Stramit Corporation Pty Limited v Guttering No Brackets Pty Ltd & Ian John Higgins - [2017] APO 44

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Stramit Corporation Pty Limited v Guttering No Brackets Pty Ltd & Ian John Higgins [2017] APO 44
Patent Application: 2013204297

Title:Gutter support and mounting assembly

Patent Applicant:  Guttering No Brackets Pty Ltd
  Ian John Higgins
Opponent:  Stramit Corporation Pty Limited.
Delegate:  Greg Powell
Decision Date:  30 August 2017
Hearing Date:  By written submissions 10 July 2017
Catchwords:  PATENTS – opposition to the allowance of amendments under subsections 102(1), 102(2)(a) and 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed – amended claims within scope of claims before amendment – amended claims clear and fairly based – amendment allowed – costs awarded against opponent

Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: Phillips Ormonde Fitzpatrick

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013204297

Title:Gutter support and mounting assembly

Patent Applicant:  Guttering No Brackets Pty Ltd
  Ian John Higgins
Date of Decision:  30 August 2017
DECISION
The opposition fails on all the grounds.
I allow the amendments.
I award cost according to Schedule 8 against Stramit Corporation Pty Limited.
REASONS FOR DECISION
Background

This matter relates to patent application 2013204297 in the name of Guttering No Brackets Pty Ltd and Ian John Higgins (the applicant). The application was accepted on 24 April 2015 and granted on 27 August 2015. On 4 September 2015 a request for re-examination was filed by the Australian Steel Institute.
A number of re-examination reports were issued, culminating in the 5^th report dated 7 July 2016 which stated that all objections raised had been overcome and, once the amendments had been allowed, re-examination would be complete. While a number of amendment requests had been filed during the re-examination process, leave to amend was granted on the amendment request filed on 31 May 2016. Leave to amend was advertised on 11 August 2016. Australian Steel Institute and Stramit Corporation Pty Limited both filed a notice of opposition to the amendments on 11 October 2016. Australian Steel Institute withdrew their opposition on 11 November 2016. It is the opposition by Stramit Corporation Pty Limited (the opponent) that is the subject of this decision.
Grounds of opposition
The statement of grounds and particulars specifies that the amendment does not comply with the requirements of subsection 102(1), paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990 (the Act).
Evidence in Support for the opponent consists of declarations by:
1. Christopher David Schlicht dated 23 January 2017 with exhibit CDS–1, which is a marked-up version of the claims showing all the changes in the pages dated 31 May 2016 from the specification as granted;
1. John Bull dated 23 January 2017 with exhibits JB–1 and JB–2, discussing the meaning of various phrases as well as the whether the features of certain claims are disclosed in the specification as filed.
Evidence in Answer for the applicant consisted of a declaration by Dr Shaun Andrew Manning dated 23 March 2017 with exhibits SAM–1 to SAM–5, discussing whether the features of certain claims are disclosed in the specification as filed, whether the amended claims fell within the scope of the claims as granted and whether the claims were clear and succinct.
Evidence in reply consisted of a second declaration by John Bull dated 27 April 2017 with exhibit JB–3, responding to the observations made by Dr Manning.
The matter was heard by way of written submissions, which both parties were given until 10 July 2017 to complete.
The specification
As is clear from the title, the specification relates to components used in mounting guttering to the outside of a building. The specification states that channel-shaped guttering had been relatively time-consuming to mount until the advent of a mounting strip described in WO 2004/092509 (by the same applicant), which attached to the side of the building and allowed the guttering to be mounted to it. The specification notes that recent forms of guttering had an outer side that was higher than the inner side against the building. These “high front” gutters, while presenting an aesthetically pleasing appearance, introduced a tendency for water to overflow on the inner side of the gutter into the building in the gutter became blocked.
The invention of the present application seeks to address this with a system providing an overflow gap between the gutter and the building surface. The system comprises spacers that are mounted between the mounting strip of the gutter and the building surface.
