Stramit Corporation Pty Limited v Guttering No Brackets Pty Ltd and Ian John Higgins - [2018] APO 36

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stramit Corporation Pty Limited v Guttering No Brackets Pty Ltd and Ian John H
iggins [2018] APO 36

Patent:2008204733

Title:Gutter support and mounting assembly

Patentee:  Guttering No Brackets Pty Ltd and Ian John Higgins
Opponent:  Stramit Corporation Pty Limited
Delegate:  Xavier Gisz
Decision Date:  7 June 2018
Hearing Date:  Written submissions filed on 1 March, 14 March 2018 and 21 March 2018

Catchwords: PATENTS - opposition to the allowance of amendments under subsections 102(1) and 102(2)(b) of the Patents Act 1990 – further amendments effectively supersede the opposed amendments to the claims – original amendments to the description are allowable – original amendments to the claims would have been allowable and thus no s 114 issues arise – further amendments were unopposed and have already been allowed – cost in accordance with Schedule 8 awarded against the opponent.

Representation: Patent attorney for the Patentee: Griffith Hack
Patent attorney for the Opponent: Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2008204733

Title:Gutter support and mounting assembly

Patentee: Guttering No Brackets Pty Ltd and Ian John Higgins
Date of Decision: 7 June 2018
DECISION
The opposition fails on all grounds relied on. The proposed amendments satisfy the requirements of subsections 102(1) and 102(2)(b) of the Patent Act 1990.
I allow the amendments.
I award costs against the Opponent, Stramit Corporation Pty Limited.
REASONS FOR DECISION
Background

Australian patent number 2008204733 titled “Gutter Support and Mounting Assembly” (the Patent) in the name of Guttering No Brackets Pty Ltd and Ian Higgins (the Patentee) was filed as a PCT application (PCT application PCT/AU2008/000028 with publication number WO2008/083444) on 11 January 2008 and entered national phase in Australia on 10 July 2009.
Examination was requested on 29 February 2012. The application was accepted on 11 November 2013 and the patent was granted on 13 March 2014.
On 5 May 2016 Stratco (Australia) Pty Limited requested the Commissioner to re-examine the patent on the basis that the claims of the patent were not novel and not inventive.
An adverse re-examination report was sent on 23 May 2016. A response was received on 22 July 2016 which included a proposal to amend the specification.
A second adverse re-examination report was sent on 19 August 2016. A response was received on 23 September 2016 which included a proposal to amend the specification. Further proposed amendments were received on 24 October 2016. On 25 October 2016 a letter was sent stating that the amendments, once allowed, would overcome all the objections in the re-examination report.
The proposed amendments were advertised for opposition on 10 November 2016. A notice of opposition to the amendments was filed on 10 January 2017 by Stramit Corporation Pty Limited (the Opponent). A statement of grounds and particulars was filed on 10 February 2017. An Amended Statement of Grounds and Particulars was filed on 15 August 2017.
Evidence in support was completed on 24 April 2017. Evidence in Answer was completed on 23 June 2017. Evidence in reply was completed on 14 July 2017. Further amendments were proposed on 1 September 2017.
The hearing of the opposition was on basis of written submissions. The Opponent’s submissions were filed on 2 March 2018, the Patentee’s submissions were filed on 14 March 2018, the Opponent’s responding submissions were filed on 21 March 2018.
Further amendments
Further amendments to the Patent were requested by the Patentee on 1 September 2017. These amendments were accepted by an examiner on 6 October 2017, and the amendments were advertised for opposition on 19 October 2017. The amendments were unopposed and the amendments were allowed on 29 January 2018.
On 2 May 2018 I sent a letter to both parties stating:
“Given that the 1 September amendments were allowed while the previous amendments were under opposition, there are number of issues that arise in, and from, the current opposition which I would like your feedback on.
The issues that arise
There two possible outcomes of the current opposition:
(i) The opposition is successful and the amendment request is refused; or
(ii) The opposition is successful and the amendment request is allowed.
Opposition is successful
If the opposition is successful that would be the result of me finding that one or more of the grounds of opposition had been made out. That is, I would have found that, of the claims filed on 24 October 2016, at least one of claims 1, 5, 8, 11, 12, 13, 14, 18 and 24 claimed matter not in substance disclosed in the specification as filed and/or that at least one of claims 1, 5, 8, 11, 12, 13, 14, 18 and 24 did not comply with subsection 40(2) or (3).
However, I note that, with the exception of claim 18 (which was deleted by the 1 September amendments) and claim 24 (which was amended by them), claims 1, 5, 8, 11, 12, 13 and 14 of both the opposed amendments and the 1 September amendments are identical. Therefore, if the opposition is successful on the basis of defects in any of these matching claims, it would follow that those same defects existed in the 1 September amendments, with the result that an amendment that was not allowable (i.e. the 1 September amendments) had, in fact been allowed. Consequently, section 114 would apply and the priority date of the offending claim would be altered to the filing date of the amendment (i.e. 1 September 2017). Given that this date is more than 10 years later than the original priority date, there would be a chance that the claim(s) would be invalid in light of the patentees’ actions in the intervening years.
Opposition is unsuccessful
If the opposition was unsuccessful and the opposed amendments are allowed, the question that arises is:
What is to be the content of the specification following incorporation of the opposed amendments?
Given that the 1 September amendments have been allowed, is the specification that is to be amended by the opposed amendments the specification containing the 1 September amendments?
Alternatively, does the 1 September amendment supersede the corresponding parts of the opposed amendments?
