes that are transverse to the roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip and form a S-shaped profile that defines a channel, with the re-entrant sections being in-turned sections that extend inwardly and then upwardly from a lower end of a side section of the rib and a lower end of a side section of the side edge formation and are upwardly inclined relative to the base plane of the cladding sheet and thereby form S-shaped profiles that define channels, with the method including roll-forming a part of one side of the rib in at least one roll forming stand that has upper and lower rolls that rotate about axes that are transverse to the notional roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip to form a part of a S-shaped profile ~~and form the channel~~, and with the method including roll-forming a part of the other side of the rib in at least one successive roll forming stand that has upper and lower rolls that rotate about axes that are transverse to the notional roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip to form a part of a S-shaped profile.
2. The method defined in claim 1 comprising roll forming the S-shaped profile of the one side of the rib in three roll forming stands, with:
(a) a first roll forming stand having upper and lower rolls that rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to start to form the S-shaped profile;
(b) a second roll forming stand including upper and lower rolls that rotate about axes that are parallel to the notional roll centreline of the stand and having complementary roll former surfaces that are shaped to deform the strip to continue forming the S-shaped profile, and
(c) a third roll forming stand having upper and lower rolls that rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to complete forming the S-shaped profile, with the method including starting roll forming the S-shaped profile in the first roll forming stand, continuing roll forming the S-shaped profile in the second roll forming stand, and completing roll forming the S-shaped profile in the third roll forming stand.
3. The method defined in claim 2 including starting roll forming the S-shaped profile of the one side of the rib in the first roll forming stand without restraining the strip where the S-shaped profile of the other side of the rib is to be roll formed.
4. The method defined in claim 3 including continuing roll forming the S-shaped profile of the one side of the rib in the second roll forming stand while restraining the strip where the S-shaped profile of the other side of the rib is to be roll formed.
5. The method defined in claim 4 including forming the S-shaped profile of the one side of the rib in the third roll forming stand without restraining the strip where the S-shaped profile of the other side of the rib is to be roll formed.
6. The method defined in any one of the preceding claims comprising roll forming the S-shaped profile of the other side of the rib in three roll forming stands, with:
(a) a first roll forming stand having upper and lower rolls that rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to start to form the S-shaped profile;
(b) a second roll forming stand including upper and lower rolls that rotate about axes that are parallel to the notional roll centreline of the stand and having complementary roll former surfaces that are shaped to deform the strip to continue forming the S-shaped profile, and
(c) a third roll forming stand having upper and lower rolls that rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to complete forming the S-shaped profile, with the method including starting roll forming the S-shaped profile in the first roll forming stand, continuing roll forming the S-shaped profile in the second roll forming stand, and completing roll forming the S-shaped profile in the third roll forming stand.
7. The method defined in claim 6 including starting roll forming the S-shaped profile of the other side of the rib in the first roll forming stand without restraining the strip where the S-shaped profile of the one side of the rib has been roll formed.
8. The method defined in claim 7 including continuing roll forming the S-shaped profile of the one side of the rib in the second roll forming stand while restraining the strip where the S-shaped profile of the one side has been roll formed.
9. The method defined in claim 8 including forming the S-shaped profile of the one side of the rib in the third roll forming stand without restraining the strip where the S-shaped profile of the one side of the rib has been roll formed.
10. The method defined in any one of the preceding claims comprising roll forming side edge formations on both lengthwise extending sides of the cladding sheet to have lengthwise extending re-entrant sections with S-shaped profiles that define channels that open upwardly relative to the base plane of the cladding sheet in a plurality of roll forming stands that have upper and lower
rolls that rotate about axes that are transverse to the notional roll centrelines of the stands and have complementary roll former surfaces that are shaped to deform the strip into the S-shaped profiles that define the channels.
11. The method defined in any one of the preceding claims comprising roll forming strip in a plurality of roll forming stands upstream of the S-shaped profile forming roll forming stands defined in any one of the preceding claims, with the upstream roll forming stands having upper and lower rolls that rotate about axes that are parallel to the notional roll centrelines of the stands and have complementary roll former surfaces that are shaped to deform the strip to start roll-forming the rib at a desired location on the strip.
12. The method defined in any one of the preceding claims comprising roll forming strip in a plurality of roll forming stands downstream of the S-shaped profile forming roll forming stands defined in any one of the preceding claims, with the downstream roll forming stands having upper and lower rolls that rotate about axes that are parallel to the notional roll centrelines of the stands and have complementary roll former surfaces that are shaped to deform the strip to complete forming the rib.
