Von Pace Group Pty Ltd v Transcom Industries Pty Limited
[2015] APO 33
•2 July 2015
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Von Pace Group Pty Ltd v Transcom Industries Pty Limited [2015] APO 33
Patent:2008200433
Title:A mud flap
Patentee: Transcom Industries Pty Limited
Opponent: Von Pace Group Pty Ltd
Delegate: Dr N. R. Madsen
Decision Date: 2 July 2015
Hearing Date: Written submissions completed on 17 April 2015
Catchwords: PATENTS – opposition to the allowance of amendments under paragraph 102(2)(b), subsection 40(3) of the Patents Act 1990 –amended claims do not comply paragraph 102(2)(b), subsection 40(3) – clarity – amended claim 11 is not clear – amendment not allowable – costs in accordance with Schedule 8 awarded against the patentee.
Representation: Patentee: Fraser Old & Sohn, Sydney, NSW
Opponent:Davies Collison Cave, Melbourne, Victoria
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008200433
Title:A mud flap
Patentee: Transcom Industries Pty Limited
Date of Decision: 2 July 2015
DECISION
I have found that the proposed amendments do not satisfy the requirements of paragraph 102(2)(b) of the Patents Act 1990, and consequently the opposition succeeds. Claim 11 as proposed to be amended is not clear. Subject to appeal I refuse the amendments.
I award costs against Transcom Industries Pty Limited.
REASONS FOR DECISION
Background
Patent application 2008200433 was filed on 30 January 2008 by Transcom Industries Pty Limited (the patentee). Examination was requested on 1 September 2011 after which time the application proceeded to acceptance and was advertised as accepted. After the advertisement period the application was granted on 19 June 2014.
On 6 November 2014 the patentee filed a request to amend the specification under section 104 of the Patents Act. A delegate of the Commissioner of Patents granted leave to amend the specification and the amendments were advertised. A notice of opposition to the allowance of amendments was filed by the Von Pace Group Pty Ltd (the opponent) on 22 January 2015 and a statement of grounds and particulars was filed on 23 February 2015. The only ground of opposition specified in the statement of grounds and particulars is that the amendments do not comply with paragraph 102(2)(b) of the Patents Act by way of a failure to comply with subsection 40(3) – clarity.
No evidence was filed by either of the parties. A delegate of the Commissioner directed the parties that they will be heard on the basis of written submissions, these being completed on 17 April 2015.
The invention described in the specification
The present invention (see page 1 of the specification) relates to mud flaps, and in particular, to mud flaps for heavy vehicles such as trucks, semitrailers, articulated vehicles, and the like. These mud flaps are conventionally made from either rubber compounds or pliant polymers such as PVC, generally in a planar configuration in the form of a pliant sheet. The flap serves to flex and absorb energy of road spray, mud, rocks and other projectiles thrown from vehicle tyres.
Adjacent the upper edge of a mud flap is often a thickened region which is generally rectangular with apertures facilitating attachment by screws or some other similar mechanism. A problem with conventional mud flaps is that there is a line of weakness where the generally planar pliant sheet forms the thickened region (by way of an immediate step in thickness). The present invention seeks to address this issue of a line of weakness by way of a transition zone interconnecting the thickened region to the remainder of the pliant sheet. The transition zone is embodied in the specification in the form of a taper, ramp or wedge.
The Amendments
The specification before amendment contained 7 claims with 1 independent claim. The statement of proposed amendment filed on 6 November 2014 adds a number of new claims to leave 13 claims. Particularly relevant to the present opposition is the addition of new claim 11, which the opponent generally alleges gives rise to issues of clarity. The proposed amendment is reproduced below.
1. A mud flap for a vehicle, said mud flap being moulded in a single piece from pliant polymeric material, having a generally planar configuration defined by a pliant sheet having first and second opposite surfaces, and said mud flap having a thickened region adjacent the upper edge of the mud flap, said thickened region having a shape which permits said mud flap to be secured to said vehicle immediately adjacent one of the wheels thereof by means of fasteners or the like with said first surface adjacent said wheel, wherein said second surface has a raised peripheral rim and at least one indicium sized to be viewed from behind said vehicle, and there is a transition zone on said second surface interconnecting said thickened region and said pliant sheet, said transition zone having a thickness intermediate that of said thickened region and said pliant sheet.