Discussion
It may be the case that, by filing the 1 September amendments, the patentees had effectively abandoned the claim amendments filed on 24 October 2016. It does appear that the patentees intended to abandon the claim amendments filed on 24 October 2016 and retain the description amendments of 22 July 2016, rather than amending the granted specification. The statement of proposed amendment requests replacing “Pages 20–24” with new pages 20–24 and the granted specification only had claim pages 20–22. As such, it appears that the patentees intended to replace the claim pages of the opposed amendments with new claim pages. A consequence of the patentees effectively abandoning the amendment to the claims would appear to be that the opposition to the opposed amendments (and, consequently, my decision) would be confined solely to the amendments made to the description. Noting that the applicable test involves looking only at claim amendments and not description amendments, it would seem to follow that the opposition must fail.
Alternatively, it may have been the case that the parties believed that the 1 September amendments were somehow ‘conditional’ amendments. That is, that the allowance of the 1 September amendments would be conditional on the allowance of the previous amendments. However, I can find no basis for this approach in the legislation. The 1 September amendments have been allowed.
As another alternative, it may be the case that Commissioner did not have the authority to allow the 1 September amendments while the earlier amendments were still under opposition. If that were the case, then acceptance of the 1 September amendments could be said to have been ultra vires. Although this was not the usual practice of the Commissioner, I cannot find anything in the legislation that explicitly prohibits the Commissioner from accepting amendments while other amendments are under opposition.
Conclusion
There are many issues that are present and they will have an impact on how I move forward with my decision and how the parties may wish to proceed. To assist me in my considerations, the parties are invited within three (3) weeks of this letter to make submissions on all matters above.”
On 23 May the Patentee and Opponent provided responses to my letter of 2 May 2018.
The Opponent stated:
“It was the Opponent's understanding that the effect of the making of the 1 September amendments was not to render otiose the opposition to the amendments to claim 1, 5, 8, 11, 12, 13 and 14 filed on 24 October 2016. Rather it was understood that the purpose of the 1 September amendments was to deal only with the objections to claim 18 and 24.
When the Applicant filed the 1 September amendments it stated in its covering letter;
"The further amendments proposed are to delete claim 18 and make minor amendments to claim 24. With these amendments, the issues raised in the Opposition will be more confined".
Clearly the Applicant was proceeding on the basis that the opposition to the amendments made on 24 October 2016 (with the exception of claims 18 and 24) was continuing.
In the event the Hearing Officer decides that the opposition must fail due to the makings of the 1 September amendments, we seek our client's costs of the opposition. The Applicant has filed amendments to claims 18 and 24 to overcome the opposition to those claims. Further it has made amendments the effect of which have been to deal with the opposition to the remaining claims (unless an argument of ultra vires is accepted.) It is reasonable that in these circumstances that our client be awarded its costs.
We assert that the amendments to claims 1, 5, 8, 11, 12, 13 and 14 should not have been allowed and as a consequence, section 114 applies and the priority date of the claims has shifted to 1 September 2017. We reserve our client's position to raise objections to the patent that arises a consequence of this through a re-examination request or through the revocation process.”
The Patentee stated:
“We concur with the Examiners findings that the 1 September amendments are allowed. These amendments were considered by the Examiner and were accepted (see acceptance form of 9 October 2017), and advertised for opposition purposes, The Opponent was notified on 23 October 2017 of the acceptance of the Amendments and did not oppose the amendments. The amendments were duly allowed on 29 January 018. Accordingly, due process was followed with the amendments.
Whilst the patentee did make the amendments in the context of the opposition and prompted by the Amended Statement of Grounds and Particulars filed on 15 August 2017, the patentee's action in making the amendments of 1 September should in no way be regarded as surrendering to the opponent. The claims as allowed are identical to the claims under opposition except for the deletion of claim 18 and amendment to claim 24. Further, the Examiner has correctly documented the process that unfolded which subsequently resulted in those amendments being allowed.
As noted by the Examiner, with the allowance of the 1 September amendments, there is no basis under which the opposition can succeed.
On the question of an award of costs of the opposition, we reiterate our statement above that the patentee's action in making the amendments of 1 September should in no way be regarded as surrendering to the opponent. Accordingly, there is no basis to award costs to the opponent.
In contrast, we submit that the opponent has continued to raise issues that have no basis. In this regard, we refer not only to the current patent but also the findings on related patent AU2013204297 (which was also subjected to an amendment opposition following re-examination).
Whilst we understand that it is rare to consider the merits of the case solely on the basis to determine a question of costs, we consider that in this case, that process has largely already occurred. The amendments in question have already been fully considered by an examiner under Re-examination and now under examination of the 1 September amendments. In both instances they have been allowed. Further, no opposition was lodged by the opponent on the 1 September amendments. Accordingly, we submit that the actions of the opponent warrant that costs be awarded to the patentee.”
Discussion of further amendments
The Patentee and Opponent both appear to agree that since the further amendments have been allowed, these amendments effectively supersede the amendments that were under opposition. Furthermore, I can see no reason the further amendments can be considered partial, conditional or not made (e.g. through finding of ultra vires).
As explained in my letter of 2 May 2018, the opposition is confined solely to the allowability of the amendments made to the description. However, as the allowability of all amendments affects the priority date of the claims under s 114 I will also consider the allowability of the original amendments.
The Evidence
The Evidence in Support comprises a declaration of John Bull dated 21 April 2017 and accompanying exhibit JB1. Evidence in Answer comprises a declaration of Dr Shaun Andrew Manning dated 23 June 2017 and annexures SAM 1-5. Evidence in Reply comprises a declaration of John Bull dated 12 July 2017.
