Westhill Engineering Construction Pty Ltd v Cameco Industries, Inc
[2001] APO 44
•5 September 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 681840 in the name of WESTHILL ENGINEERING CONSTRUCTION PTY LTD.
Title: Apparatus for Cutting Elongate Articles.
Action: Opposition by CAMECO INDUSTRIES, INC. to allowance of an amendment of the petty patent specification under Section 104 of the Patents Act 1990
Decision: Issued .
Abstract
The opponent raised two grounds against the proposed amendments of the patentee.
Against the first ground the opponent contended that as a result of the proposed
amendments, the specification would claim matter not in substance disclosed in the
specification as filed. The opponent was unsuccessful on this ground.
Against the second ground the opponent contended that as a result of the proposed
amendments, the specification would not comply with Sub-Section 40(3). The opponent
was unsuccessful on this ground.
The proposed amendments were found to comply with section 102 of the Patents Act and
were found to be allowable.
Costs awarded against the opponent Cameco Industries, Inc. and in favour of the patentee
Westhill Engineering Construction Pty Ltd.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty patent 681840 by WESTHILL ENGINEERING CONSTRUCTION PTY LTD, and opposition by CAMECO INDUSTRIES, INC. to allowance of an amendment of the patent specification under Section 104
BACKGROUND
Petty Patent application 70276/96 was filed by Westhill Engineering Construction Pty Ltd on 17 October 1996 claiming priority from provisional application PO 1158 filed on 19 July 1996. The patent was accepted on 18 July 1997 and accorded No. 681840. The petty patent was sealed on 4 September 1997. Cameco Industries, Inc. (Cameco) filed a notice pursuant to section 28 of the Patents Act 1990 on 30 March 1998 giving notice of matters affecting the validity of patent 681840. Westhill Engineering Construction Pty Ltd (Westhill) filed for an extension of term of their petty patent on 4 August 1998.
The matter was heard in Canberra on 1 December 1998. The delegate issued a decision on 13 January 1999 ([1999] APO 3) wherein the delegate stated:
"I have found that the invention of the petty patent is not a patentable invention because it does not comply with paragraph 18(1)(b)(i) of the Patents Act 1990.
I believe that there is still some patentable subject matter that could allow the above deficiency to be overcome by suitable amendments. Given the provisions of section 69(4), I allow the patentee 60 days from the date of this decision to request an amendment to the specification of the petty patent for the purpose of removing the ground of invalidity."
Subsequently the patentee filed a request to amend the petty patent specification on 9 February 1999. Leave was granted to amend the patent specification on 25 May 1999 and the same was advertised on 10 June 1999. Cameco filed a notice of opposition to the allowance of the amendments on 10 September 1999 and a statement of grounds and particulars on 9 December 1999. Subsequently, Cameco filed evidence in support on 9 July 2000 and Westhill filed evidence in answer on 12 September 2000. No evidence in reply was filed.
The matter was heard in Canberra on 11 May 2001. Mr. William Bennett, patent attorney of Pizzeys, Canberra, accompanied by Mr. Bernard Nutt (also of Pizzeys) represented the patentee, Cameco. Mr. Greg Turner, patent attorney of Spruson & Ferguson represented the opponent, Westhill.
STATEMENT OF GROUNDS AND PARTICULARS
The opponent raised the following grounds:
Ground 1:Section 102(1)
As a result of the proposed amendments, the specification would claim matter not in substance disclosed in the specification as filed.
Ground 2:Section 102(2)(b)
As a result of the proposed amendments, the specification would not comply with Sub-Section 40(3)
The particulars provided detailed submissions on why the proposed amendments to claims 1 to 3 of the petty patent did not satisfy the requirements of Section 102.
EVIDENCE
Evidence in support consists of a declaration made by:
Douglas James Young, dated 19 June 2000. He states that he has been in the sugar cane industry continuously since about 1960. He further states that he has been a harvesting contractor since about 1963 and has operated, built, repaired and been intimately involved with sugar cane harvesting machinery since about 1963.