13. A roll former for roll-forming ~~the~~ a cladding sheet that is adapted to engage a concealed fixing retaining clip ~~defined in any one of claims 1 to 3~~ in the method defined in any one of the preceding claims ~~4 to 6~~ from strip, the cladding sheet comprising opposed lengthwise extending sides, one or more than one lengthwise extending rib, side edge formations that enable the sheets to be positioned side by side in overlapping relationship, and pan sections that separate the side edge formations and the rib or ribs, and being characterised in that both sides of at least one rib and at least one side edge formation ~~or side edge formation~~ haves re-entrant, i.e. in-turned, sections that extend inwardly and then upwardly from lower ends of side sections of the rib and a lower end of a side section of the side edge formation and are upwardly inclined relative to the base plane of the cladding sheet and thereby form S-shaped profiles that define a lengthwise extending channels that opens upwardly relative to the base plane of the cladding sheet and is are adapted to receive a retaining member of a concealed fixing retaining clip, the roll former comprising a plurality of roll forming stands, each stand including upper and lower rolls and a notional roll centreline between the rolls in each stand, and the roll former stands comprising (a) a plurality of roll forming stands for forming one side of one rib, with ~~at least~~ one stand ~~that has~~ having upper and lower rolls that can rotate about axes that are transverse to the roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip and roll-form a part of a S-shaped profile of one side of the rib, and (b) a successive plurality of roll forming stands for forming in the other side of the rib ~~form the re-entrant section~~, one stand having upper and lower rolls that can rotate about axes that are transverse to the roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip and roll-form a part of a S-shaped profile of the other side of the rib ~~of the side of the rib or the side edge formation that defines a part of the channel~~ .
14. The roll former defined in claim 13 comprising the following stands for forming the S-shaped profile of the one side of the rib:
(a) a first roll forming stand having upper and lower rolls that can rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to start to form the S-shaped profile;
(b) a second roll forming stand including upper and lower rolls that can rotate about axes that are parallel to the notional roll centreline of the stand and having complementary roll former surfaces that are shaped to deform the strip to continue forming the S-shaped profile, and
(c) a third roll forming stand having upper and lower rolls that can rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to complete forming the S-shaped profile.
15. The roll former defined in claim 13 or claim 14 comprising the following stands for forming the S-shaped profile of the other side of the rib:
(a) a first roll forming stand having upper and lower rolls that can rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to start to form the S-shaped profile;
(b) a second roll forming stand including upper and lower rolls that can rotate about axes that are parallel to the notional roll centreline of the stand and having complementary roll former surfaces that are shaped to deform the strip to continue forming the S-shaped profile, and
(c) a third roll forming stand having upper and lower rolls that can rotate about axes that are transverse to the notional roll centrelines of the stands and having complementary roll former surfaces that are shaped to deform the strip to complete forming the S-shaped profile.
16. The roll former defined in any one of claims 13 to 15 comprising a plurality of roll forming stands upstream of the S-shaped profile roll forming stands, with the upstream roll forming stands having upper and lower rolls that can rotate about axes that are parallel to the notional roll centrelines of the stands and have complementary roll former surfaces that are shaped to deform the strip to start forming the rib.
17. The roll former defined in any one of claims 13 to 16 comprising a plurality of roll forming stands downstream of the S-shaped profile roll forming stands, with the downstream roll forming stands having upper and lower rolls that can rotate about axes that are parallel to the notional roll centrelines of the stand and have complementary roll former surfaces that are shaped to deform the strip after roll-forming the ribs to complete forming the rib.
GROUND 1 - Section 102(1)
Relevant Principles

The requirements of subsection 102(1) were recently considered by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328. One approach to this consideration is to ask “whether a skilled person would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification”. To this end, a comparison is made between the specification as proposed to be amended and the unamended specification to determine whether subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is “clearly and unambiguously disclosed in the application as filed”, including matter which may have been disclosed both explicitly and implicitly. What is clearly and unambiguously disclosed by the specification cannot extend to matter that would have been obvious to the skilled reader. The context is also important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context.
Particular (i)
The Opponent has submitted that according to the specification as filed, the upwardly opening channels are adapted to receive retaining members of the retaining clip and that this interrelationship is key to the operation of the cladding sheet of the invention but amended claim 1 does not include this interrelationship and as a consequence it extends beyond the disclosure of the specification as filed.
