TCT Group Pty Ltd v Brolock Pty Ltd
[2024] APO 7
•9 February 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
TCT Group Pty Ltd v Brolock Pty Ltd [2024] APO 7
Patent Application: 2021271942
Title:A Hinge
Patent Applicant: Brolock Pty Ltd
Opponent: TCT Group Pty Ltd
Delegate: D. S. Triffett
Decision Date: 9 February 2024
Hearing Date: Written submissions completed on 17 November 2023.
Catchwords: PATENTS – consideration of allowability of amendments under section 102 – s 102(1) whether the amendments extend beyond the disclosure as filed – s 102(2)(a) whether, as a result of the amendment, a claim would not in substance fall within the scope of the claims of the specification before amendment – s 102(2)(b) whether, as a result of the amendments, the claims are not clear and not supported – opposition unsuccessful – amendments are allowable – costs awarded.
Representation: Patent attorney for the applicant: Adams Pluck
Patent attorney for the opponent: Wrays Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2021271942
Title:A Hinge
Patent Applicant: Brolock Pty Ltd
Date of Decision: 9 February 2024
DECISION
The amendments are allowable, and I hereby allow the amendments advertised for opposition on 6 April 2023. The opposition is unsuccessful.
Costs according to Schedule 8 are awarded against the Opponent, TCT Group Pty Ltd.
REASONS FOR DECISION
The present matter relates to Australian Application 2021271942 (the application) in the name of Brolock Pty Ltd (the Applicant) and an opposition to an amendment under s 104(4) of the Patents Act 1990 (Cth)(the Act) by TCT Group Pty Ltd (the Opponent).
The application was filed as International Patent Application PCT/AU2021/050427 on 10 May 2021 and published as WO2021/226657 on 18 November 2021. The application entered national phase in Australia on 23 November 2021. The application was advertised as accepted on 27 January 2022. A notice of opposition to the grant of the patent under s59 of the Act was filed on 27 April 2022.
The Applicant filed a request to amend the specification on 30 December 2022 (the amendment). Leave to amend was granted and the application for amendment advertised for opposition on 6 April 2023. A notice of opposition to the amendment was filed by the Opponent on 6 June 2023. The present determination relates to the s104 opposition.
A statement of grounds and particulars (SGP) was filed on 6 July 2023. Neither party filed evidence in the opposition.
The Opponent filed Submissions in Support (Written Submissions in Support) on 6 October 2023. The Applicant filed Submissions in Answer (Written Submissions in Answer) on 3 November 2023. The Opponent filed Submissions in Reply (Written Submissions in Reply) on 17 November 2023.
Onus
The substantive amendments to the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) apply to the present case. The standard of proof in opposition proceedings, including oppositions under s 104(4),[1] is the balance of probabilities. The opponent bears the onus of proof.
[1] Cytec Industries Inc. v Nalco Company [2018] APO 4 at [18].
The relevant legislation
The relevant provision of the Act is subsection 102, which is set out below:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)the complete specification as filed;
(b)other prescribed documents (if any).
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)A claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)The specification would not comply with subsection 40(2), (3) or (3A).
Subsection 102(2A)(a) states that the “relevant time” means after the specification has been accepted. As the present specification had been accepted when the amendments were requested, the requirements of subsection 102(2) apply.
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be as a result of the amendment.[2] If any of these matters do not arise as a result of the amendments, for example if the particular issue existed prior to amendment, then it will not result in the amendment being not allowable. However, the issue may still be relevant to the s 59 opposition.
Applicable Law
Section 102(1)
[2] United States Gypsum Company v CSR Building Products Ltd [2017] FCA 595 at [34] to [36].
10.In Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328; 151 IPR 181 (‘CSIRO v BASF’), Beach J concluded that the approach to be taken under section 102(1) should align with the approach in the UK and Europe.[3]
[3] CSIRO v BASF at [185].
11.Firstly, in CSIRO v BASF at [14], Beach J stated that a matter arising “as a result of the amendment” requires a comparison between the application as accepted and the application as proposed to be amended:
“Now it is not in doubt that the matter arising ‘as a result of the amendment’ is identified by identifying the difference between the application as accepted and the application as proposed to be amended. One then compares what is disclosed in the application as proposed to be amended, of course read as a whole, with what is disclosed in the application as filed. If as a result of the amendment proposed, the specification would disclose or claim matter that extends beyond that disclosed in the application as filed, the amendment is not allowable. Moreover, part of the analysis concerning construing the application as filed is to be undertaken through the eyes of a person skilled in the art at the relevant time.” (italics in original)
12.Upon reviewing UK authorities, Beach J in CSIRO v BASF at [202] referred to Richardson-Vicks Inc’s Patent [1995] RPC 568 where it was observed at [576]:
“I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.”