Evidence in answer consists of a declaration made by:
Frank Beltrame, dated 5 September 2000 and exhibits FB-A to C. He states that he previously swore a declaration in these proceedings on 11 August 1998 and as mentioned in his previous declaration, he runs an engineering business which focuses on the manufacture, modification and repair of sugar cane harvesting equipment. He further states that he has been involved in the manufacture, repair and modification of sugar cane harvesting equipment since approximately 1977.
I will discuss the relevant parts of the evidence together with the submissions of the parties, where appropriate in my decision.
SPECIFICATION
The accepted specification indicates that the invention relates to an apparatus for cutting elongate articles with particular but not exclusive application for cutting sugar cane stalks into billets. In the "Disclosure of Invention" the specification states:
"This invention in one aspect resides in an apparatus for cutting elongate articles into shorter lengths, the apparatus including:-
opposed counter-rotating cutter assemblies each including cutter means which cooperate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies.
According to one preferred feature, each cutter assembly includes mounting means for mounting its cutter means, and the mounting means associated with one cutter assembly leads the mounting means associated with the other cutter assembly. Preferably, one cutter means leads the other cutter means and the leading cutter means is mounted to the leading mounting means and the trailing cutter means is mounted to the trailing mounting means.
According to another preferred feature, one cutter means extends a greater radial distance from its centre of rotation than the other cutter means extends radially from its centre of rotation. Preferably, the cutter means rotate at the same speed, the paths defined by the tips of the respective cutter means overlap, and the cutter means which extends the greater radial distance leads the other cutter means. Preferably also, one cutter means leads the other cutter means and one cutter assembly includes an anvil located adjacent its cutter means, the anvil adapted to cooperate with the other cutter means.
According to another preferred feature, one cutter assembly includes an anvil located adjacent the one cutter assembly's cutter means, the anvil adapted to cooperate with the other cutter means. Preferably, the one cutter assembly's cutter means is mounted to mounting means with a clamping plate and the clamping plate includes the anvil."
The specification proceeds with a brief description of the drawings and various embodiments of the invention.
The proposed amendments (following on from a decision of a delegate of the Commissioner of Patents, issued 13 January 1999 - [1999] APO 3) seek to amend the specification with alteration of the three claims and corresponding amendments of the consistory statements of the invention in description pages 2 and 3. The opponent identified specific features in each of the amended claims, which they submitted did not comply with Section 102 of the Patents Act. I shall make a comparison between accepted claims 1 to 3 and amended claims 1 to 3.
I have shown below the accepted claims 1 to 3 (specification accepted on 18 July 1997) along with the proposed amendments (amendments proposed on 9 February 1999). The amendments have been shown by striking out the deleted parts of the accepted claims and the proposed additions/changes have been underlined:
1. An apparatus for cutting elongate articles into shorter lengths, the apparatus including:-
opposed counter-rotating cutter assemblies each including cutter means which cooperate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies, wherein each cutter assembly includes mounting means for mounting its cutter means, and the mounting means associated with one cutter assembly leads the mounting means associated with the other cutter assembly, and wherein one cutter means leads the other cutter means, and wherein the leading cutter means is mounted to the trailing face of the leading mounting means and the trailing cutter means is mounted to the leading face of the trailing mounting means, and wherein
onethe leading cutter means extends a greater radial distance from its centre of rotation than theothertrailing cutter means extends radially from its centre of rotation.2. An apparatus as claimed in claim 1, wherein the
cutter assemblies rotate at the same speed, the cutter means overlap, and the leading cutter means extends a greater radial distance from its centre of rotation than the trailing cutter means extends radially from its centre of rotationleading cutter means is mounted to the trailing face of the leading mounting means and the trailing cutter means is mounted to the leading face of trailing mounting means such that the respective mounting means do not oppose each other during cutting.3. An apparatus as claimed in claim 1 or 2,
substantially as herein described with reference to the figureswherein the leading and trailing cutter means cooperate to define a cutting zone in use, and wherein, in use, the leading mounting means leads the cutting zone and the trailing mounting means trails the cutting zone.
DECISION
Section 102 of the Patents Act 1990 determines what amendments are not allowable. It states:
"102 What amendments are not allowable?
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the specification has been accepted 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).(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification."