The legislation
Examination of the application was requested before 15 April 2013 and therefore substantive amendments to the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application.
Subsection 102(1) of the Act as it applies to the present application is as follows:
(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.
Subsection 102(2) of the Act as it applies to the present application is as follows:
(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) or (3).
The “relevant time” for the purpose of s 102(2)(a) is after the specification has been accepted (s 102(2A) of the Act). As the present specification had been accepted when the amendments were requested, the requirements of s 102(2) apply.
The applicable parts of s 40 of the Act as they apply to the present case are set out below:
(2) A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention; and
(b) where it relates to an application for a standard patent – end with a claim or claims defining the invention.
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
The nature of the amendments
The specification at acceptance included 51 claims. Through the re-examination process amendments have reduced that number slightly to 45 claims. While there were a number of amendments proposed during re-examination, as already noted above, the amendments of 31 May 2016 are the subject of this decision.
As proposed to be amended, the claims define a system to provide an overflow gap between a channel-shaped gutter and an upright surface of a building. While various systems are defined, they all have a spacer to be located between the outer surface of the building and a support assembly to which the gutter is mounted.
Ultimately, the opponent’s opposition is limited to a small number of the 45 claims. Specifically they disputed the allowability of the amendment to claims 1, 4, 14, 32 (previously claim 34) and 35 (previously claim 39). The marked up version of these claims is reproduced below:
1.A system to provide an overflow gap between a channel-shaped gutter and an upright surface of a building, the system comprising:
a support assembly for attachment at the building, the support assembly being further adapted for receiving and mounting the gutter thereat; and
a plurality of spacers, the spacers each having a body positioned ~~being arranged~~ to locate between the support assembly ~~an in user inner side of the gutter~~ and the upright surface to space the support assembly from the upright surface and provide the overflow gap between said upright surface and said gutter;
wherein the spacers are formed separately to said support assembly and are pre-attached to the support assembly, or the upright surface before fixing of the support assembly to the upright surface, the system ~~allows~~ allowing any overflow from the gutter to flow between the gutter and the upright surface to prevent backflow into the building.
4.A system to provide an overflow gap between a channel-shaped gutter and an upright surface of a building, the system comprising:
a support assembly for attachment at the building, the support assembly being in the form of a plurality of spaced apart brackets and further adapted for receiving and mounting the gutter thereat; and
a plurality of spacers, the spacers each having a body positioned to locate between respective ones of the brackets and the upright surface to space the brackets from the upright surface and provide the overflow gap between respective ones of adjacent brackets that extends between said upright surface and said gutter;
wherein the spacers are formed separately to said brackets, gutter and upright surface and the system allows any overflow from the gutter to flow between the gutter and the upright surface to prevent backflow into the building.
14.A system to provide an overflow gap between a channel-shaped gutter and an upright surface of a building where the gutter is mountable to the upright surface by a support assembly that attaches at the building and is further adapted for receiving and mounting the gutter thereat, the system comprising:
a plurality of spacers, the spacers being arranged to locate between an in-use inner side of the gutter and the support assembly to provide the overflow gap between said upright surface and said gutter;
wherein the spacers are formed separately to said support assembly, and the spacer and support assembly is fixed to the upright surface by mechanical fasteners that are arranged to extend through the spacers.
32.A system to provide an overflow gap between a channel-shaped gutter and a fascia on a building, where the gutter is mountable to the ~~upright surface~~ facia by a support assembly that attaches at the building and is further adapted for receiving and mounting the gutter thereat, the system comprising:
a fascia; and
a plurality of spacers, the spacers being arranged to locate between an in-use inner side of the gutter and the fascia to provide the overflow gap between said fascia and said gutter;
wherein the spacers are formed separately to the support assembly and are ~~formed in, or~~ mounted to the facia independently of fixing of the support assembly to the fascia, the support assembly being fixed to the upright surface by mechanical fasteners that are arranged to extend through the spacers into the fascia and the system allows any overflow from the gutter to flow between the gutter and the fascia to prevent backflow into the building.