As discussed earlier the specification notes issues with a flat top re-entrant portion and that “…forming at least one of the ribs and the side edge formations of a cladding sheet with a channel that opens upwardly relative to the base plane of the sheet means that there is more positive engagement of the retaining members of a clip with the sheet…”[6]. This clearly suggests that forming the re-entrant portion with an upwardly facing channel that can be engaged by the retaining member of the retaining clip is key to the invention. This is also reinforced by the inclusion of this feature in the broad statement of the invention on page 3 of the specification as filed and in claim 1 of the specification as filed. In my view, the requirement of the upwardly facing channel being able to receive retaining members of the retaining clip is therefore at the heart of the invention.
[6] Specification as filed page 4, line 36 – page 5, line 4; accepted specification page 4, lines 18-23
The applicant has not disputed this but has argued that the channel only needs to be ‘adapted’ to receive retaining members of the retaining clip and that “Amended claim 1 recites a method of roll-forming a cladding sheet to provide a channel formed by a re-entrant S-shaped profile that, according to the specification, is precisely so adapted”[7].
[7] Applicant’s submissions in answer at [14]
I do not find the applicant’s submissions persuasive. One of the key principles in the construction of claims has been expressed by the authorities as follows:
“It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, 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”.[8]
[8] Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 per Sheppard J at [14]
In my view, this is precisely what the applicant is seeking to do, when they submit that according to the body of the specification, the re-entrant portion is adapted to receive the retaining members. I can find no basis to bring this further limitation into the scope of amended claim 1.
Therefore, by not limiting amended claim 1 to explicitly define that the channels defined by the re-entrant sections are adapted to receive retaining member of the concealed retaining clips, amended claim 1 would include within its scope, arrangements where the cladding sheet could be secured to the retaining clips through means other than the upwardly opening channels and such arrangements are clearly not disclosed or contemplated by the specification as filed. I therefore find that amended claim 1 would, as a result of the amendment, claim matter that extends beyond the disclosure of the specification as filed.
Particular (ii)
The Opponent has submitted that while amended claim 1 defines that the re-entrant sections have S-shaped profiles, it is clear from the specification that the S-shaped profile arises from the
re-entrant section in combination with the walls on either side of it and as a result, amended claim 1 extends beyond the original disclosure. They also rely on the evidence of Mr McLanders in this regard.
The specification as filed first makes reference to the S-shaped profile when describing the roll-forming operation with reference to figures 7 and 8 which I have already reproduced earlier. The relevant description is as follows:
“The roll segments comprise a pair of opposed idler rolls 89 that are rotatable about axes 91 (only one of which is shown in the Figure) that are transverse to the roll centreline Z-Z and have complementary roll former surfaces 93 that are shaped to deform the essentially straight re-entrant section of Figure 7 to the S-shaped profile shown in Figure 8”.[9]
[9] Accepted specification page 12, line 37 – page 13, line 6
It also then makes a further reference to the S-shaped profile with reference to figure 10. This figure and the relevant description are as follows:
“Figure 10 shows an arrangement of roll segments in the next roll forming stand that complete the formation of the re-entrant section 43 on the left hand side of the rib 65. The roll segments are in the form of opposed idler rolls. The idler rolls 89 are rotatable about axes 91 (only one of which is shown in the Figure) that are transverse to the centreline Z-Z and have complementary former surfaces 93 that are shaped to continue deformation of the re-entrant section 43 of Figure 9 to the S-shaped profile shown in Figure 10”.[10]
[10] Accepted specification, page 13, lines 18-27
I accept that Applicant’s submission that there is therefore clear disclosure in the specification that the re-entrant section is deformed into an S-shape. As can be seen in figure 10, the re-entrant section itself including the arcuate portions has what could be called an S-shape. While the walls on either side may further accentuate the S-shaped profile, I am satisfied that the re-entrant section per se may be described as having an S-shaped profile.
Amended claim 1 does not extend beyond the original disclosure in relation to the newly added feature of the re-entrant section having an S-shaped profile.
Particular (iii)
The Opponent has submitted that the feature of the re-entrant sections with S-shaped profiles defining the channels in amended claim 1 has been added by amendment, but according to the description as filed, it is the re-entrant section along with the side section of the rib or the side edge formation that forms the upwardly facing channel and as a consequence amended claim 1 extends beyond the disclosure as filed.