Subsection 40(2) requires that a complete specification describes the invention fully, including the best method known to the applicant of performing the invention; and end with a claim or claims defining the invention. Subsection 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.
Under ground 1 the opponent stated:
"The test involved is essentially that of 'fair basis'. That is for an amended claim to claim matter in substance enclosed (sic) in a specification as filed, then in effect that claim must be also fairly based on the specification as filed (United-Carr Incorporated 1971 RPC 23)."
The patentee was also of the view that the test for "in substance disclosed" is the same as the test for fair basis and that in this regard:
"…the Australian courts have criticised the Mond Nickel test as involving 'an over-meticulous verbal analysis' and instead have adopted the more robust test of whether there was a 'real and reasonably clear disclosure' of the claimed subject matter (see, for example, CCOM Pty Ltd v Jeijing Pty Ltd (1994) 122 ALR 417)."
The patentee further submitted:
"…it is also noted that in Ethyl Corp's Patent (1972) RPC 169 it was implied that 'disclosure in substance' includes both express and implied disclosures. The term 'implied disclosure' has been considered to include disclosures that would be 'implied by the expert reader': see, for example, AMP Inc v Commissioner of Patents (1974) 48 ALJR 278 where it was held that the 'substance' must appear from the application interpreted with a knowledge of the state of the prior art."
I shall adopt the "real and reasonably clear disclosure" test, while using the teaching of Ethyl Corp and AMP (supra) for determination of "disclosure in substance".
Ground 1: Claiming matter not in substance disclosed in the specification as filed.
I shall consider the three claims on an individual basis.
Claim 1:
The opponent put forward the following arguments:
"It is proposed to amend claim 1 to include a reference to 'the leading cutter means' being 'mounted to the trailing face of the leading mounting means' and 'the trailing cutter means' being 'mounted to the leading face of the trailing cutter (I think the intention was to refer to "mounting") means'.
Whilst the specification as originally filed refers generally to mounting means 20 and mounting means 24 throughout the description, claims and accompanying figures, no reference is made to the configuration of the mounting means and the location of the attachment of the cutter means thereto….nor that the mounting means indeed have trailing and leading faces.
…it is submitted that it is not possible to determine from the drawings in the specification as filed whether the cutter means are mounted to faces of the mounting means or to edges of the mounting means."
The patentee's declarant Mr Beltrame, states that he has "no difficulties identifying the features 'trailing face' (of the leading mount) and 'leading face' (of the trailing mount) in Petty Patent 681840, nor do I have any difficulty understanding what is meant by these terms".
I shall now look at the disclosures of the specification as filed (my emphasis) in the matter of leading cutter means, trailing cutter means, trailing face of the leading mounting means and leading face of the trailing mounting means.
The description has not made reference to the "trailing face of the leading mounting means" and "leading face of the trailing mounting means". I shall look at the drawings, Figures 2 to 7, of the specification to determine what disclosure if any has been made of these features. While doing this I need to apply the teaching of Ethyl Corp and AMP (supra) which in essence states:
"…'disclosure in substance' includes both express and implied disclosures. The term 'implied disclosure' has been considered to include disclosures that would be 'implied by the expert reader'."
Thus one must look at the figures to determine if there is an express disclosure or an implied disclosure of the said features to the expert reader. Figure 1 shows a sugar cane harvester (standing on a horizontal plane) where the centres of rotation of the cutting assemblies do not lie along the same vertical line. The centre of rotation of the uppermost cutter assembly lies above and to the left of the centre of rotation of the lower cutter assembly. Figures 2 and 3 show the relative position of the cutting assemblies assuming that the line of feed of the cane stalks to be cut is horizontal. On this basis, the cutting assemblies are positioned with one assembly lying vertically above the other and a vertical line passes through both their centres of rotation. The assemblies face each other head-on across the horizontal line which is defined by the line of feed. Thus, in this orientation, the assemblies are opposed. The assemblies are shown in cross-section though this is not specifically mentioned in the description. The cutter assemblies consist of rotating drums or plates on which the cutters are mounted. The cutters are mounted on plates attached to the rotating drum or directly onto the rotating plate. In the matter of what constitutes leading and trailing I addressed this in the decision I issued 13 January 1999 in the related Section 69 matter (see [1999] APO 3). In that I concluded:
"I shall now determine the plain meaning of the term leads and how it affects the 'horizontal offset' referred to in the embodiment of the patent specification. The Macquarie Dictionary and Thesaurus Combined Budget Edition reprinted 1995 gives the following definition of the term 'lead':
1. to take or conduct on the way; go before or with to show the way.