35.A system to provide an overflow gap between a channel-shaped gutter and an upright surface of a building where the gutter is mountable to the upright surface by a support assembly that attaches at the building and is further adapted for receiving and mounting the gutter thereat, the system comprising:
a plurality of spacers, the spacers being arranged to locate between an in-use inner side of the gutter and the upright surface to provide the overflow gap between said upright surface and said gutter;
wherein the spacers are formed separately to said support assembly and at least one spacer incorporates a retaining ~~portion~~ formation arranged to mount that spacer relative to the support assembly~~. 40. A system according~~ independently of fixing of the support assembly to ~~claim 39, wherein~~ the upright surface, the retaining formation comprises an upwardly extending ledge and wherein the support assembly is arranged to be seated on said ledge.
The person skilled in the art
As per Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70] – [71], the person skilled in the art is the hypothetical addressee:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious. …
In Catnic Lord Diplock said (at 242) that skilled addressees are ‘those likely to have a practical interest in the subject matter of [the] invention’. A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention. The skilled addressee seems to me to be a relative expression which does not identify any specific person.”
The opponent submitted that their expert, Mr Bull, was representative of the skilled addressee of the patent. They noted that he had had a long involvement with guttering and had been involved in research and development of guttering products over the last 20 years. The applicant submitted that the views of their expert, Dr Manning, were to be preferred as Mr Bull was employed by the opponent and could not be considered independent. The applicant also stated that Mr Bull had been employed as part of the opponent’s senior leadership team. The opponent noted in their reply that the applicant did not challenge Mr Bull expertise. They also noted that Mr Bull did not make any comment about the ultimate questions of law that arise under Section 102, which was the task specifically asked of Dr Manning.
Ultimately, I do not think there is anything to make of these submissions. I agree that the applicant does not criticise Mr Bull’s expertise. They make reference to the fact that he has been part of the leadership team, but make no comment as to how this affects Mr Bull’s expertise. They are correct that Mr Bull cannot be considered independent of the opponent, but I fail to see, in this case, how that has any effect on the evidence. The questions asked of Dr Manning are about where certain words are found in the originally filed specification, whether the amended claims fall within the scope of the claims as granted, and whether the claims are clear and succinct. These questions, while the same as the ones I am meant to decide, are not what I would characterise as ones that challenge Mr Bull’s evidence such that some possible bias could be a determinative factor in deciding the questions I have before me. As such, I see no reason to reject Mr Bull’s evidence outright.
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] FCA 1358; (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 the test requires “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”
Lockwood also cited with approval what 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”
Claims 1 and 4
The opponent submitted that, as amended, claims 1 and 4 claimed matter not disclosed in the specification. Specifically, the opponent said that, by claiming that the spacer has a body, without further qualification, the claims travelled beyond the originally filed specification. The opponent submitted that the only real disclosure of a body was what was shown in figures 11 and 12. As that disclosure was of a specific shape, and as the claims were not limited to that shape, it could not be said that there was a real and reasonably clear disclosure of any type of body.
The applicant noted that the feature of a “spacer body” were present in the specification as originally filed – particularly original claims 16, 43 and 46 and figures 11 and 12. On this basis the applicant advanced two arguments.