13.Further observations made by Beach J in CSIRO v BASF regarding section 102(1) have been conveniently summarised by the Delegate in 1414 Degrees Limited V Climate Change Technologies Pty Ltd [2022] APO 38 at [14]:
i)“the test is a strict one”;[4]
ii)“subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed”;[5]
iii)“the required disclosure may be express or implied ... a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person”;[6] and
iv)“context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application.”[7]
[4] Ibid at [215].
[5] Ibid at [216].
[6] Ibid at [217].
[7] Ibid at [218].
14.My understanding is that the concept of “intermediate generalisation” is at the heart of the present opposition. This concept and its relevance to the consideration under subsection 102(1) was explained by Beach J as follows:
“An amendment is not allowable if it takes a feature which is only disclosed in a particular context and seeks to introduce it into a claim deprived of that context. In the United Kingdom, this is described as an ‘intermediate generalisation’ and is an established aspect of ‘added matter’”.[8]
[8] Ibid at [205].
15.Beach J also summarised some of the principles set out in several UK decisions:
“211. In summary, an amendment utilising a feature may amount to added subject matter, such that it is not relevantly disclosed, even where there is a literal reference to such a feature in the specification as filed. An example of where this may occur is where by reason of the amendment, a feature that was not suggested to be significant is, for the first time, suggested to have a technical significance. Such a suggestion of technical significance might arise where a feature is taken from a specific embodiment, and introduced into a claim in a manner that is stripped from relevant context provided by that embodiment. To avoid a conclusion of added subject matter, the skilled person must have appreciated from the complete specification as filed that the selected feature was more generally applicable. This may involve asking whether the skilled person is being presented with any new information about the invention which is not directly and unambiguously apparent from the original disclosure. Further, even if a feature was suggested to be technically significant, an impermissible intermediate generalisation may take place if by the amendment the feature is used in a manner significantly different from its original context.
212 Further, what constitutes an impermissible addition of subject matter by way of an ‘intermediate generalisation’ is to be distinguished from an amendment that claims a sub-class of an inventive concept, whether or not it is presented as inventively distinct in the specification as filed. This is consistent also with established practice in relation to patent claiming, where a patent will routinely include cascading claims directed to progressively narrower characterisations of the disclosed invention. A patent applicant is not limited to a single patent claim, directed to a preferred embodiment.
213 Further, there may be an impermissible intermediate generalisation where a new combination of features is sought to be created by the proposed amendment which was not apparent in the application as filed. As has been pointed out... the question is ‘whether the features combined in the amended claim were disclosed as a combination in the application [as filed]’” (citation omitted).[9]
[9] Ibid at [211]-[213].
16.These are the principles that I will apply in the present opposition.
Section 102(2)
17.Relevant principles applying to s 102(2)(a) are conveniently laid out by Yates J in Bristol-Myers Squibb Company v Apotext Pty Ltd [2010] FCA 814 at [40]:
“Consideration of the prohibition in s 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Once again the prohibition is conditioned on a state of affairs existing as a result of the amendment, namely that a claim would not in substance fall within the scope of the claims before amendment. Thus the identification of the amendment is, once again, an important first step. Moreover, the reference to “within the scope of the claims” before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims. For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment...”
18.Relevant to determining the scope, claim construction was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 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. Words used in a specification, including the claims, are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification... construction of a specification, including the claims, is ultimately a question of law for the Court... 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... However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification...”
Claims as proposed to be amended on 30 December 2022
19.The amendments are shown in the following marked-up version (with words added in underline and words removed in strikethrough in comparison to the claims as accepted):
1. A hinge including:
a first hinge portion;
a second hinge portion;
a biasing
meansspring; andat least one hydraulic damper;
the first and second hinge portions are connected together and are arranged to pivot with respect to one another about a hinge axis between an open condition and a closed condition;
the biasing
meansspring is arranged to bias the hinge towards the closed condition;in use the at least one hydraulic damper is compressed from an extended condition to a retracted condition as the hinge moves from the open condition to the closed condition;
the first hinge portion includes a first hinge member, and a first clamping member;
the hinge is arranged to attach to a glass panel which is provided with an edge recess, the first hinge portion is arranged to attach to the glass panel by sandwiching the glass panel between the first hinge member and the first clamping member;
and when attached to the panel in use the at least one damper is located outside of the planes which describe the faces of the glass panel and inside the first hinge member; andA hinge according to claim 1wherein the damper moves in a direction which is substantially parallel to the hinge axis.
3.2. A hinge according toeither ofclaims1or 2wherein the hydraulic damper is actuated by way of a cam.
2. A hinge according to claim 1 wherein the damper moves in a direction which is substantially parallel to the hinge axis.
4.3. A hinge according toany proceeding claimclaim 2 wherein the hydraulic damper is housed inside a sleeve which includes a sloped surface provided at one end and the cam moves across the sloped surface to compress the damper during a hinge closing operation.