8. to go first; be in advance
Reading the specification as a whole the meanings 'be in advance' or 'go before' apply. In this case, I shall look at the invention of the patent at the position referred to in the embodiment of FIG 4. At this position the cutters and their respective mounting means oppose each other and the centre of rotation of both assemblies lie in the same vertical plane, one above the other. There is a leading cutting means, a trailing cutting means, a leading cutter means and a trailing cutter means. In effect this means that, as the various means rotate past a fixed point in the vertical plane, the leading edges/faces of the leading means pass that point ahead of the leading edges/faces of the respective trailing means. Thus the leading mounting means proceeds ahead of the trailing mounting means. At the position shown in FIG 4 one can determine the horizontal offset between features by dropping vertical lines from the leading edges/faces of each feature to a horizontal line drawn between the two assemblies. As the direction of feed of the cane is from left to right, the vertical from the leading mounting means lies further to the right than the vertical from the trailing mounting means; ie the leading mounting means is horizontally offset from the trailing mounting means. Thus at this position the leading mounting means will always be horizontally offset from the trailing mounting means.
I conclude that for the combination of features shown, the horizontal offset is implicit when there is a leading means and a trailing means. Thus, the meaning of leads in the preferred embodiment referring to 'horizontal offset' is no different from the plain meaning of leads. Looking at the citation and FIG 3 in particular, I note that there is a leading cutting means, a trailing cutting means, a leading mounting means and a trailing mounting means consistent with the plain meaning of the term leads."
Looking at the mounting means on both cutter assemblies, I note that each mounting means has both a leading edge/face and a trailing edge/face. That is, during cutting, the leading edge/face proceeds (in the direction of the feed movement) past the vertical line (going through the centre of rotation) prior to the trailing edge/face. The figures show for the leading cutter assembly that the cutting blade is mounted to the trailing edge/face of the leading mounting means. They also show that for the trailing cutter assembly the cutting blade is mounted to the leading edge/face of the trailing mounting means. The opponent's declarant submitted:
"…no reference is made to the configuration of the mounting means and the location of the attachment of the cutter means thereto….nor that the mounting means indeed have trailing and leading faces.
…it is submitted that it is not possible to determine from the drawings in the specification as filed whether the cutter means are mounted to faces of the mounting means or to edges of the mounting means."
The patentee indicates that the opponent's declarant Mr Young had in the related Section 69 action (see [1999] APO 3) filed exhibits DJY-12 and 13 showing the attachment of cutters to the mounting means. In that case it was a surface/face to surface/face attachment and the arrangement was similar to that of the one shown in the Petty Patent under attack.
The opponent did not challenge or rebut the patentee's submission. Looking at the figures, if one were to proceed on the submission of the opponent that the blades and mounting means might be edges rather than surfaces, then one would be looking at a cutter wherein a single stalk of cane is being cut rather than a cutter mounted on a drum/plate of a length suitable to cut several stalks of cane simultaneously. Figures 1 to 3 clearly indicate that several stalks of cane are being cut simultaneously and hence the cutters would need to extend across the drum/plate. The mounting means may or may not extend across the drum, but the drawings show that the leading and trailing portions thereof possess either an edge or face to which the blade is attached by means of clamping plates. The description at page 4, lines 18 and 19 states:
"Cutter means 16 is fixed to mounting means 20 via clamping plates 22 which are bolted to the mounting means 20."