Grounds of Opposition
The statement of grounds and particulars opposes the amendments under subsections 102(1) and and 102(2)(b) of the Patents Act. Under paragraph 102(2)(b), it is asserted that the proposed amendments would not comply with subsection 40(3).
The Specification
The Patent relates to components for gutters used with buildings, and associated guttering assembly, mounting method and system.
Applicable Provisions of the Patent Act 1990
The examination of the application which resulted in the Patent was requested prior to 15 April 2013. Accordingly, the provisions of Section 102 of the Patents Act 1990 which were in operation prior to the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 apply to these proceedings.
The relevant sections of the Patents Act in the current case are sections 102(1) and 102(2)(b) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(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 if, as a result of the amendment:
(b) the specification would not comply with subsection 40(2) or (3).
The applicable parts of section 40 of the Patents Act 1990 as they apply to the present case are set out below:
(3) The claim or claims must be clear and succinct and fairy based on the matter described in the specification.
It is plain from the wording of section 102 that the test provided by this section of the Patents Act is confined to matters which arise as a result of amendment (see Kornelis’ Kunsthars Producten Industrie BV v WR Grace & Co-Conn (1994) AIPC 91-056 at 38,204). Consequently any pre-existing deficiencies in the specification which are unaffected by amendment are not relevant to the present action.
Subsection 102(1): In-substance disclosed in the specification as filed
When determining whether a matter is in substance disclosed in the specification as filed, the courts have basically applied the test for fair basis. Thus for an amended claim to claim matter in substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353).
Under Section 40(3), fair basis is “concerned purely with the relationship between the body and claims of the one specification.” (Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260). As was noted in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1; 177 ALR 460; 75 ALJR 518 “a comparison between the matter described in the specification and the claim which defines the scope of the monopoly”, following the reasoning of Barwick CJ in Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 when he said:
“The question whether the claim is fairly based is not to be resolved ... by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification.”
As was noted in Lockwood (supra):
“the statutory test as expounded by Barwick CJ does not call for any evaluation of whether the breadth of the claims exceeds "the technical contribution to the art embodied in the invention", merely for an evaluation of whether the claims travel beyond the matter described in the specification”
I also note that it was said in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54]:
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification”
This was cited with approval in Lockwood (supra).
Paragraph 102(2)(b): Compliance with subsection 40(3), clarity and fair basis
I have already identified the relevant law with respect to fair basis. In relation to clarity, while the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, recently the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
"the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification."
I also note that the requirement that the claims are clear is understood to be satisfied if a person could ascertain "whether or not what he proposes to do falls within the ambit of the claim" (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59).
Similarity of s 102(2)(b) and s 102(1)
The Patentee states:
The Opponent’s objection under s 102(2)(b) is to claim 1; claim 11 (as appended to claim 10); claim 13 (as appended to claims 11 or 12 as appended to claim 10); and claim 14 (as appended to claim 13 as appended to claims 11 or 12) on the basis that the claims do not define the invention (in contravention of s 40(2)(a) and is not fairly based (in contravention of s 40(3)).
The Opponent’s arguments under s 102(2)(b) are based on the same arguments as those advanced under s 102(1) in respect of those claims. Those arguments have already been addressed at paragraphs [20] to [50], and for those reasons, the Opponent’s objections under s102(2)(b) cannot be sustained.

I agree with the Patentee that the considerations of s 102(2)(b) and s 102(1) are essentially coterminous in this case. Consequently the analysis of s 102(2)(b) and s 102(1) are performed together in this decision.
Principles for construing the claims of a specification
The relevant principles of construction are usefully summarised by Bennett J in Sachtler GMBH & Co KG v RE Miller Pty Ltd (with Corrigendum dated 27 July 2005) [2005] FCA 788 (15 June 2005):
“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 … Where the patent contains technical material, the Court must, by evidence, be put in a position of a person of the kind to whom the patent is addressed, a person acquainted with the surrounding circumstances of the state and the art and at the relevant time … However, if the evidence does not establish that such a technical meaning exists, words used in a patent specification should be given their ordinary meaning …
…[T]he evidence of the skilled reader is not determinative of the construction of the document. It is evidence of how a skilled reader would have read the document at the relevant time. It is then for the Court to construe the document, giving such weight to the evidence as it sees fit.
The construction of the specification is for the Court, not for the expert witness …”
The invention described
The description states:
“Disclosed is a support component for a gutter used with buildings and the like, and an associated guttering assembly, mounting method and system. Also described is a mounting assembly for a gutter.”
Amendments
The amendments were proposed on 22 July 2016, 23 September 2016 and 24 October 2016. A marked-up version of the amendments is provided below (with deletions indicated with strikethrough and additions indicated with underline):
1. A mounting assembly for a channel shaped gutter comprising:
- a support assembly to support the gutter on an upright surface of a building, the support assembly having a U-shape in end profile with two legs, with a space defined between the legs of the U-shape support assembly defining a recess into which an in-use internal wall of the channel-shaped gutter can be received for mounting the gutter to the building and wherein projections are defined on one leg of the U-shape support assembly which extend into the recess and are adapted to engage an elongate ridge defined along the gutter internal wall when it is received in the recess, thereby retaining the gutter internal wall in the recess of the U-shaped support assembly; the projections being preformed on said one leg to provide a given or required fall when the gutter is in its installed position; and
- a plurality of spacers disposed at spaced intervals along the support assembly, the spacers being arranged to locate between the in-use inner side of the gutter and the upright surface to provide an overflow gap between said upright surface and said gutter
2. A mounting assembly according to claim 1, wherein the spacers are arranged to be disposed between the support assembly and the upright surface.