2. The mud flap as claimed in claim 1 wherein said transition zone substantially occupies what would otherwise be an abrupt transition between said thickened region and said pliant sheet.
3. The mud flap as claimed in claim 1 or 2 wherein said transition zone does not include a wall substantially perpendicular to said second surface of said pliant sheet.
4. The mud flap as claimed in claim 3 wherein said wall has a substantial extent substantially perpendicular to said second surface.
5. The mud flap as claimed in any one of claims 1 - 4 wherein said thickened region has first and second surfaces which correspond to the first and second surfaces of said pliant sheet, and said transition zone substantially interconnects said second surface of said thickened region and said second surface of said pliant sheet.
6. The mud flap as claimed in any one of claims 1 - 5 where said transition zone comprises at least one taper.
7. The mud flap as claimed in claim 6 wherein the or each said taper comprises a ramp or wedge.
8. The mud flap as claimed in claim 7 having a plurality of said ramps.
9. The mud flap as claimed in claim 8 wherein at least some of said ramps have different angles of inclination.
10. The mud flap as claimed in claim 9 wherein at least some of said ramps extend along said pliant sheet by different extents.
11. The mud flap as claimed in any one of claims 1-10 wherein said transition zone includes a taper, ramp or wedge at opposite ends thereof.
12. The mud flap as claimed in claim 6 wherein said transition zone comprises at least one radiused taper.
13. A mud flap for vehicles, said mud flap being substantially as herein described with reference to Figs. 2 and 4 or Fig. 5 of the drawings.
Law Relating to Amendments
As the request for examination of the patent application was filed before 15 April 2013, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent. This includes an amendment to subsection 102(1) which precludes the inclusion of subject matter extending beyond the original disclosure.
The relevant parts of the Patents Act in the current case are paragraph 102(2)(b) and subsection 102(2A) as they existed prior to the introduction of the Raising the Bar Act. These are set out below:
(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).
(2A) For the purpose of subsection (2), relevant time means:
(a) in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted.
The applicable part of section 40 of the Patents Act 1990 as it applies to the present case is 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 irrelevant to the present action. The present allegations as to a lack of clarity in the claims clearly relate to a matter arising as a result of the amendment.
Paragraph 102(2)(b): Compliance With Subsection 40(3) – 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"
Also relevant to the application of the rules of construction are the comments made by Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA 214, 100 IPR 451 at [139]:
"It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date."
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).
Taper, Ramp, Wedge
Claim 11 reads as the mud flap as claimed in any one of claims 1-10 wherein said transition zone includes a taper, ramp or wedge at opposite ends thereof. There is no potential ambiguity over what constitutes a transition zone. In accordance with the rules of construction identified above, I will first proceed to determine what constitutes a taper, a ramp, and a wedge noting that there is no dictionary definition within the description assigning meaning to these terms.
According to the Macquarie online dictionary (The Macquarie Dictionary, 6th ed. 2013, from a taper is a:
“6. gradual diminution of width or thickness in an elongated object.”
The same dictionary notes the following as defining a ramp:
“1. a sloping surface connecting two different levels.”
Similarly, a wedge is defined as:
“1. a device (one of the so-called simple machines) consisting of a piece of hard material with two principal faces meeting in a sharply acute angle.”
There is clearly a degree in overlap in these terms. For example there is no doubt that a wedge is of the type of shape depicted below. Such a shape incorporated into the invention as claimed would also be considered a ramp and a taper in accordance with their dictionary definitions.
In terms of the differences in these definitions, I note first of all it is clear that a wedge requires at least two flat surfaces constituting the incline, these being denoted by letters A and B above. A ramp is more broadly defined such that for example, the surface A may be curved from its low to its high point. Regarding a taper, it is clear that the definition imports a requirement that there be a “gradual diminution” of the width or thickness of the relevant object. This imposes a dimensionality restriction upon the shape of the element however it remains clear a taper may be curved or flat similar to a ramp.
Turning to the description of the invention, a taper, ramp and wedge are described with reference to figures 2, 4 and 5.