Firstly the applicant submitted that, as the features were there in the original specification, it followed that the features were not introduced “as a result of the amendment”. In this regard, they noted the Full Court decision in RGC Mineral Sands Ltd (supra), which stated in relation to section 102(1):
“That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted (and as it stood at the hearing of the motion at first instance) on the one hand and, on the other hand, as the specification would read if amended in the manner sought. Then one reads the specification as a whole (as so amended in the manner sought) to see whether as a result of the amendments sought (which must mean by reason of the amendment sought) the specification would claim matter not in substance disclosed in the specification as filed. The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression “matter not in substance disclosed in the specification as filed.” The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words “as a result of the amendment” are not to be confused with the expression “after the amendment”.” (emphasis in the original)
They noted that this was consistent with the position in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [38] where Yates J said:
“…the key point is that the words “as a result of the amendment” in s 102(1) are not to be confused with the expression “after the amendment”. The amendment is identified by considering the specification as it stands with how it would stand after the proposed amendment. It is only by that step that one can determine what matter results from the amendment. Once that is determined, the next step is to read the specification as a whole (that is, amended in the manner proposed) and to compare it with what is “in substance disclosed” in the specification as filed. If by reason of the amendment proposed, and for no other reason, the specification would then claim matter not in substance disclosed in the specification as filed, the amendment would not be allowable.”

The opponent submitted that RGC Mineral Sands and Bristol-Meyers stood for something very different to what the applicant contended. They noted that the first step in the passage quoted by the applicant was to identify the difference between the specification as accepted and the specification as it would read if amended. They noted that Bristol-Meyers said in the paragraph quoted by the applicant that:
“It is only by that step that one can determine what matter results from the amendment.”
As to the applicant’s first argument, the opponent is correct. The case law quoted by the applicant makes it clear that, to determine what is introduced by the amendment, the correct approach is to make a comparison between what existed before the amendment and what would exist if the amendment were made. The differences that are apparent are then treated as what was introduced “as a result of the amendment”. The applicant’s approach would add an additional step of ascertaining whether the differences were in the originally filed specification and then treating only those features not in the originally filed specification as being present “as a result of the amendment”. The applicant’s approach would render the whole question in section 102(1) otiose.
Secondly, the applicant submitted that, notwithstanding that figures 11 and 12 showed a specific embodiment of a spacer body, the applicant submitted that the specification was not confined to that embodiment only, as per Lockwood.
The opponent submitted that, while Lockwood held that the description of the Lockwood invention was not confined to the preferred embodiment, this was not a general proposition that should be derived from the Lockwood decision. The emphasised that “body” was only ever used in the discussion of figures 11 and 12. It was never used anywhere else and the specification did not disclose that what was shown in figures 11 and 12 was one embodiment of a feature (i.e. a body) that was understood to take many forms.
As to the applicant’s second argument, I agree with the applicant. To my mind, given the function that is to be performed by the spacer body – i.e. spacing something from something else – it cannot be said that this can be achieved only with the shape shown in figures 11 and 12. While it is certainly true that the spacer body in figures 11 and 12 has a specific shape, I cannot take that disclosure as limiting. It is limiting with a specific type of support assembly (another broad phrase in the claims which, I note, the opponent takes no issue with), but, to my mind, does not limit the body generally. As such, while the specification, to use of the words of Mr Bull, “does not disclose the use of a body of any shape or use of a body per say [sic]”, neither can it be said that the use of “spacer body” travels beyond the disclosure of the specification as filed.
Claim 32
The opponent submitted that claim 32 as amended claimed matter not disclosed in the specification. Specifically, the opponent said that, by requiring that the spacers be mounted to the fascia independently of fixing the support assembly to the fascia, without requiring that a retaining portion be used to mount the spacer, claim 32 was missing an essential feature and, as such, disclosed an arrangement that was not in the specification as originally filed. The opponent noted that the only disclosure of spacers being mounted independently of the support assembly included the requirement that the spacer have a retaining element.
As with the amendments to claims 1 and 4, the applicant submitted once again that, as the features were present in the originally filed specification, they were not present “as a result of the amendment”. As above, I reject that argument. The applicant also submitted that there was a real and reasonably clear disclosure supporting the words of claim 32 without requiring a retaining element.