3. A mounting assembly according to claim 1 or 2, wherein the spacers are formed separately to said support assembly and said gutter.
4. A mounting assembly according to any one of the preceding claims, wherein the spacers incorporate a retaining portion arranged to mount the spacer to either one of the support assembly and the upright surface.
5. A mounting assembly according to claim 4, wherein the spacers comprise a body which in use is arranged to locate between an in-use inner wall of the gutter and the upright surface to provide the overflow gap between said upright surface and said gutter, and the retaining portion extends from the body and is arranged to mount the respective spacer relative to either one of the support assembly or the upright surface.
6. A mounting assembly according to claim 4 or 5, wherein the retaining portions being in the form of clips that locate over an upper edge of the support assembly and/or the upright surface.
7. A mounting assembly according to any one of claims 4 to 6, wherein the
retaining portions are arranged to mount the spacers to the support assembly.
8. A mounting assembly for a channel shaped gutter comprising:
- a support assembly to support the gutter on an upright surface of a building, the support assembly having a U-shape in end profile with two legs, with a space defined between the legs of the U-shape support assembly defining a recess into which an in-use internal wall of the channel-shaped gutter can be received for mounting the gutter to the building and wherein projections are defined on one leg of the U-shape support assembly which extend into the recess and are adapted to engage an elongate ridge defined along the gutter internal wall when it is received in the recess, thereby retaining the gutter internal wall in the recess of the U-shaped support assembly; and
- a plurality of spacers disposed at spaced intervals along the support assembly, the spacers being arranged to locate between the in-use inner side of the gutter and the upright surface to provide an overflow gap between said upright surface and said gutter, wherein the spacers include a body arranged to be disposed between the inner side of the gutter and the upright surface and a retaining portion arranged to mount the spacers to the support assembly, the retaining portions being in the form of clips that locate over an upper edge of the support assembly.
69. A mounting assembly according to any one of the preceding claims, wherein the spacers are pre-attached to the support assembly.
710. A mounting assembly according to either claim 1 or 2, wherein the spacers are integrally formed with the support assembly.
11. A mounting assembly according to claim 10, wherein the spacers incorporate a retaining portion arranged to mount the spacer to the upright surface.
12. A mounting assembly according to claim 11, wherein the spacers comprise a body which in use is arranged to locate between an in-use inner wall of the gutter and the upright surface to provide the overflow gap between said upright surface and said gutter, and the retaining portion extends from the body and is arranged to mount the respective spacer relative to the upright surface.
13. A mounting assembly according to claim 11 or 12, wherein the retaining
portions being in the form of clips that locate over an upper edge of the upright surface.
814. A mounting assembly according to any one of the preceding claims, wherein the support assembly is in the form of one or more elongate mounting strips.
915. A mounting assembly as claimed in any one of claims 1 to 713, wherein the support assembly is in the form of a plurality of brackets.
1016. A spacer when used in a mounting assembly according to claim 1.
1117. A spacer according to claim 1016, when used in a mounting assembly according to claim 1, comprising a body which in use is arranged to locate between an in-use inner wall of the gutter and the upright surface to provide an overflow gap between said upright surface and said gutter, and a retaining portion arranged to mount the spacer relative to one of the support assembly, the gutter or the upright surface.
18. A spacer according to claim 17, when used in a mounting assembly according to claim 1, wherein the retaining portion extends from the body and is arranged to mount the respective spacer relative to the support assembly, the gutter or the upright surface.
1219. A spacer according to claim 1117 or 18, when used in a mounting assembly according to claim 1, wherein the upright surface is a fascia and the retaining portion is arranged for mounting the spacer to the fascia.
1320. A spacer according to claim 1219, when used in a mounting assembly according to claim 1, wherein the retaining portion is in the form of a clip that locates over the fascia.
1421. A spacer according to any one of claims 1116 to 1320, when used in a mounting assembly according to claim 1, further comprising an aperture that extends through said spacer body and arranged to receive a mechanical fastener.
1522. A spacer according to any one of claims 1116 to 1421, when used in a mounting assembly according to claim 1, wherein the spacer is pre-attached to the support assembly.
1623. A spacer according to claim 1117 or 18 when used in a mounting assembly according to claim 1, wherein the spacer incorporates a retaining portion to mount the spacer to the support assembly, the retaining portion being in the form of a clip that locates over an upper edge of the support assembly.
24. A spacer according to claim 17 or 18 when used in a mounting assembly according to claim 1, wherein the spacer incorporates a retaining portion to mount the spacer to the gutter, the retaining portion being in the form of a clip that locates over the gutter.
1625. A spacer when used in a mounting assembly for a channel shaped gutter comprising:
- a support assembly to support the gutter on an upright surface of a building, the support assembly having a U-shape in end profile with two legs, with a space defined between the legs of the U-shape support assembly defining a recess into which an in-use internal wall of the channel-shaped gutter can be received for mounting the gutter to the building and wherein projections are defined on one leg of the U-shape support assembly which extend into the recess and are adapted to engage an elongate ridge defined along the gutter internal wall when it is received in the recess, thereby retaining the gutter internal wall in the recess of the U-shaped support assembly; and
- a plurality of spacers disposed at spaced intervals along the support assembly, the spacers being arranged to locate between the in-use inner side of the gutter and the upright surface to provide an overflow gap between said upright surface and said gutter; the spacer ~~according to claim11 wherein the spacer~~ incorporates a retaining portion to mount the spacer to athe support assembly for supporting the gutter on the upright surface, the retaining portion being in the form of a clip that locates over an upper edge of the support assembly.