4. A hinge according to claim 3 wherein the biasing spring is mounted in a hollow
barrel portion of the hinge.
4.5. A hinge according toany preceding claimclaim4wherein thehydraulic damper includes a sloped surface provided at one end and the cam moves across the sloped surface to compress the damper during a hinge closing operation.cam is a rotary cam which is fitted to the barrel portion of the hinge.
5. A hinge according to claim 4 wherein the hydraulic damper includes a second sloped surface provided at the other end of the damper and a second cam which moves across the second sloped surface to thereby compress the damper from both ends.6. A hinge according to claim 5 wherein, during a hinge closing operation, contact between the cam and the housing commences when the hinge is at about a 35 degree angle away from its closed condition.
6. A hinge according to either of claims 4 or 5 wherein the movement of the cam causes rotation of its associated sloped surface.
7. A hinge according to claim 6 wherein the first hinge portion includes an insert portion which locates in the edge recess of the glass, the insert portion includes a guard portion which protects the cam to reduce the possibility of a person’s fingers becoming inadvertently pinched in the hinge when the hinge is opened and closed during use.
7. A hinge according to either of claims 4 or 5 wherein the sloped surface or surfaces are helical.
8. A hinge according to any one of claims 3 to 7 wherein the cam includes a roller.
Section 102(1) – Extends Beyond Disclosure
‘Biasing Means’
20. In the amendment, the Applicant has replaced the feature of a ‘biasing means’ in claim 1 with the feature of a ‘biasing spring’.
21.The Opponent submits that the Applicant effectively asserts that the specification as filed disclosed the ‘biasing means’ of the alleged invention as no more than a spring. The Opponent submits that the spring 42 is just one of several component parts of the “biasing means” of the alleged invention which is “arranged to bias the hinge towards the closed condition.”[10] The Opponent further submits that the specification as filed provides no disclosure of a “biasing means” of the alleged invention that is no more than just a spring, and therefore replacing “biasing means” with “biasing spring” provides an “intermediate generalisation” and results in the specification claiming and disclosing matter that extends beyond what is disclosed in the specification as filed.[11]
[10] Written Submissions in Support at 1.4.
[11] Written Submissions in Support at 1.5-1.6.
22.The Applicant responds by submitting that the phrase “biasing means” is used in the detailed description to explain the location of the biasing spring 42 and it would be very clear to the skilled reader that a “bearing” would play no role in biasing the hinge.[12]
[12] Written Submissions in Answer at Page 2, 1 a).
23.The Opponent submits that contrary to the assertion of the Applicant, the spring 42 is not disclosed as the “biasing means” but rather, the spring 42 is just one element or part of an assembly 40 that forms the “biasing means.”[13] The Opponent further submits that if the term “biasing means” in claim 1 of the opposed application were allowed to be amended to read “biasing spring”, the disclosure of the specification would be extended to specifically cover all kinds of springs, e.g., compression springs, leaf springs, etc., in a range of embodiments and assemblies that were never disclosed per se as forming part of the alleged invention in the specification as filed.[14]
[13] Written Submissions in Reply at 1.4.
[14] Written Submissions in Reply at 1.5.
24.There is no explicit dictionary definition of the term ‘biasing means’ in the specification. Page 1, line 12 states that “hinges will often include some type of biasing means such as a [emphasis added] spring which biases the door to its closed position.” This language appears to suggest that a spring is an example of a biasing means which could include other things. What is clear is that the “biasing means” has a functional limitation such that it is arranged to bias the hinge towards the closed condition.[15]
[15] Specification at Page 2, line 11.
25.The term “biasing means” is further disclosed in the specification with reference to figure 4:
“[h]inge 10 includes a biasing means in the form of a bearing and spring tensioner assembly 40 which is arranged to bias the hinge 10 towards the closed condition.”[16]
…
“[t]he spring tensioner assembly 40 also acts as a pivot for the hinge axis about which the hinge members 21, 31 can rotate with respect to one another.
…
“[t]he bearing and tensioner assembly 40 includes a tensioning member 41 which is indexed by a series of circumferentially spaced holes which allow it to be rotated with a tool as will be later described. Assembly 40 further includes a spring and a coupling.”[17]
…“Spring 42 provides a biasing force to bias the hinge towards its closed condition as seen in figures 1 to 5.”[18][16] Specification at Page 4, lines 10-12.
[17] Specification at Page 4, lines 16-19.
[18] Specification at Page 4, lines 28-29.
26.It is clear that the preferred embodiment for a “biasing means” is one having at least three components, a tensioning member, a spring and a coupling. Nowhere in the specification provides any embodiment of a “biasing means” other than depicted in figure 4.