The opponent’s submission here is essentially the same submission as they made in relation to claims 1 and 4, and, for the same reasons I do not accept it. While it is certainly true that the spacer body in figure 15 has a specific hook that allows the spacer to be held against the facia prior to mounting the support assembly, I cannot take that disclosure as limiting. I cannot see how a hook retaining means affects the notion of independent mounting to the extent that other ways of mounting the spacer must be excluded. As acknowledged by Dr Manning, a hook retaining means certainly makes the job of locating the spacers easier, but it is not the only way this could be achieved, and I do not take the specification as standing for the notion that the hook is the only way.
Claim 35
The opponent submitted that, by amending “retaining portion” of claim 35 to read “retaining formation”, claim 35 as amended claimed matter not disclosed in the specification, since a retaining portion of a spacer was not the same thing as a retaining formation of a spacer. Specifically, the opponent submitted that, according to Mr Bull, a retaining portion described a feature that was integral with the rest of the spacer, while a retaining formation could be either an integral or non-integral part of the spacer.
In response, the applicant made two points. Firstly, it noted that granted claim 40, that became part of claim 35 upon amendment, included the words “the retaining formation”. They also indicated that granted claim 41 (which has become claim 36 during re-examination), has the words “the retaining formation”. They noted that, as such, the words in claim 35 did not occur “as a result of the amendment”.
Secondly, the applicant pointed to the passage at page 17, lines 14-18 of the originally filed specification which stated:
“The spacers are fitted in place by location of the attachment section 222 of the support assembly 220 locating within the retaining formations 239 of the respective spacers.”
They also pointed to an earlier passage on the same page at lines 3–6 which states:
“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.”
The applicant referred to Dr Manning who stated that the use of “retaining portion” was a typographical error.
The opponent responded by indicating that, as claims 40 and 41 were dependent on claim 39 (which has become claim 35), it has to be assumed that the use of “formation” in these claims was in error. They also pointed to the fact that “retaining portion” referred to often in the specification and, therefore, it must be the use of “formation” that is the typo.
While it is arguable that the change of “retaining portion” to “retaining formation” could be said to be not “as a result of the amendment”, I do not have to decide this point as I do not believe the opponent has made out its case in relation to the question whether the amendment claimed matter not in-substance disclosed in the specification as filed. In general terms, to satisfy section 102(1), the original specification had to have disclosed a spacer which “incorporates” something which would mount the spacer to the support assembly. That is clearly disclosed. The choice of “portion” or “formation” seems to me to be mere semantics.
Moreover, in reading claim 40 as it was before amendment, I cannot see how “the retaining formation” of claim 40 could be interpreted to be referring to anything other than the “retaining portion” of claim 39. Certainly, Mr Bull took no issue with the presence of “formation” in claim 40. Whether this was because it was not brought to his attention, or whether he saw no problem with the words does not really change my conclusion that “portion” and “formation” in this case were intended to mean the same thing. This is borne out by the two passages I quoted above. I note that “239” is indicated as being both the retaining portion and formation. It is clear to me that both words are referring to the same feature – i.e. the part into which a portion of the support assembly is inserted.
Conclusion on section 102(1)
The amendments satisfy the requirements of section 102(1).
Paragraph 102(2)(a): In-substance Fall Within the Scope of the Claims Before Amendment
A useful test for considering the allowability of an amendment under paragraph 102(2)(a) is to ask whether a proposed new claim would extend the patent monopoly in the sense that it would make something an infringement which is not an infringement already. This view was expressed in AMP Incorporated v Commissioner of Patents (1974) 48 ALJR 278 where the High Court stated:
“The amending claim must in-substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.”
I note that the allowability of an amendment under paragraph 102(2)(a) is determined by reference to the scope of the claims as a whole before the amendment. It is not that a proposed new claim must in-substance fall within the scope of every claim before amendment, rather it only need to in-substance fall within the scope of broadest claim(s) before amendment.