1726. A gutter assembly comprising a channel shaped gutter and a mounting assembly according to any one of claims 1 to 915.
1827. A system for supporting a channel-shaped gutter at a building, the system comprising:
a mounting assembly according to any one of claims 1 to 915;
an elongate support that is separate to the support assembly and comprising a first end that is adapted for self securing at or adjacent to the support assembly, and a second opposite end that is adapted for engaging and supporting an outer portion of the gutter when the gutter is mounted at the support assembly.
1928. A system as claimed in any one of claims 1817 to 27, wherein the elongate support is in the form of a support rod.
2029. A system as claimed in claim 1928, wherein the support rod first end is defined by bending a free end portion of the support rod to define a tight loop configuration that projects laterally from a remainder of the support rod.
30. A system for supporting a channel-shaped gutter at a building, the system comprising:
a mounting assembly for a channel shaped gutter comprising:
- a support assembly to support the gutter on an upright surface of a building, the support assembly having a U-shape in end profile with two legs, with a space defined between the legs of the U-shape support assembly defining a recess into which an in-use internal wall of the channel-shaped gutter can be received for mounting the gutter to the building and wherein projections are defined on one leg of the U-shape support assembly which extend into the recess and are adapted to engage an elongate ridge defined along the gutter internal wall when it is received in the recess, thereby retaining the gutter internal wall in the recess of the U-shaped support assembly;
- a plurality of spacers disposed at spaced intervals along the support assembly, the spacers being arranged to locate between the in-use inner side of the gutter and the upright surface to provide an overflow gap between said upright surface and said gutter; and
an elongate support that is separate to the support assembly and comprising a first end that is adapted for self securing at or adjacent to the support assembly, and a second opposite end that is adapted for engaging and supporting an outer portion of the gutter when the gutter is mounted at the support assembly, the elongate support being in the form of a support rod and wherein the support rod first end is defined by bending a free end portion of the support rod to define a tight loop configuration that projects laterally from a remainder of the support rod.
2131. A system as claimed in either claim ~~19 or 20~~ 28 or 29, wherein the support rod second end is defined by bending a free end portion of the support rod to define an open loop configuration thereat.
2232. A system as claimed in any one of claims ~~19 to 21~~ 28 to 31, wherein the channel-shaped gutter is of a type comprising a bent back lip at an in-use distal edge thereof, and the support rod second end is shaped so that it can be interferingly retained within and under this lip.
The amendments added the feature of preformed projections on said one leg of the support assembly to overcome the novelty and inventive step objections raised in the re-examination reports. The amendments also add or further define features in the dependent claims relating to the spacers and the support assembly.
Section 102(1) - Particular i
Pre-Formed projections
Claim 1 is as follows (with amendments indicated in underline):
1. A mounting assembly for a channel shaped gutter comprising:
- a support assembly to support the gutter on an upright surface of a building, the support assembly having a U-shape in end profile with two legs, with a space defined between the legs of the U-shape support assembly defining a recess into which an in-use internal wall of the channel-shaped gutter can be received for mounting the gutter to the building and wherein projections are defined on one leg of the U-shape support assembly which extend into the recess and are adapted to engage an elongate ridge defined along the gutter internal wall when it is received in the recess, thereby retaining the gutter internal wall in the recess of the U-shaped support assembly; the projections being preformed on said one leg to provide a given or required fall when the gutter is in its installed position; and
- a plurality of spacers disposed at spaced intervals along the support assembly, the spacers being arranged to locate between the in-use inner side of the gutter and the upright surface to provide an overflow gap between said upright surface and said gutter.
The Opponent states:
“The Patentees have sought to amend claim 1 so that it now recites that projections on one leg of the U shaped support assembly are pre-formed on the leg to provide a given or required fall when the gutter is in its installed position. As noted by Bull, there are a number of ways the projections can be pre-formed to provide the fall in the gutter. Bull identifies three;
- The projections could extend at different angles,
- The projections could be differently shaped; or
- The projections could be positioned at different heights.”
“In patent application 2008204733 as filed (the Specification as Filed) the disclosure of this feature is far narrower then what is added to claim 1 by amendment. In particular, in this document at page 15 lines 20-23 which discusses the assembly shown in figure 10, it is disclosed that the projections are pre-formed by being located at different heights on the leg of the U shaped assembly.”
Figure 10 is reproduced below:
The corresponding description (as proposed to be amended on 22 July 2016) states at page 16 lines 21 to 24:
“The gutter mounting section 223 incorporates a plurality of retaining clips 225 which include projections 226 which extend into the recess 240. These retaining clips 225 are arranged along the gutter mounting section 223 and can be aligned so as to correspond with a fall required when the gutter is in an installed position.”
The Opponent argues that:
“There is no explicit disclosure in the Specification as Filed of the projections on the leg of the support assembly being pre formed generally, or being pre-formed in any other way other than being positioned at different heights on the leg. Nor is it possible to draw out any broader implicit disclosures from the specific embodiment given in the document. The only real and recently [sic] clear disclosure given in the document is the location of the projections at different heights.”
The Patentee states:
“There is nothing in the above disclosure which warrants the narrow interpretation put forward by the Opponent. To the contrary, the person skilled in the art would understand from the above disclosure that the projections can be pre-formed in a number of ways to “provide the given/required fall” (Manning at [20] – [23]).”