Thus the use of clamping plates indicates a surface or face as opposed to an edge. Further there would need to be a corresponding surface/face on the mounting means to which these plates would be attached and the drawings are consistent with this. Thus I conclude that the mounting means possess a leading face and a trailing face. Out of a number of possible embodiments of attaching the cutter to the mounting means, the patentee is claiming the embodiments of a face to face attachment. I note that the skilled addressee (Mr Young) read the possibility of a face or edge attachment into the specification. I do not consider that amended claim 1 is claiming matter not in substance disclosed in the specification as filed in respect of the features of:
· leading cutter means,
· trailing cutter means,
· trailing face of the leading mounting means, and
· leading face of the trailing mounting means.
Claim 2:
The opponent submitted:
"Claim 2 as proposed to be amended, states that 'the respective mounting means do not oppose each other during cutting.' In the specification as originally filed, there is no mention of the respective mounting means not opposing each other during cutting. The term 'oppose' can have a number of distinct meanings, for example, to hinder or stand in the way of something, or for two items to be sitting on diametrically opposed sides of an axis. The specification as filed does not give any direction as to how the term 'oppose' should be construed as no mention is made of this term in the context of the respective mounting means of the claimed invention.
Thus under either of the interpretations for the term 'oppose' mentioned above, claim 2 as proposed to be amended would result in the specification claiming matter not in substance disclosed in the specification as filed or accepted.
In the specification as filed the relationship of the mountings was referred to as being horizontally off-set or off-set. If the specification is inspected the word opposed is not employed. However, if the drawings are inspected it can be noted that the mountings are almost directly aligned and therefore are opposed. The claim therefore is attempting to claim something which is not in the specification as originally filed."
The patentee replied as follows:
"It is…worth noting that, of the two alternative constructions offered…one is nonsense (who would make an apparatus in which parts 'interfere with or hinder each other during cutting?') and the other construction is correct and supported by the description and drawings.
The specification does use the word 'oppose' at page 4 lines 29 & 31. Specifically the passage reads 'This means that, when in the position illustrated in FIG 4, the respective mounting means 20 and 24 are horizontally off-set. In the prior art, the respective mounting means 20 and 24 were not off-set but rather directly opposed each other. This resulted in the sugar cane being pinched and crushed between the opposed mounting means resulting in a loss of quality in the cut billets and also an unnecessary consumption of power'."
Looking at claim 2, as proposed to be amended, it states:
An apparatus as claimed in claim 1, wherein the leading cutter means is mounted to the trailing face of the leading mounting means and the trailing cutter means is mounted to the leading face of trailing mounting means such that the respective mounting means do not oppose each other during cutting (my emphasis).
Looking to the specification as filed/accepted, I have to determine if the features of claim 2 are disclosed. I shall first determine the meaning of the term "oppose" as it is used in the accepted specification. The specification makes use of the term "opposed" as follows:
· Page 2, lines 23 to 26: "..opposed counter-rotating cutter assemblies each including cutter means which co-operate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies."
· Page 4, lines 27 to 30: "In the prior art, the respective mounting means 20 and 24 were not off-set but rather directly opposed each other."
As I have indicated, I have to determine if "the respective mounting means do not oppose each other during cutting". Figure 1 shows a sugar cane harvester (standing on a horizontal plane) where the centres of rotation of the cutting assemblies do not lie along the same vertical line. The centre of rotation of the uppermost cutter assembly lies above and to the left of the centre of rotation of the lower cutter assembly. Figures 2 and 3 show the relative position of the cutting assemblies assuming that the line of feed of the cane stalks to be cut is horizontal. On this basis, the cutting assemblies are positioned with one assembly lying vertically above the other and a vertical line passes through both their centres of rotation. The assemblies face each other head-on across the horizontal line which is defined by the line of feed. Thus, in this orientation, the assemblies are opposed, which is consistent with the disclosure above. The mounting means (holding the cutters) however do not face each other head-on but each lies at an angle from the vertical line passing through the centres of rotation of both cutting assemblies. This is just at the time that cutting is commencing. Figures 4 to 7 show the mounting means after cutting of the cane. The mounting means face each other but they do not directly oppose each other "head-on" in that they are horizontally off-set from each other. That is, vertical lines drawn through the centre of the mounting means do not meet/coincide but lie parallel to each other. The opponent has provided the following definitions of oppose:
· to hinder or stand in the way of something, or
· for two items to be sitting on diametrically opposed sides of an axis
Based on the disclosures above, the specification and drawings show that: a) the mounting means do not hinder or stand in each others way, and b) the two mounting means are not sitting on diametrically opposed sides of an axis.