Claims 1 and 4
The opponent submitted that claim 1 prior to amendment recited that the spacers were arranged to be located between an in-use inner side of the gutter and the upright surface of a building. In contrast, according to the opponent’s submissions, amended claim 1, defining that the spacer has a body located between the support assembly and the upright surface, had a broader scope. The opponent submitted that, since the claims before amendment effectively required the whole spacer to be between the inner side of the gutter and the upright surface, and the claims after amendment only required the body of the spacer to be between the support assembly and the upright surface, this meant that arrangements where only part of the spacer was between the gutter and the upright surface would not have infringed the unamended claim, but did infringe the amended claim. Similar arguments were made for claim 4.
The applicant submitted that figures 11–15 of the specification clearly showed spacers having parts, such as the retaining means discussed above, which were clearly not between the gutter and the upright surface.
The opponent responded by noting that the applicant’s submission had no relevance to this question. According to the opponent, the question under section 102(2)(a) was not whether the features are disclosed, but, instead, did the claims after amendment fall within the scope of the claims before amendment?
I do not believe that the scope of the claims has been impermissibly broadened. I note that the claims before amendment required a spacer, of any type and shape, between the gutter and the upright surface (see unamended claim 1 for example) and that that spacer could have a clip that located over the fascia (see unamended claim 6 for example), over the support assembly (see unamended claim 10 for example), or over the gutter (see unamended claim 11 for example) and which would, therefore, not have been located between the gutter and the upright surface. Clearly, within the scope of claim 1 was a spacer which could have parts which were not located between the gutter and the upright surface. It follows that the scope of the claims has not been impermissibly broadened.
Conclusion on section 102(2)(a)
The amendments satisfy the requirements of section 102(2)(a).
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 [1988] FCA 399; 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).
Claims 1 and 4
The opponent submitted that the amendment to claims 1 and 4 to insert the phrase “positioned to locate” after “the spacers each having a body” renders the scope of the claim unclear. They submitted that Mr Bull had some difficulty in what these words meant.
Mr Bull states in his first declaration:
“13.1What is meant by the words “positioned to locate” is unclear to me. I would have no difficulty understanding the claims if it was stated that the spacers are or can be located between the support assembly and the upright surface. Based on my years of experience in designing guttering and my extensive knowledge of guttering products sold in this country, I am at a loss to understand how the body of a spacer can be “positioned to locate”. The phrase appears to be introducing a requirement of the body which I cannot identify.
13.2Elsewhere in the declaration I comment on the feature of the body of the spacers in claims 1 and 4. For the purpose of this discussion I have proceeded on the basis that “positioned to locate” does not add anything further to the claims and the claims are reciting a body that is positioned or is positionable between the features stated in claims 1 and 4.”
The opponent stated that Dr Manning response (at [57] in Manning’s evidence) to Mr Bull’s confusion was to simply state that he found the meaning of the phrase to be clear and consistent with the specification as filed. However, this is not quite the full story. At [55]–[57] in his declaration, Dr Manning states:
“55.After reading the Amended Claims, I found no examples where Amended Claims were not clear and succinct.
56.As stated above, I note, on reading these documents, the reader must appreciate the substance of the statements even though some word usage may slightly differ between documents.
57.This includes for instance the phrase 'positioned to locate' within the feature discussed at paragraph [48] above. I found the meaning of this phrase to be clear and consistent with the disclosure in the Specification as Filed.”
At the referred-to paragraph [48], Dr Manning had said:
“48.In reference to Amended Claim 1 and Claim 4, I note they contain references to features of the spacers as:
"each having a body positioned to locate between the support assembly and the upright surface" (Claim 1) and the feature of "the spacers having a body positioned to locate between respective ones of the bracket and the upright surface" (Claim 4). (Emphasis added).”
Dr Manning then continues on at [49]:
“49.The two statements relating to the location of the spacers, as described in Claim 1 and Claim 4 of the specification as amended clearly explain a condition where the spacer is positioned between the support assembly (typically a bracket and the vertical surface (typically the fascia)).”
As such, it is not quite accurate to say Dr Manning did not ascribe meaning to the phrase. He quite clearly has the view that the words mean that the spacer is located between the support assembly and the fascia.