Analysis
The amendment to the claim adds a limitation on the feature of the projections. Because the amendment further defines one feature of the claim, the Opponent’s argument that the amendment is not in substance disclosed or fairly based on the description appears to also require that the claim before amendment also suffered from these deficiencies. The proper process for arguing that the claims before amendment (i.e. at acceptance or at grant) were not fairly based is in opposition or re-examination (respectively). Notwithstanding the Opponent’s approach, I will address the substance of this particular of the opposition.
The Opponent’s argument on in substance disclosure and fair basis either requires that either: a) the claims must be specific to the embodiment of the invention, or b) the specification must provide a plurality of embodiments that would fall within the scope of the claim.
The purpose of the projections is to engage an elongated ridge defined along the gutter internal wall. The amendment further specifies that the projections provide a fall in the gutter. I consider that the projections are well defined in the claim (both before and after amendment) and are not in any way speculative. Thus to be fairly based the claim does not need to be specific to the shape of the projections only as embodied, nor does the specification need to provide a plurality of shapes and configurations of projections that would fall within the scope of the claim.
I am satisfied that the amendment to claim 1 to include the limitation on the projections is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
Section 102(1) - Particular ii.
The Opponent no longer presses this objection.
Section 102(1) - Particular iii - Claim 11 as appended to claim 10
Retaining portion
Claims 10 and 11 are as follows:
10. A mounting assembly according to either claim 1 or 2, wherein the spacers are integrally formed with the support assembly.
11. A mounting assembly according to claim 10, wherein the spacers incorporate a retaining portion arranged to mount the spacer to the upright surface.
The Opponent states:
“Claim 10 of the Patent recites that the spaces [sic] are integrally formed with the support assembly. There is no difficulty with the meaning of this phrase. It means that they are formed as the same item i.e they are unitary. The Patentees seek to add claim 11 as appended to claim 10 which recites that the spacers incorporate a retaining portion arranged to mount the spacers to the upright surface of a building.
The difficulty presented by this amendment is that it introduces a combination of features not disclosed in the Specification as Filed. In the Specification as Filed, the key discussion of the spacer having retaining portions can be found at page 7 line 6-29. Two alternatives are discussed;
- A retaining portion arranged to mount a spacer to the support assembly, in which case they are necessarily not integral (see page 7 lines 18-19).
- A retaining portion shaped to locate over a fascia or the like. This is said to allow the spacers to be retained in place to simplify the installation of the mounting assembly (see page 7 lines 23-27). In other words it is a system where the spacers are mounted first to the fascia and the separate support assembly is then mounted to the spacers.
Accordingly what is claimed by the combination of claim 11 as appended to claim 10 is not in substance disclosed in the Specification as Filed. There is no disclosure of spacers which are integral with a support assembly, where those spacers have retaining portions to locate over the upright surface of a building.”

The Patentee states:
“Claim 11 as sought to be amended defines spacers incorporating a retaining portion arranged to mount the spacer to the upright surface, where the spacers are also integrally formed with the support assembly.
Contrary to the Opponent’s case, this feature is clearly disclosed in the specification as filed.
In particular, page 7, lines 3-6 states “…the spacers may be directly connected between the upright surface and the in-use inner side of the gutter, in a preferred form the spacers are disposed between the support assembly and the upright surface” (emphasis added).
Furthermore, page 7, lines 7-8 states “..conceivably the spacers may be integrally formed as part of the gutter or support assembly..” (emphasis added).
In addition, page 7, lines 18-19 states: “In a particular embodiment, the spacers incorporate a retaining portion arranged to mount a spacer to one of either the support assembly or the upright surface” (emphasis added). Whilst the Opponent has cited this particular passage, it has failed to appreciate the latter part of that sentence whereby the spacers can mount either the support assembly or the upright surface (OS at [22]). Similarly page 7, lines 23 to 25 states “the retaining portions of the spacers may be shaped to that they can be located over a fascia or the like which constitutes the upright surface on which the gutter is mounted” (emphasis added).
The person skilled in the art would understand from the above disclosure taken together that the spacers can incorporate a retaining portion arranged to mount the spacer to the upright surface, where the spacers are also integrally formed with the support assembly. This is consistent with the analysis of Dr. Manning.”
Dr Manning states at paragraphs 33:
“The common expression "integrally formed" refers to "formed as a single piece", which can take the form of a structural integration of separate components. The term integral does not require one piece or unitary construction. The Cambridge Dictionary defines Integral as - "necessary and important as a part of a whole". Thus, an object may be a portion of a structure and still be removable from that structure. Thus, spacers are integrally formed with the support assembly if they are manufactured as one piece or manufactured separately and somehow connected, even by friction so as to act as one integrally formed unit.”
The description states at page 17 lines 3 to 7:
“The body 231 also incorporates an upwardly extending ledge 238 which in use cooperates with the outwardly extending leg 233 to form a retaining portion 239 operative to receive the support assembly 220 as best illustrated in Figure 13.”
Analysis
Figure 15 discloses a retaining portion arranged to mount the spacer to the upright surface. However figure 15 does not disclose a U-shaped support assembly.
Figure 13 discloses a spacer and U-shaped support assembly. However figure 13 does not disclose a retaining portion to mount the spacer to the upright surface.