27.As the specification fails to create an explicit dictionary definition for the term “biasing means”, I will consider the plain meaning of the word in the context of the specification when read as a whole. The word “bias” is defined in the Oxford English Dictionary as “[a] tendency to move in a certain direction or way, given to an armature, pointer, etc (e.g. by a spring, weight, or magnetic field).”[19] Therefore, the plain meaning of the word “biasing means” would be any means to create a tendency to move the hinge towards the closed condition. A person skilled in the art would understand that such a “biasing means” could include a spring as disclosed in figure 4 but could also include any means that creates a tendency to move the hinge towards the closed condition, such as a hydraulic means for example.
[19] Oxford English Dictionary, <bias, n., adj., & adv. meanings, etymology and more | Oxford English Dictionary (oed.com)> at 7 February 2024.
28.Therefore, contrary to the Opponent’s submissions, I consider that replacing “biasing means” with “biasing spring” in claim 1 does not provide an “intermediate generalisation” within the meaning of that principle in CSIRO v BASF. As Beach J noted in CSIRO v BASF, “what constitutes an impermissible addition of subject matter by way of an ‘intermediate generalisation’ is to be distinguished from an amendment that claims a sub-class of an inventive concept, whether or not it is presented as inventively distinct in the specification as filed.”[20] I consider that a “biasing spring” is merely a sub-class of a “biasing means”. This can be distinguished from CSIRO v BASF where the invention was directed to a delta-6 desaturase characterised by substrate specificity and conversion preference. The specification disclosed these features together, but not individually. An amendment to define the enzyme only by its substrate specificity was considered an impermissible immediate generalisation since in the context of the specification as filed the two properties were always together.
[20] CSIRO v BASF at [212].
29.In contrast to the situation in CSIRO v BASF, there is no disclosure or suggestion that the “biasing means” must encompass a tensioning member, a spring and a coupling. Such a biasing means is only considered a preferred embodiment, and Justice Beach noted in CSIRO v BASF that “[a] patent applicant is not limited to a single patent claim, directed to a preferred embodiment.”[21]
[21] Ibid.
30.Therefore, I consider an amendment to replace “biasing means” with “biasing spring” in claim 1 is allowable as it does not result in the specification claiming matter that is not disclosed in the specification as filed.
Hydraulic damper “is housed inside a sleeve which” includes a sloped surface
31.The Opponent submits that by inserting the feature in claim 3 that the hydraulic damper “is housed inside a sleeve which [proposed amended words underlined] includes a sloped surface provided at one end”, the Applicant has isolated and selectively introduced a specific feature of the damping mechanism of the hinge to the exclusion of many other specific features of that embodiment.[22] The Opponent submits that this is an act of taking a feature which is only disclosed in a particular context and seeking to introduce it into a claim deprived of that context.[23]
[22] Written Submissions in Support at 1.7.
[23] Written Submissions in Support at 1.7.
32.The Applicant submits that the words “is housed inside a sleeve which’ were inserted for improved clarity because it had been realised that the damper itself does not include a sloped surface and it is not described this way in the description. Rather, the sloped surface is part of a sleeve in which the damper is housed.[24] The Applicant points to parts of the description which describe the provision of a sleeve with a sloped surface which houses the damper.[25]
[24] Written Submissions in Answer at Page 2, 1 b).
[25] Written Submissions in Answer at Page 2, 1 b).
33.Some of these references include:
“Hinge 10 further includes a damping mechanism which includes a spring loaded hydraulic damper 51 which is housed inside the sleeve 53.”[26]
…“When the hinge is in the closed condition, the spring loaded hydraulic damper 51 is in its retracted (i.e. compressed) position and is maintained in that position by cam 27 which bears against an upper region of the sloped surface 54 of sleeve 53.”[27]
[26] Specification at Page 5, lines 5-6.
[27] Specification at Page 5, lines 19-22.
34.The Applicant responds to the Opponent’s argument that other features should also be defined in the claim, by submitting that these other features are not related to the sloped surface being part of a sleeve in which the damper is housed.[28]
[28] Written Submissions in Answer at Page 2, 1 b).
35.The Opponent responds by submitting that the features of the “damping mechanism” all have a “clearly recognisable functional or structural relationship”, and that it is neither appropriate nor allowable for the Applicant then subsequently to “cherry pick” features from a specific disclosure in an effort to elevate the individual relevance of one of the features as compared to the others.[29]
[29] Written Submissions in Reply at 1.9.
36.References to a “sloped surface” in the specification include:
“The hydraulic damper may include a sloped surface [emphasis added] provided at one end and the cam moves across the sloped surface to compress the damper during a hinge closing operation.”[30]
…
“The hydraulic damper may include a second sloped surface [emphasis added] provided at the other end of the damper and a second cam which moves across the second sloped surface to thereby compress the damper from both ends.”[31]
…
“When the hinge is in the closed condition, the spring loaded hydraulic damper 51 is in its retracted (i.e. compressed) position and is maintained in that position by cam 27 which bears against an upper region of the sloped surface [emphasis added] 54 of sleeve 53.”[32]
…“As hinge 10 moves from the open condition to its closed condition, the cam 27 approaches the sloped surface [emphasis added] 54 of sleeve 53.”[33]
[30] Specification at Page 2, lines 25-27.