Thus the accepted specification has made a clear disclosure that "the respective mounting means do not oppose each other during cutting". I do not consider that amended claim 2 is claiming matter not in substance disclosed in the specification as filed in respect of the feature of:
· respective mounting means do not oppose each other during cutting.
Claim 3:
The opponent raised the following arguments:
"In the specification as originally filed or accepted, there is no mention of 'cutting zone', 'leading and trailing cutter means co-operating to define a cutting zone' and 'leading mounting means leads the cutting zone and the trailing mounting means trails the cutting zone', these all being features of claim 3 as proposed to be amended.
…it is not evident from the specification as originally filed or accepted, including the drawings, what would constitute 'a cutting zone', nor how the leading and trailing cutter means, as denoted by reference numerals 16 and 18, 'co-operate to define' such a zone. It is also not evident from the specification what would constitute the boundaries of such a zone. Thus…claim 3 as proposed to be amended would result in the specification claiming matter not in substance disclosed in the specification as filed or accepted."
The patentee submitted:
"…the cutting zone is inherently defined between the two cutters and indeed this very language is used in claim 3 ('wherein the leading and trailing cutter means co-operate to define a cutting zone in use'). It will be appreciated that both the lower cutter and upper cutter are rotating and therefore the cutting zone, whilst always being defined between the 2 cutters, is dynamic."
The accepted specification discloses cutting of cane stalks into billets by "opposed counter-rotating cutter assemblies each including cutter means which co-operate to cut (my emphasis) the elongate articles as they pass between the opposed counter-rotating cutter assemblies". There is therefore a clear disclosure of the cutting of cane and that this is done by cutters which co-operate to do this. The opponent's declarant Mr Young states:
"I understand the boundaries of such a hypothetical cutting zone could be from where the cutter blades grab the cane to where they finish the chop. The boundaries of a cutting zone will depend on the thickness of the cane being chopped at any given time and are therefore variable."
The patentee's declarant Mr. Beltrame states:
"It would seem clear to me that, by definition, the cutting zone is defined between the two blades during the cutting action. Thus, the leading cutter defines the leading end of the cutting zone and the trailing cutter defines the trailing end of the cutting zone."
The skilled addressees do not seem to have any difficulty with understanding the meaning of the term "cutting zone" and also the scope thereof. Thus the feature of the cutting zone which was, therefore, implicit in the accepted description, has now been explicitly defined in claim 3 (see Ethyl Corp (supra)). In the matter of the leading cutter and trailing cutter, these features had been defined in the accepted specification. Based on a clear understanding of what constitutes the cutting zone, the respective positions of the leading cutter means and trailing cutter means (with respect to the zone) is clearly disclosed in the accepted specification. I note that I discussed at some length the meaning of the term leading ('be in advance', 'go before') in my previous decision on the related section 69 matter of the Petty Patent 681840 (see [1999] APO 3). Mr Young has indicated that the boundaries of the cutting zone will be variable as they are dependent on the thickness of the cane being cut. As the skilled addressee is able to determine the variation and scope of the term I do not consider that the term "cutting zone" is of uncertain ambit and lacks proper support in the accepted specification. I do not consider that amended claim 3 is claiming matter not in substance disclosed in the specification as filed in respect of the features of:
· cutting zone,
· leading and trailing cutter means co-operating to define a cutting zone, and
· leading mounting means leads the cutting zone and the trailing mounting means trails the cutting zone.
Ground 2: Claims as proposed to be amended must be clear and fairly based on the matter described in the specification.
Claim 1:
The opponent submitted:
"…the words, 'the trailing face' and 'the leading face' of respective mounting means,…introduce considerable uncertainty into claim 1. There is no antecedent basis for the terms, thus, it is not clear from the claims themselves nor from the description or drawings, firstly, that the mounting means have faces, and secondly, which parts of the mounting means constitute the trailing face and the leading face. Thus, it is not possible to place a construction on claim 1 as proposed to be amended with the result that this claim is not clear and succinct."