The description states at page 8 lines 9 to 15:
“In another form, the retaining portions of the spacers may be shaped so that they can be located over a fascia or the like which constitutes the upright surface on which the gutter is mounted. In this form, the retaining portions may be in the form of a hook which locates over the upper edge of the fascia. Again, having the facility to be able to retain the spacers in place can simplify the installation of the mounting assembly. This latter form of spacer is ideally suited to be used with more conventional mounting assemblies for brackets that incorporate separate support brackets.”
The description provides the concept of the hook to be generally applicable to the embodiments of the invention.
I am satisfied that the amendment to claim 11 to include a hook type retaining member on the U-shaped support assembly is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
Section 102(1) - Particular iv. Claim 13 as appended to claims 11 or 12 as appended to claim 10
Retaining portion
Claim 13 is as follows:
13. A mounting assembly according to claim 11 or 12, wherein the retaining portions being in the form of clips that locate over an upper edge of the upright surface.
The Opponent states:
“Claim 13 of the Patent recites the feature that the retaining portions are in the form of clips that locate over the upper edge of the upright surface. Nowhere in the Specification as Filed is there a disclosure of the use of clips for the retaining portions of the spacers. In the Specification as Filed, there is disclosure of the use of retaining portions in the form of a hook. This is disclosed at page 7 line 25-26 where it recites;
“In this form, the retaining portions may be in the form of a hook which locates over the upper edge of the fascia”.
A hook and clip function in very different ways and to a person skilled in the field of engineering, the terms have very different meanings. As noted by Bull in his first declaration at 16.5;
“A hook is something very different to a clip. A hook works in tension and once the tension is removed, there is a loose connection that can be easily removed from the feature to which it connects. An example of this is a hook at the end of a crane and a picture hook. I would not describe either of these as being a clip. A clip can act in both tension or compression. It is quite different to a hook”.
The Patentee states:
“Firstly, the Applicant submits that the matter claimed by reason of the proposed amendment to claim 13 are not ‘as a result of the amendments’ as required by section 102(1), and thus do not pass the threshold question to be considered under section 102(1). The introduction of claim 13 was made to repeat the subject matter claimed in an existing claim in the amended claim set. The subject matter of the claim 13 was clearly already with the claims before amendment.”
...
“In any event, the Applicant submits that this feature is in substance disclosed in the specification as filed.
As a preliminary issue, claim 13 is qualifying a previous claimed feature (being the retaining portion of the spacer). As such the claim does not extend the scope of protection, rather it is clearly within the scope of that which is defined by claim 10 (in the amended specification). Further claim 13 is clearly within the scope of the disclosure in the specification as filed. On page 7, lines 24-25, it states:
“In another from, the retaining portions of the spacers may be shaped so that they can be located over a fascia or the like which constitutes the upright surface on which the gutter is mounted”
The Opponent has noted, the feature of the retaining portion may be in the form of a hook which locates over the upper edge of fascia / upright surface is disclosed in the specification as filed, for instance at page 7, lines 25 – 26 (OS at [24]).”
In addition, as Dr. Manning has noted, the specification as filed at page 17, lines 19 -22 states:
“In the illustrated form, the building wall 300 is in the form of a fascia and the spacers 330 are arranged so as to incorporate an outwardly directing leg 331 having a downwardly extending distal lip 332 which is arranged to locate over an upper edge 301 of the fascia 300”
As Dr Manning concludes:
“the ‘retaining portion’ of a spacer/support assembly used to mount to the upright surface may be in the form of a hook, a distal lip, or a clip (as shown in Figure 8A) which are synonymous. It should be noted that the upright surface can be in different forms e.g. metal fascia, timber fascia, or the end of a rafter. In each case, hooking/clipping over the top of the fascia is shown by example in Figure 15. Furthermore, the feature of the spacer/ support assembly hooking/clipping over the fascia in combination with the common interpretation of the term "integrally formed with" is in substance disclosed in the specification as filed. (Manning at [42]).
The function of the retaining portion as “a clip” is entirely consistent with the function disclosed in specification as filed. It appears that the Opponent is clearly engaging in "an over meticulous verbal analysis" in considering the issue of support which the Courts have cautioned against. For the above reasons, including those in respect of Claim 11 above at paragraphs 29 to 35, Claim 13 as proposed to be amended does not claim matter that is not substance disclosed in the specification as filed.”
Analysis
I agree with the Patentee that the feature of a retaining portion in the form of clips was previously defined in the claims (e.g. claim 5 of the accepted claims). It is only to the extent that claim 13 is dependent on claim 10 (via claims 11 or 12) that the claim is different to claim 5 of the accepted claims.
Claim 11 defines that the spacers incorporate a retaining portion. The word ‘incorporate’ implies that the retaining portion is part of the spacer.
Mr Bull states in his first declaration:
“I’ve previously discussed the passage at page 7 lines 23-27 which describes to me an arrangement where the spacers and support assembly are separate. There is a disclosure here of retaining portions being shaped to locate over a fascia. One particular form is given and it is a hook that locates over the upper edge of the fascia. A hook is something very different to a clip. A hook works in tension and once the tension is removed, there is a loose connection that can be easily removed from the feature to which it connects. An example of this is a hook at the end of a crane and a picture hook. I would not describe either of these as being a clip. A clip can act in both tension or compression. It is quite different to a hook.”
Mr Manning states:
“Mr. Bull asserts that the use of the term "hook" in the Specification as Filed is inconsistent with the term "clip" (Amended Claim 13) when used in relation to the distal lip used to attach the spacer to the upright surface. I have explained the correspondence between these terms above at paragraph [42].