The Applicant has submitted that the Opponent’s interpretation of this feature “entirely overlooks the fact that the re-entrant section is roll-formed in the side of the rib and the side edge formation” and that “Further, as explained in clause 32 of the declaration of Michael Celeban, the only way in which this feature of the re-entrant section 43 can be formed is by bending the side of that rib or side edge formation in one direction and then, at a different location, bending it in the opposite direction, as illustrated following clause 32 of the Celeban declaration”.[11]
[11] Applicant’s submissions in answer at [28]
I agree with the Applicant on this issue. Amended claim 1 relevantly defines:
“….roll-forming at least one rib and at least one side edge formation of the cladding sheet to have lengthwise extending re-entrant sections with S-shaped profiles that define channels that open upwardly relative to a base plane of the cladding sheet…”
As noted by the Applicant, amended claim 1 clearly defines roll-forming the rib or the side edge formation to create a re-entrant section that defines an upwardly opening channel. This is entirely consistent with the disclosure in the specification as filed. The fact that it does not further define that the channel is created by the re-entrant section and the wall of the rib or edge formation does not in my view extend the definition beyond what is disclosed in the specification as filed. In any event, as noted earlier, the re-entrant section includes arcuate sections to create the S-profile and the arcuate section extending from the upper wall of the rib or edge formation itself could be considered as an upwardly opening channel.
Amended claim 1 does not extend beyond the disclosure of the specification as filed on this particular issue.
Particulars (iv) to (vi)
The Opponent has explicitly stated that they are no longer pursuing these particulars. I therefore see no reason to consider the issues raised in these particulars.
Particular (vii)
The Opponent has submitted that claim 11 which defines a plurality of roll forming stands upstream of the S-shaped profile forming roll forming stands to start roll-forming the rib, extends beyond the disclosure of the specification as filed because according to the specification as filed, the rolls for roll-forming the rib are downstream of the S-shaped profile forming roll stands and that all of the roll forming stands upstream of the roll stands for forming the S-shaped profile are also stands for forming the re-entrant section of the rib.
They have submitted that for similar reasons claim 16 also extends beyond the disclosure of the specification as filed.
Claim 11 defines the upstream roll stands deform the strip to start roll-forming the rib at a desired location on the strip. Importantly it does not define that the roll-forming of the rib is completed at the upstream roll stands. While the roll-forming stands shown in figures 5-7 which are the stands upstream of the stands 8-13 for forming the S-shaped re-entrant section of the rib, are for the purposes of forming the flat platform re-entrant portion of the rib, that does not mean that they are not for roll-forming the rib. The re-entrant section is nothing more than an in-turned portion of the wall of the rib as can be clearly seen in figure 2. So, the roll-forming of the re-entrant portion in the roll stands of figures 5-7 is still very much a part of the roll-forming of the rib. This is also very evident from certain passages in the description.
“The roll segments shown in Figures 5 to 18 are the roll segments required to form one of the ribs 65 of the cladding sheet 3”.[12]
“The first three roll forming stages that are shown in Figures 5 to 7 are standard stages in the sense that the stages form re-entrant sections of the rib 65…”.[13] (my underlining)
[12] Specification as filed, page 12, lines 32-34
[13] Specification as filed page 13, lines 4-6
Clearly the first roll stand of figure 5 is the start of the roll-forming of the rib of the cladding sheet. Claim 11 does not extend beyond the disclosure of the specification as filed. It follows that claim 16 also does not extend beyond the disclosure of the specification as filed.
Particular (viii)
The Opponent has submitted that the series of steps of roll-forming defined in claim 13 extend beyond the disclosure of the specification as filed. Similar to particular (vii), they have argued that according to the description, the steps of forming the sides of the rib occurs after the steps of roll-forming the re-entrant sections whereas the claim defines the sides of the ribs being roll-formed before the respective re-entrant section.
Again, this submission is based on the erroneous construction that the roll-forming of the side of the rib is distinct to the roll-forming of the re-entrant section of that side of the rib. As discussed before, the re-entrant section is very much a part of the side of the rib and the steps in roll-forming the re-entrant portion in the roll-stands of figures 5-7 are very much also steps in roll-forming the side of the rib.
I do not therefore consider that claim 13 extends beyond the disclosure of the specification as filed.
GROUND 2 - Section 102(2)(a)
Relevant Principles
The provisions of section 102(2)(a) have not changed with the Raising the Bar Act. The principles to be applied in assessing the allowability of amendments under this section are well established.