The feature of the mounting means is clearly set out in the claim. The features of the leading/trailing faces of the mounting means are defined without antecedents. The opponent indicates difficulty in understanding the terms "leading face" and "trailing face". I had addressed the meaning of the term "leading" in my decision on the related section 69 matter (see [1999] APO 3):
"…In effect this means that, as the various means rotate past a fixed point in the vertical plane, the leading edges/faces of the leading means pass that point ahead of the leading edges/faces of the respective trailing means. Thus the leading mounting means proceeds ahead of the trailing mounting means."
Given this interpretation I do not consider that the terms "leading face" and "trailing face" lack clarity even though they lack antecedents. The mounting means of which they form a part have proper antecedents and the faces clearly have been defined as part of the mounting means. I do not consider that these terms lack clarity when reading the claim.
Even if one assumed that the terms lacked clarity one may have recourse to the specification to determine the meaning of those terms. I shall refer to the rules of construction set out by Sheppard J in Décor Corporation Pty Ltd and Anor v Dart Industries Inc. 13 IPR 385. Rule 5 states:
"If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim."
Under Ground 1, Claim 1, above I had found that the specification made clear the meaning of the terms "a leading face" and "a trailing face" in respect of a mounting means.
The opponent's declarant discusses the various possible means of attachment of the cutter to the mounting means:
"They could be mounted to edges of the mounting means, or as a dove-tail fit, or one concave surface abutting a convex surface, or as a series of interengaging sawteeth."
The claim clearly states that the cutters are mounted to the leading/trailing face (my emphasis) of the mounting means. I see no basis for the means of attachment listed by the opponent, which are inconsistent with the means defined in the claim. I shall now refer to the description to determine if the claim, as proposed to be amended, is fairly based on the matter described in the specification. The description at page 4, lines 18 and 19 states:
"Cutter means 16 is fixed to mounting means 20 via clamping plates 22 which are bolted to the mounting means 20."
I had addressed this issue previously under Ground 1, Claim 1, above, where I had concluded:
"Thus the use of clamping plates indicates a surface or face as opposed to an edge. Further there would need to be a corresponding surface/face on the mounting means to which these plates would be attached and the drawings are consistent with this. Thus I conclude that the mounting means possess a leading face and a trailing face."
The description and drawings clearly disclose the features of the leading and trailing faces and in particular the feature of mounting means possessing faces to which plates are bolted. Therefore I consider that claim 1 as proposed to be amended is clear and fairly based on the matter described in the specification.
Claim 2:
The opponent submitted:
"…the phrase "the respective mounting means do not oppose each other during cutting' renders the claim unclear and/or not fairly based on the description. ..there is no direction/assistance in the specification as to how one should construe the term 'oppose'. If one were to construe it such that the mounting means do not sit on diametrically opposed sides of an axis, this would appear to be contrary to that shown in the figures. Figures 2-7 show mounting means 20 and 24 do indeed appear to be sitting on diametrically opposed sides of the axis defined by the line of feed, thereby rendering the claim unclear. Alternatively the phrase could be construed such that the respective mounting means do not hinder or stand in the way of each other during cutting. However the description and drawings do not support this nor explain how the respective means are prevented from hindering each other during cutting, thus the claim would not be fairly based on matter disclosed."
In terms of the clarity of the claim, the opponent has referred to the meaning of the term "oppose'. The claim plainly states that "the respective mounting means do not oppose each other during cutting" (my emphasis). The opponent indicated two interpretations of this term. In such a case the fifth rule of construction (see Décor v Dart (supra)) is applicable. The rule states:
"If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim."
Thus it is permissible to resort to the body of the specification to determine the meaning of the term "oppose". I had previously considered this matter in detail under Ground 1, claim 2 above. I had concluded that the description and drawings of the accepted specification had clearly disclosed the feature wherein, "the respective mounting means do not oppose each other during cutting", while also making clear the meaning of the term "oppose" in the context in which it was used. Consequently I consider that claim 2 as proposed to be amended is clear and fairly based on the matter described in the specification.