Further evidence of this correspondence can been found by referring to a Thesaurus of English Language, from which it is apparent that a synonym for 'hook' is 'clasp' and a synonym for 'clasp' is 'clip'. A synonym by definition means a word or phrase that means exactly or nearly the same as another word or phrase in the same language, for example shut is a synonym of close. Accordingly, the reference to spacers containing "clips" as stated in Amended Claim 13 is in substance disclosed in the Specification as Filed when reference is made to "hooks" or a "distal lip".”
Mr Bull and Mr Manning have different understandings of the meaning of a clip; Mr Bull states: “A hook is something very different to a clip” whereas Mr Manning believes a hook and clip to be synonymous. To resolve this, I have looked at the definitions in the Macquarie Dictionary.
The Macquarie dictionary defines a ‘hook’ as:
a curved or angular piece of metal or other firm substance catching, pulling, or sustaining something.
The Macquarie dictionary defines a clip as:
a device for gripping and holding tightly; a metal clasp, especially one for papers, letters, etc.
In light of these definitions of ‘hook’ and ‘clip’ there is clearly significant overlap in their meaning. Both are used to hold things; a ‘hook’ has a curved or angular shape, whereas a ‘clip’ does not have a specific shape. I have found that a retaining portion in the form of a hook integrally formed with the spacer is disclosed in the specification. Given the overlap in definitions of hook and clip, and since a hook integrally formed with the spacer is disclosed, it follows that a clip integrally formed with the spacer is also disclosed.
I am satisfied that the amendment to claim 13 to include a clip retaining member integrally formed with the spacer is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
Section 102(1) – Particular iv. Claim 14 as appended to claim 13 as appended to claims 11 or 12 and 10.
Elongate mounting strip
Claim 14 is as follows:
14. A mounting assembly according to any one of the preceding claims, wherein the support assembly is in the form of one or more elongate mounting strips.
The Opponent states in their submissions:
“Claim 14 recites that the support assembly is in the form of one or more elongate strips. The use of elongate strips for the support assembly is described in the Specification as Filed at page 7 lines 19-32. What is described here is the use of an elongate strip with separate spacers (the reference at page 7 line 21 to the spacers being adapted to receive an edge of the strip makes this clear). This arrangement is illustrated in figures 13-14 where the retaining portion extends over the elongate strip.”
The Opponent further states:
“Another arrangement is described at page 7, lines 23-29 where the retaining portion extends over a fascia. But in this version, the support assembly is a series of support brackets (as made clear at lines 28-29). This arrangement is illustrated in figure 15.”
The Opponent goes on to state:
What is not disclosed in the Specification as Filed is the combination of an elongate strip that has integrally formed spacers, where the spacers have retaining portions in the form of clips that locate over the upright surface. Accordingly, the combination of claims noted above claims matter not in substance disclosed in the Specification as Filed.
The Patentee states:
“Contrary to the Opponent’s submissions, the specification as filed clearly discloses a mounting assembly in the form of an elongate mounting strip:
• at page 3 lines 7 – 8: “For example, when the channel-shaped gutter is mounted to the building via an elongate mounting strip…” (emphasis added).
• at page 7, lines 1 -2: “…the assembly has been developed and is ideally suited to the strip type guttering mounting arrangements disclosed in WO 2004/092509”;
• at page 7, lines 19-20: "In one arrangement where the support assembly is in the form of an "elongate strip" (emphasis added).
Furthermore, for the reasons set out above at paragraphs [29] to [46], the feature of spacers being integrally formed with the support assembly and the retaining portions being in the form of clips is disclosed in combination in the specification as filed. Further this combination is not limited to a particular form of support assembly and as such, includes the support assembly in the form of an elongate strip.”
Mr Manning states:
“It has been previously established that spacers can contain retaining portions and be integrally formed with the support assembly, and contain retaining portions in the form of hooks, clips or distal lips to allow mounting to the upright surface.”
Specification as Filed. Page 7. Lines 6-8.
"In one form the spacers are formed separately to the support assembly. Whilst conceivably the spacers may be integrally formed as part of the gutter or support assembly". (Emphasis added)”
Analysis
The disclosure at page 7 lines 6-8 provide an in substance disclosure of the feature of the spacers integrally formed with the support assembly. It is inherent that if multiple spacers are integrally formed with the support assembly then the support assembly must be elongate.
I am satisfied that the amendment to claim 13 to include a support assembly in the form of an elongate mounting strip with integrally formed spacers is clear and fairly based on the description and complies with s 102(2)(b) and was in substance disclosed thus complying with s 102(1).
Amendments to the description
The amendments to the description proposed on 22 July 2016 appear to be purely cosmetic; removing and replacing coded information in the footer of each page.
The Opponent has provided no submissions on how the amendments to the description are not allowable. Furthermore, I can find nothing in the amendments to the description that would not comply with s 102(1) and 102(b).
Conclusion
The opposition fails on all grounds relied on. The proposed amendments satisfy the requirements of subsections 102(1) and 102(2)(b) of the Patent Act 1990. It follows that a change of priority date of the claims pursuant to s 114 is not appropriate. I allow the amendments.
Costs
On the award of costs the Opponent stated:
“In the event the Hearing Officer decides that the opposition must fail due to the makings of the 1 September amendments, we seek our client's costs of the opposition.”
Although the opposition has been unsuccessful, this is not merely due to the superseding amendments of 1 September. I have found the amendments under opposition would also have been allowable. Thus the opposition would have been unsuccessful even if the superseding amendments had not been made.
Costs typically follow the event and I can see no reason to depart from that approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against Stramit Corporation Pty Limited.
Xavier Gisz
Delegate of the Commissioner of Patents