[31] Specification at Page 2, lines 29-31.
[32] Specification at Page 5, lines 19-22.
[33] Specification at Page 6, lines 1-3.
37.While the first two references refer to the hydraulic damper including a sloped surface, the second two references refer to the upper region of the sleeve having the sloped surface.
38.The specification further provides disclosure of the damper being housed inside a sleeve:
“Hinge 10 further includes a damping mechanism which includes a spring loaded hydraulic damper 51 which is housed inside a sleeve 53.”[34]
[34] Specification at Page 5, lines 5-6.
39.The specification further details several instances that refer to the cam approaching the sloped surface of the sleeve (Page 6, lines 1-3; Page 6, lines 12-13; Page 5, lines 16-19; Page 8, lines 1-2).
40.I consider that the specification as originally filed discloses a spring loaded hydraulic damper 51 in its retracted (i.e. compressed) position that is maintained in that position by cam 27 which bears against an upper region of the sloped surface 54 of sleeve 53 (See figure 4). An amendment that seeks to make the claims consistent with that disclosure, in my opinion, does not extend beyond the disclosure of the specification as originally filed.
“Biasing spring” is “mounted in a hollow barrel portion of the hinge”
41.The Opponent submits that the Applicant by inserting the feature that the “biasing spring” is “mounted in a hollow barrel portion of the hinge” in claim 4, is claiming matter that extends beyond what is disclosed in the specification as filed.[35]
[35] Written Submissions in Support at 1.11-1.12.
42.The Applicant responds by submitting that the amendment was made as a limitation to the scope of claim 1 by defining the location of the biasing spring in the hinge.[36]
[36] Written Submissions in Answer at Page 3, 1 c).
43.The specification states that “[t]he tensioner assembly 40 is housed in a hollow barrel portion 23 of first hinge member 21.”[37] As the tensioner assembly 40 comprises the “biasing spring”, there is disclosure in the specification as filed for the biasing spring being housed in a hollow barrel portion of the hinge.
[37] Specification at Page 4, lines 21-22.
44.The specification as filed does not explicitly disclose the biasing spring being “mounted” in a hollow barrel portion of the hinge. The word “mount” is defined in the Macquarie Dictionary as “to fix on or in a setting”.[38] It can be implied from figure 4 that the spring 42 is “mounted” (or fixed) inside the hollow barrel portion 23 of the hinge. While the description does not use the phrase “mounted”, it is implicitly disclosed by the specification that the biasing spring 42 is fixed (i.e. mounted) to the hinge, as otherwise it could not function. The amendment therefore only makes explicit what was previously implicitly disclosed and does not result in the specification claiming matter that is not disclosed in the specification as filed.
“The cam is a rotary cam which is fitted to the barrel portion of the hinge”
[38] Macquarie Dictionary (7th ed, 2006) 515.
45.The Opponent submits that the amendment to claim 5 to state that “the cam is a rotary cam which is fitted to the barrel portion of the hinge” is claiming matter that extends beyond what is disclosed in the specification as filed. The Opponent submits further that the amendment involves taking a feature which is only disclosed in a particular context (i.e., the rotary cam 27 being fitted to arm 25) and seeking to introduce it into a claim deprived of that context.[39]
[39] Written Submissions in Support at 1.13.
46.The Applicant responds by submitting that the cam is clearly described and illustrated in the embodiment of figures 1 to 5 as being mounted to the barrel portion.[40] The Opponent in their response submits that the arm 25 is both structurally and functionally important in order for the cam 27 to be able to engage with the sloped surface provided at one end of the sleeve 53.[41]
[40] Written Submissions in Answer at Page 3, 1 d).
[41] Written Submissions in Reply at 1.11.
47.The specification as originally filed provides two mentions of a “rotary cam”:
“The barrel portion 22 [sic] of first hinge portion 21 includes a rotary cam 27 which is fitted to arm 25.”[42]
…
“The rotary cam 27 rotates away from the housing 53 and the damper 51 is free to expand under its own internal spring pressure to adopt its extended position.”[43]
[42] Specification at Page 5, lines 10-11.
[43] Specification at Page 5, lines 25-27.
48.It is clear from the first reference to the specification and figure 4 that the rotary cam 27 is fitted to the arm 25 (See figure 4 below). This is the only figure which identifies the rotary cam 27, arm 25 and hollow barrel portion 23. The question is: Does this provide disclosure of a rotary cam which is fitted to the barrel portion of the hinge?