Consideration of the prohibition in this section requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Thus, the identification of the amendment is an important first step. However, the comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims (Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; 87 IPR 516 at [40]). A long-standing practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment (Fina Research SA v Halliburton Energy Services Inc [2003] FCA 251 at [29]).
Particular (i)
The Opponent has submitted that amended claim 1 does not fall within the scope of the claims before amendment as it does not include the limitation of accepted claim 4 that the upwardly opening channel of the re-entrant section is adapted to receive the retaining member of the concealed retaining clip.
As discussed earlier, accepted claim 4 has been amended and presented as new claim 1. It follows that new claim 1 needs to fall within the scope of the accepted claim 4. While accepted claim 1 is directed to a cladding sheet per se and not to the combination of the cladding sheet and the retaining clip, the defined capability of the channel defined by the re-entrant portion and the side section to receive retaining members of the concealed fixing retaining clip is a limitation of this claim that affects the size, shape and orientation of the channel. Accepted claim 4 also therefore includes this limitation through its appendence to accepted claim 1.
The Applicant has again argued that the channel only needs to be ‘adapted’ to receive retaining members of the retaining clip and that “amended claim 1 recites a method of roll-forming a cladding sheet to provide a channel formed by a re-entrant S-shaped profile that, according to the specification, is precisely so adapted”.
I have already found that such a construction would be adding gloss from the specification. Therefore, by not limiting amended claim 1 to specifically define that it is the channels defined by the re-entrant sections that is adapted to receive retaining member of the concealed retaining clips, amended claim 1 would, as a result of the amendment, not fall within the scope of the claims before amendment.
I therefore find that this particular of ground 2 has been made out.
Particulars (ii) and (iii)
The Opponent has submitted that as accepted claim 1 defines that the upwardly opening channel is defined by (a) a side section of the rib or the side edge formation and (b) a re-entrant section of the rib, this limitation is also present in accepted claim 4, but however amended claim 1 does not include this limitation and hence does not fall within the scope of the claims before amendment.
The Applicant accepts this limitation in accepted claim 4 but has submitted that this limitation is also present in new claim 1 as properly construed.
“Amended claim 1 does not recite that the channels are formed solely or exclusively by the re-entrant sections – i.e. by the re-entrant sections “alone”. The opponent’s interpretation essentially ignores the fact that the re-entrant section is roll-formed in the side of the rib and the side edge formation. The opponent thus attempts to impose an interpretation on amended claim 1 that is not present in the wording of that claim and that would also not be understood as such by a person skilled in the art”.[14]
[14] Applicant’s submissions in answer at [48]
Amended claim 1 relevantly defines:
“……roll forming at least one rib and at least one side edge formation of the cladding sheet to have lengthwise extending re-entrant sections with S-shaped profiles that define channels that open upwardly relative to a base plane of the cladding sheet, with the method including roll-forming at least a part of one side of the rib in at least one roll forming stand that has upper and lower rolls that rotate about axes that are transverse to the notional roll centreline of the stand and have complementary roll former surfaces that are shaped to deform the strip to form at least a part of a S-shaped profile…..” (my underlining)
It is clear that amended claim 1 still requires that the S-shaped re-entrant section is roll-formed from a side of the rib so as to define the channel that opens upwardly. While it may not explicitly state that the channel is defined by the re-entrant section and the side of the rib, it is quite clear that the only way such an upwardly opening channel could be created by an S-shaped re-entrant section formed by deformation of the side of the rib is a channel that is bounded by a portion of the re-entrant section and the side of the rib. This is the most natural construction that the skilled addressee would arrive at, and such a construction would also be confirmed by the disclosure in the drawings and body of the specification.
I am not convinced that, as a result of the amendment, amended claim 1 would not fall within the scope of the claims before amendment.
Particular (iii) is a similar objection to new claim 13. Again, for similar reasons, I am not convinced that this claim would not fall within the scope of the claims before amendment.
GROUND 3 – Section S102(2)(b) and S40(3)
Relevant Principles
Subsection 40(3) requires that the claim(s) must be clear and succinct and supported by matter disclosed in the specification. Supported by matter disclosed has been interpreted as requiring that there must be a basis in the description for each claim and the scope of the claims must not be broader than is justified by the extent of the description, drawings and the contribution to the art. As noted in Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [36]:
“... the definitions in the claims [i.e. the claimed invention] should essentially correspond to the scope of the invention as disclosed in the description. In other words, ... the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.”
While this does not mean that the claims should be restricted to the specific embodiments described, the scope of the claims must be properly supported by the matter disclosed in the body of the specification.