In my opinion, the phrase is clear. As is well understood, it is necessary to construe phrases within a claim in their context. With this position, I note that claim 1 defines the spacer as being:
“preattached to the support assembly, or the upright surface before fixing of the support assembly to the upright surface, the system allowing any overflow from the gutter to flow between the gutter and the upright surface to prevent backflow into the building”,
and claim 4 defines that the spacer is:
“between respective ones of the brackets and the upright surface to space the brackets from the upright surface and provide the overflow gap between respective ones of adjacent brackets that extends between said upright surface and said gutter;
wherein the spacers are formed separately to said brackets, gutter and upright surface and the system allows any overflow from the gutter to flow between the gutter and the upright surface to prevent backflow into the building.”
In this context it seems clear to me that the claim, when stating that the spacers are “positioned to locate”, is saying that the spacers, when located, allow for overflow from the guttering to flow through the gap created between the support assembly and the fascia so as to prevent the overflow running into the building.
There is little doubt that “positioned to locate” is quite inelegant, and I understand the opponent’s point. However, it is not permissible to take words out of context and find something unclear about them. This will always be possible, but is not the correct approach. Nevertheless, it appears to be what Mr Bull has done. In any event, I note that Mr Bull found a way to provide an interpretation of the words (see paragraph 13.2 of his evidence that I have set out in [54] above). I also note that his meaning is very similar to the meaning given by Dr Manning in [49] of his evidence.
Claim 14
The opponent submitted that independent claim 14 was unclear. They submitted that it recited that the spacers and support assembly were fixed to the surface by mechanical fasteners that were arranged to extend through the spacers, but, as these features were repeated in claim 19 (which was one of the dependent claims hierarchically below claim 14), the scope of claim 14 was unclear. The applicant submitted that the claim was clear as there was nothing contradictory that would give rise to a clarity issue, and that the other permutations available through claim dependencies meant no redundancy arose. The applicant noted the decision in WorleyParsons Services Pty Limited v Hatch Pty Ltd [2014] APO 72 which had found that redundancy did not automatically render claims unclear. The opponent responded stating that claim 19 did not avoid redundancy by virtue of the possible permutations and that the finding in WorleyParsons did not establish a general principle.
To my mind, the opponent’s argument has no merit. As noted above, as per Monsanto, 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”. In this regard, neither expert for either party made any comment about claim 14 or claim 19 being unclear because of this apparent repetition.
Furthermore, assuming for the moment that claim 19 is redundant because it repeats the words of claim 14, I do not understand why that renders the scopes of claim 14 and 19 unclear. I accept that there is a principle of construction to construe a claim to avoid redundancy. However, this is only one approach to construction, and a consideration must be made in view of the document as a whole. Is the opponent saying that mentioning mechanical fasteners in claim 19 somehow throws doubt on whether mechanical fasteners are present in claim 14? I cannot see how this can possibly be the case. The mechanical fasteners are in claim 14. I accept that they are in claim 19 as well, but can see no reason to doubt the scope of claim 14.

Furthermore, the hearing officer in WorleyParsons found:
“75WorleyParsons also submitted that claim 4 unnecessarily repeats features of claim 1 and thus lacks succinctness. I accept that claim 4 may be redundant in view of claim 1. However this does not give rise to a lack of clarity in relation to the scope of either of claims 1 or 4 and I would not consider a single redundant claim to render the claim set as a whole so repetitive as to lack succinctness.”
While I accept that this passage cannot be said to lay down a general principle, the opponent has not actually indicated why that finding is not apposite here.
Conclusion on section 102(2)(b)
The amendments satisfy the requirements of section 102(2)(b)
Conclusion
The opposition is unsuccessful on all grounds.
I will allow the amendments.
Costs
It is usual for costs to follow the event and I can see no reason to vary this approach here.
As opposition has been unsuccessful on all grounds. I award costs against the opponent (Stramit Corporation Pty Limited).
Greg Powell
Delegate of the Commissioner of Patents