Claim 3:
The opponent put in the following submissions:
"…claim 3 as proposed to be amended is not fairly based on the description as proposed to be amended as no mention is made in the description of a cutting zone, nor how the cutter means co-operate to define such a cutting zone. …claim 3 is not clear or succinct as it is not possible to place an interpretation on the scope of the term "a cutting zone", namely the boundaries of such a zone, thereby rendering the claim indefinite."
The term "cutting zone" is not used in the description as accepted or in the description as proposed to be amended. None of the declarants have indicated any lack of understanding of the term cutting zone. However I shall establish the plain meaning of this term. There seems to be no difficulty with the cutting aspect of this term as both parties are agreed that it is the cutting of elongate articles (namely the cane) which is taking place. The plain meaning of the term zone, as per The Macquarie Dictionary, 3rd Edition, first published 1997, is:
1. any continuous tract or area, which differs in some respect, or is distinguished for some purpose, from adjoining tracts or areas, or within which certain distinguishing circumstances exist or are established.
Thus "the leading and trailing cutter means co-operate to define an area within which cutting occurs". The opponent stated that the description failed to indicate how the cutter means co-operate to define such a cutting zone. The consistory statement and claim 1 of the accepted specification discloses:
"…opposed counter-rotating cutter assemblies each including cutter means which co-operate to cut the elongate articles as they pass between the opposed counter-rotating cutter assemblies."
The accepted description and drawings provides further details on how the cutters mounted on the opposed counter-rotating assemblies co-operate to cut the cane and in effect (based on the plain meaning of the term) how they co-operate to define a "cutting zone". One aspect disclosed is the speed of rotation of the cutters and the other is the offset between co-operating cutters, which help to define the cutting zone.
Another matter which the opponent raised was; "the difficulty of placing of an interpretation on the scope of the term 'a cutting zone', namely the boundaries of such a zone". Looking at the evidence from both parties:
The opponent's declarant Mr Young states:
"I understand the boundaries of such a hypothetical cutting zone could be from where the cutter blades grab the cane to where they finish the chop. The boundaries of a cutting zone will depend on the thickness of the cane being chopped at any given time and are therefore variable."
The patentee's declarant Mr. Beltrame states:
"It would seem clear to me that, by definition, the cutting zone is defined between the two blades during the cutting action. Thus, the leading cutter defines the leading end of the cutting zone and the trailing cutter defines the trailing end of the cutting zone."
The skilled addressees do not seem to have any difficulty with understanding the meaning of the term "cutting zone" and also the scope thereof. Mr. Young notes that the boundaries of the cutting zone are variable, being dependent on the thickness of the cane. Mr. Beltrame does not focus on the precise boundaries of the cutting zone but defines it as the area between the two blades during the cutting action. The skilled addressee is able to determine the scope of the term. Hence, the claim as proposed to be amended, does not lack clarity, nor does it lack fair basis on the specification as proposed to be amended. Consequently I consider that claim 3 as proposed to be amended is clear and fairly based on the matter described in the specification.
CONCLUSION
On consideration of all issues raised by the opponent I have found that the proposed amendments satisfy the requirements of Section 102 of the Patents Act. I do not believe that there are any other issues that may render the proposed amendments non-compliant with Section 102. Consequently, I allow the proposed amendments.
COSTS
The patentee stated:
· the proceedings relating to the Petty Patent had been protracted and long drawn, both in the substantive and this s.104 proceeding,
· the opponent had filed a Notice of Intention to file evidence in reply, but they did not file any evidence in reply, neither did they inform the patentee that they had withdrawn their notice,
· In any event the award of costs should take the above matters into account.
The opponent stated that costs should follow the event.
The power of the Commissioner to award is based on section 210 and regulation 22.8. I have found that the proposed amendments satisfy the requirements of Section 102 of the Patents Act and that the proposed amendments are allowable. In this proceeding I see no reason why costs should not follow the event. Accordingly, I award costs against the opponent, Cameco Industries, Inc. and in favour of the patentee, Westhill Engineering Construction Pty Ltd.
Jacob Elijah
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Pizzeys Patent & Trade Mark Attorneys, Canberra
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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