Particular (i)
The Opponent has submitted that amended claim 1 lacks clarity because it contemplates that the entire re-entrant with S-shaped profile can be formed in one roll forming stand, but this is contrary to the later passage in the claim that recites that only a part of the S-shaped profile is formed in at least one roll forming stand and this inconsistency within the claim cannot be resolved by reference to any other part of the claim.
I do not find the Opponent’s submissions persuasive. The principles of claim construction dictate that claims should be given a purposive construction and construed in a practical common sense manner.
It is clear from the specification that the S-shaped re-entrant portion is formed in at least two roll-forming stands that are shown in figures 8 and 10. The definition in the preamble to the claim that the rib can be roll-formed using at least one stand has to be construed in the light of the claim as a whole. When construed in this manner, I do not consider that there is any ambiguity and even if there is an ambiguity that can be readily resolved by reference to the body of the specification.

Amended claim 1 does not lack clarity on this particular issue.
Particular (ii)
The Opponent has explicitly stated that they are no longer pursuing this particular. I therefore see no reason to consider the issues raised in this particular.
Particulars (iii) and (iv)
The Opponent has submitted that amended claim 1 lacks support as it does not include the limitation that the upwardly opening channel of the re-entrant portion of the rib or edge formation is adapted to receive retaining members of the retaining clip.
From my discussion of the disclosure of the specification earlier in this decision, it is clear that the technical contribution of the invention described lies in the upwardly opening channel in the re-entrant section of the rib or edge formation that is adapted to receive retaining members of the retaining clip. Accepted claim 4 included this feature through its appendence to accepted claim 1. While amended claim 1, which is derived from accepted claim 4, defines upwardly opening channels in the S-shaped re-entrant section, the additional limitation of this channel being adapted to receive retaining members of the retaining clip is missing. The scope of the claim therefore includes arrangements in which the retaining clip may engage parts of the rib or edge formation other than the upwardly opening channel of the re-entrant section. However, there is no support in the specification as accepted for such other arrangements. Also as noted earlier, the capability of the channel to receive the retaining member does affect the size, shape and orientation of the channel and by not including this limitation, the scope of amended claim 1 would include channels that would not be able to receive the retaining members.
In my view, the invention of amended claim 1 extends beyond the technical contribution to the art. It therefore lacks support and does not meet the requirements of subsection 40(3).
The Opponent has also argued that as submitted in respect of Ground 1 (particular (ii)), in the accepted specification, it is clear that the re-entrant section by itself is not S-shaped and because amended claims 1, 10 and 13 define the re-entrant section as S-shaped in profile, these claims lack support.
I have earlier found that the re-entrant section per se may be described as having an S-shape profile. It follows that such a definition in amended claims 1, 10 and 13 does not lack support in the body of the specification.
Particular (v)
The Opponent’s submission in relation to this particular mirrors that in respect of Ground 1 (particular (iii)), namely that amended claim 1 recites that the lengthwise extending channels are defined by the re-entrant sections alone and this is not supported by the accepted specification which requires the channel to be defined by the channel and the side section of the rib or edge formation.
I have found that amended claim 1 does not extend beyond the disclosure as filed on this particular issue. For the same reasons, I am also satisfied that this claim does not lack support.
Particulars (vi) to (viii)
The Opponent has explicitly stated that they are no longer pursuing these particulars. I therefore see no reason to consider the issues raised in these particulars.
Particulars (ix) and (x)
The Opponent’s submissions in relation to these particulars mirror that in respect of Ground 1 particulars (vii) and (viii), namely that in the description as accepted which is substantially identical to the description as filed, there is no disclosure of a plurality of roll forming stands upstream of those stands for roll-forming the re-entrant section that take part in roll forming the rib and that the steps of forming the sides of the rib occurs after the steps of roll-forming the re-entrant sections.
I have found that amended claims 11 and 13 do not extend beyond the disclosure as filed. For the same reasons, I am also satisfied that these claims do not lack support.
CONCLUSION
I find that the amendments are not allowable because, as a result of the amendment, amended claim 1 would extend beyond the disclosure of the specification as filed (Ground 1, particular (i)), not fall within the scope of the claims before amendment (Ground 2, particular (i)) and also lack support (Ground 3, particular (iii)). None of the other grounds or particulars have been made out.
I therefore refuse the amendments.
COSTS
As the s104 opposition is successful, I award costs according to Schedule 8 against the Applicant.
R Subbarayan
Delegate of the Commissioner of Patents