Regarding figures 2 and 4, the description identifies items 22 as “ramps or wedges” which are provided with different slopes and incline lengths (22A and 22B in figures 2 and 4). The specification appears to use the terms interchangeably in the context of a shape with two flat surfaces analogous to that I have depicted above. Regarding figure 5, the description identifies the shape denoted by item 29 as “radiused taper”. The radiused taper involves a gradual diminution of thickness (adjacent the lower surface 16 of figure 5) and thus use of the term is consistent with the definition identified above.
In summary, it is clear that the terms taper, ramp and wedge are largely interchangeable. However, as discussed above, in accordance with a common sense understanding of the terms that would be applied by the person skilled in the art, there are clear differences in scope between the terms.
Claim 11
The opponent’s general submission in regard to claim 11 is:
“By claim 11, the transition zone must include a taper, ramp or wedge at opposite ends thereof. It is unclear whether "at each end" is intended to convey that whatever choice among a taper, ramp or wedge mentioned in claim 11 is made for one end of the transition zone, that same choice must also be prevail for the other end, or whether a different choice among taper, ramp or wedge may be made for the other end.”
“…issues are not clarified by reference to the detailed description, which refers to ramps or wedges, Figure 1, and a radiused taper, Figure 5. It is not clear how the claims are generally consistent with the description. For example, there appears no description of any case where there are multiple "tapers" or where there is a "taper" as well as a "ramp" or "wedge". Accordingly, the description appears of no assistance in clarifying the meaning of claim 11.”
The patentee provided no submissions in reply to these.
Firstly, I agree with the opponent that the description and drawings are of no assistance to the construction of this claim. While there is an embodiment depicting ramps (or wedges) at either end of the transition zone, any use of this embodiment to limit the scope of the claim would involve an importation of gloss. Thus, the consideration in regard to the clarity of claims 11 is purely one of grammatical interpretation.
The opponent’s submission is essentially that there are two options to the construction of the claim. The first construction involves tapers (T), ramps (R) or wedges (W) at either end of the transition zone. I denote the possible combinations as TT, RR and WW. A second construction involves additional options whereby the items at the opposite ends are different. I denote the possible combinations for this second construction as TT, RR, WW, TR, TW and RW.
In analysis of the words of the claim I can see reasons for the adoption of both constructions. In regard to the first construction, the list of options (T, R and W) are presented in the singular, this singular being related to two opposite ends of the transition zone. This potentially leads a reader to consider that the items at either end of the transition zone must be the same. Alternatively, the list may be considered as merely presenting a set of options for filling of the opposite ends. This interpretation leads the reader to include further options where the items are different.
From a logic point of view, it appears to me that there is simply not enough information within the claim to enable a reader to determine the ambit of the claim. In other words, the singular identification of the tapers, ramps and wedges read with the identification of two possible locations for the items lacks a necessary instruction to the reader as to how the locations should be filled.
Therefore I find claim 11 as proposed to be amended unclear.
There is nothing in the claims to which claim 11 appends that assist in construction. While the claim appends to claims 1-10, it is not until claim 6 that a taper, ramp or wedge is claimed. The opponent comments in regard to claim 6 that:
“…the transition zone must comprise at least one taper. Because claim 11 does not identify whether or not this claim 6 taper is necessarily included among any claim 11 tapers, it is unclear whether or not it is intended that claim 11 includes cases where there is, e.g. wedge at each end and a taper elsewhere, or e.g. whether it is intended that there must be a claim 6 taper at least at one end of the transition zone, regardless of what else is present at the other end or elsewhere.”
In accordance with the opponent’s submission I agree that claim 6 (by way of claim 11’s appendence thereto) is of no assistance to the construction of claim 11. Similar issue remains in claim 11 in its appendance to claims 7-10.
Conclusion
The amendment does not comply with the requirements of paragraph 102(2)(b). Claim 11 as proposed to be amended is not clear. The opposition is successful.
Costs
Ordinarily in proceedings such as these, costs follow the event. I see no reason that warrants varying this approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against Transcom Industries Pty Limited.
Dr N. R. Madsen
Delegate of the Commissioner of Patents
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