49.While the specification states that the barrel portion 23 of the hinge “incudes” the rotary cam 27, this disclosure does not specify how the rotary cam is fitted to the barrel. Therefore, while I consider there is no explicit disclosure in the specification as filed of the rotary cam fitted directly to the barrel portion of the hinge (as it is fitted via an arm), I consider that there is disclosure for the rotary cam fitted to the barrel portion of the hinge, indirectly via the use of an arm. That is, the disclosure of the rotary cam fitted to the barrel portion of the hinge via an arm, is still disclosure of the rotary cam fitted to the barrel portion of the hinge. This construction is consistent with the fact that the specification states that the barrel portion includes the rotary cam.
50.In my opinion, the use of an arm in figure 4 is merely a preferred embodiment, to which the patent application is not so limited. Therefore, I consider that the proposed amendment to claim 5 is allowable as it does not result in the specification claiming matter that is not disclosed in the specification as filed.
“Contact between the cam … 35 degrees”
51.The Opponent submits that the amendment to claim 6 to state that “contact between the cam and the housing commences when the hinge is at about a 35 degree angle away from its closed position is claiming matter that extends beyond what is disclosed in the specification as filed.”[44] The Opponent submits further that the amendment involves taking a feature which is only disclosed in a particular context (i.e., the rotary cam 27 contacting the lower region of sloped surface 54 of sleeve 53) and seeking to introduce it into a claim deprived of that context.[45]
[44] Written Submissions in Support at 1.15.
[45] Written Submissions in Support at 1.15.
52.The Applicant responds by submitting that the passage referred to by the Opponent is simply explaining clearly to the reader how the mechanism works. It does not explain that contact at a lower region of the surface is particularly important. That is just where contact first occurs.[46]
[46] Written Submissions in Answer at Page 3, 1 e).
53.In their Submissions in Reply, the Opponent submits that by prioritising the relevant feature in the claim, the Applicant acknowledges that the features are relevant to how the mechanism works but seems to overlook the fact that, to achieve the contact commencing at about a 35 degree angle and to have the cam 27 operate on the damper 51 over the sweep of the 35 degrees, the contact may need to commence at the lower region [emphasis added] of the inclined surface 34.[47]
[47] Written Submissions in Reply at 1.13.
54.The specification as filed refers to the 35 degree contact angle as follows:
“Contact between the cam 27 and the lower region [emphasis added] of surface 54 commences when the hinge is at about a 35 degree angle away from its closed position”[48]
…
“When the hinge reaches about a 35 degree open position, first cam region 127a comes into contact with first helical surface 154a and a second cam region 127b comes into contact with a second helical surface 154b.”[49]
…
“Continued movement of the hinge portions beyond a 35 degree open position occurs along with compression of the damper at both ends by way of the two cam portions.”[50]
[48] Specification at Page 6, lines 3-5.
[49] Specification at Page 8, lines 9-12.
[50] Specification at Page 8, lines 14-16.
55.I consider that excluding the feature of the cam 27 contacting the lower region of surface 54 from claim 6 as proposed to be amended is not taking a feature which is only disclosed in a particular context. The embodiment described at page 6 of the specification as filed (with reference to figure 4), merely indicates that the cam contacts the lower region of the sloped surface when the hinge is at about a 35 degree angle away from its closed position. The further embodiment described on page 8 of the specification as filed (with reference to figure 6), is silent with regard to what part of the helical surfaces the first and second cam regions come into contact with when the hinge reaches about a 35 degree open position. Therefore I consider that contacting the lower region of the surface is merely a preferred embodiment, to which the patent application is not so limited.
56.Therefore, I consider that the proposed amendment to claim 6 is allowable as it does not result in the specification claiming matter that is not disclosed in the specification as filed.
“The first hinge portion includes an insert portion, … the insert portion includes a guard portion”
57.The Opponent submits that the amendment to claim 7 to state that “the first hinge portion includes an insert portion which locates in the edge recess of the glass”, however the specification as filed only discloses an embodiment of the alleged invention provided as a glass-to-glass hinge in which both hinge portions 20, 30 include a respective insert portion 28, 38 to locate within the respective edge recess.[51]
[51] Written Submissions in Support at 1.17.
58.The Opponent makes two further arguments. Firstly, amended claim 7 makes clear that the second hinge portion of the hinge need not include an insert portion for the edge recess in the glass panel. Secondly, amended claim 7 enables claim 1 to be interpreted such that neither the first hinge portion nor the second hinge portion of the hinge defined in claim 1 need have an insert portion for the edge recess in the respective glass panel, which is entirely at odds with the disclosure of the specification as filed.[52]
[52] Written Submissions in Support at 1.17.
59.The Applicant responds by submitting that claim 7 defines an insert component which includes a guard portion to protect a person from getting their finger pinched in the hinge, and a guard portion is only ever described as being present on one side of the hinge and so this claim is entirely consistent with the description of the embodiment of figures 1 to 5.[53]
[53] Written Submissions in Answer at Page 3, 1 f).
60.In their Submissions in Reply, the Opponent submits that the fact that claim 7 recites a “guard portion” does not in any way negate the submissions of the Opponent. That is, claim 1 may be interpreted such that neither the first hinge portion nor the second hinge portion of the hinge in claim 1 need include an insert portion for the edge recess in the respective glass panel.[54]
[54] Written Submissions in Reply at 1.14.
61.The specification discusses “recesses” as follows:
“The hinge 10 is arranged to be attached to glass panels using a technique in which the glass panels are pre-machined to provide edge recesses in the glass panel of known profile and locations. Insert portions 28, 38 (see figure 4) locate in the edge recesses apertures provided in the glass panels.”[55]
…
“No recesses are required to be formed in the fence members as was the case for the first detailed embodiment.”[56]
[55] Specification at Page 3, line 32 – Page 4, line 3.
[56] Specification at Page 7, lines 27-28.
62.The specification as filed provides for two different embodiments for affixing the hinge to the members/panels. The hinge 10, in the first embodiment referred to in figures 1 to 5, has the hinge arranged to be attached to glass panels using a technique in which the glass panels are pre-machined to provide edge recesses. The hinge 100, in the second embodiment referred to in figures 6 to 8, has the hinge arranged to be attached via rear planar engagement surfaces 122, 132 which in use are affixed to surfaces of the gate and fence members without recesses formed in the fence members. Therefore, contrary to the Opponent’s submissions, I consider that the specification as filed does include an embodiment where edge recesses are not required for attachment.
63.Claim 1 defines that the first hinge portion includes a hinge member, and a first clamping member. The specification describes a first hinge portion 20 including a first hinge member 21 and a first clamping member 22.[57]
[57] Specification at Page 3, lines 30-31.
64.The specification further describes that:
“The hinge portions 20, 30 mount to the glass panels 100, 101 by sandwiching the glass panels and insert portions 28, 38 between the respective pairs of hinge members 21, 31 and clamping members 22, 32 [emphasis added] covers using an arrangement of inserts [emphasis added] and gaskets, secured with hex-head screw fasteners 26.”[58]
[58] Specification at Page 4, lines 3-7.
65.The Opponent appears to be arguing that the embodiment defined in claim 1 is taken out of context as it does not explicitly define an insert portion for the edge recess in the respective glass panel. However, claim 1 does define a hinge portion including a first hinge member, and a first clamping member. I consider the scope of claim 1 extends to a clamping member sitting on the recessed glass panel which is attached to the first hinge member (and subsequently sandwiching the glass panel) via the use of hex head screws. Therefore, I do not consider that an insert portion needs to be explicitly defined in claim 1 to prevent the hinge portion, hinge member and clamping member being taken out of context of the embodiment described. It follows that claim7 as proposed to be amended does not travel beyond the disclosure of the specification as originally filed.
Section 102(2)(a) – Not in Substance Within Scope
66.The Opponent submits that “biasing means” is disclosed in the specification as filed as a “bearing and tensioner assembly 40”. Therefore, the proposed amendment from “biasing means” to “biasing spring” is not in substance within the scope of the claims before amendment. The Opponent further submits that the comments in relation to extending beyond the disclosure apply mutatis mutandis to the proposed amendments of claims 3, 4 and 7.
67.The Applicant responds by submitting that the allowed amendment has narrowed the scope of claim 1 by defining a biasing spring and defining that the damper moves in a direction which is substantially parallel to the hinge axis. In addition, the Applicant submits that all of the other claims incorporate the features of claim 1 by virtue of their dependency of claim 1.
68.I have already considered, for the reasons given above, that a “biasing spring” is merely a sub-class of a “biasing means”. It follows that the scope of claim 1 as proposed to be amended falls in substance within the scope of the claims as accepted. Furthermore, all the proposed amendments to claims 3-7 also fall in substance within the scope of the claims as accepted as these are dependent claims which merely add additional features to those defined in independent claim 1, which narrows the scope of the claims accepted.
Non-Compliance with Section 40(3)
Support
69.Section 40(3) as amended by the Raising the Bar Act requires that the claims must be supported by matter disclosed in the specification.
70.The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v WyethLLC[59]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom (emphasis added):
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed”.
[59] (No 3) [2020] FCA 1477 at [546]- [547].
71.The Opponent submits that the “biasing means” is not disclosed in the hinge of the alleged invention in the specification as merely a “spring”, and that replacing a “bearing and tensioner assembly 40” as the “biasing means” with just “spring 42” is inconsistent with, and not supported by, the matter disclosed in the specification as filed.
72.The Background to the Invention provides for some of the problems with the hinges of the prior art:
“The hinges [of the prior art] are typically attached to glass door or fence panels by way of insert components which locate in an aperture provided in the glass panel. The dampers are located inside the insert components and move in a direction which is orthogonal to the hinge axis and coplanar with the panel i.e. lying between the planes of the two planar surfaces of the panel.
The dampers are selected so that they provide an overall damping effect such that the door closes slowly, but does not take a very long time to close. However, it has been found that the damping action of these hydraulic dampers is somewhat variable and it can be difficult to achieve the desired damping characteristics.”[60]
[60] Specification at Page 1, line 25 – Page 2, line 2.
73.The Detailed Description of the Preferred Embodiment details some of the benefits of the dampers of the current invention:
“The hydraulic damper is mounted in a cavity in one of the hinge members and lies outside of the plane of the panel. This further allows for longer damper travel when compared with hinges in which the dampers are mounted inside one of the hinge insert components and further improves the predictability of the speed and smoothness of the closing action.
The hydraulic damper is mounted so that it moves in a direction which is parallel to the hinge axis. This allows for longer damper travel in a smaller assembly which in turn spreads the resistance force over a longer distance for a more predictable and smoother closing action.”
74.I consider the technical contribution to the art as described relates to the hydraulic damper lying outside of the plane of the panel and being mounted so that it moves in a direction which is parallel to the hinge axis, which results in improved predictability of the speed and smoothness of the closing action.
75.The invention as specified in the claims, as a result of the proposed amendment, relates to a hinge having the features defined in claim 1 wherein the “biasing means” is a “biasing spring”. I have already considered, for the reasons given above, that a “biasing spring” is merely a sub-class of a “biasing means”. Therefore, I do not consider that the amendments result in the specification not complying with subsection 40(3) with regard to support.
Clarity
76.It is a requirement of section 40(3) of the Patents Act that the claims must be clear. This requirement 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”.[61]
[61] Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59, 60.
77.As noted in Flexible Steel Lacing Company v Beltreco Ltd[62] cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag[63]:
“The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”
[62] [2000] FCA 890; (2000) IPR 331 at [81].
[63] [2008] FCAFC 121; (2008) 77 IPR 229 at [14].
78.The Opponent submits that amended claim 6 lacks clarity under subsection 40(3) as there is no reference to any “housing” in any of the previous claims.[64] The Applicant submits that the word “housing” should correctly read “sleeve” and is a reference to “housed inside a sleeve” in claim 3 from which claim 6 ultimately depends.[65]
[64] Written Submissions in Support at 3.6.
[65] Written Submissions in Reply at Page 5.
79.The proposed amendment to claim 6 introduces the feature that “contact between the cam and the housing [emphasis added] commences when the hinge is at about a 35 degree angle away from its closed condition.”
80.The specification only references the word “housing” once:
“The rotary cam 27 rotates away from the housing 53 and the damper 51 is free to expand under its own internal spring pressure to adopt its extended position”[66]
[66] Specification at Page 5, lines 25-27.
81.The specification also refers to the damper being housed inside a sleeve:
“Hinge 10 further includes a damping mechanism which includes a spring loaded hydraulic damper 51 which is housed inside sleeve 53.”[67]
[67] Specification at Page 5, lines 5-6.
82.As can be seen from the first passage above, the specification refers to the housing as feature “53” in reference to figure 4. Throughout the rest of the specification, including the second passage above, feature “53” is referred to as a sleeve which “houses” the damper. The fact that the spring loaded hydraulic damper 51 is housed within the sleeve 53 is consistent with figure 4.
83.The specification states:
“When the hinge is in the closed condition, the spring loaded hydraulic damper 51 is in its retracted (i.e. compressed) position and is maintained in that position by cam 27 which bears against an upper region of the sloped surface 54 of sleeve 53.”
84.Claim 6 defines that the cam contacts the housing. From the passages of the specification above, I consider that the “housing” referred to in claim 6 can only be the housing or sleeve covering the damper. This construction is consistent with the specification when read as a whole which refers to the cam contacting the sleeve or housing and is also consistent with the construction of claim 3 to which claim 6 ultimately depends, which refers to the hydraulic damper being “housed” inside a sleeve. Therefore, I consider that a person skilled in the art would be able to ascertain what falls within the meaning of claim 6. As such, claim 6 is clear and the proposed amendment is allowable as the specification would comply with subsection 40(3) as a result of the amendment.
85.While I found claim 6 to be clear, I do note that the applicant appears to be open to an amendment to claim 6 to replace the word “housing” with the word “sleeve”, and whilst I have ultimately found the claim to be clear, such an amendment would appear desirable.
Conclusion
86.The opposition fails on all grounds.
Costs
87.It is normal in matters before the Commissioner that costs should follow the event. I see no reason to depart from that approach in the present case. I will award costs according to Schedule 8 against the opponent.
Damian Triffett
Delegate of the Commissioner of Patents
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