Yeti Civil Products Pty Ltd v Orca Civil Products Pty Ltd
[2024] APO 6
•9 February 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Yeti Civil Products Pty Ltd v Orca Civil Products Pty Ltd [2024] APO 6
Patent:2022100189
Title:Improved Grate and Method of Manufacture (2)
Patentee:Orca Civil Products Pty Ltd
Opponent:Yeti Civil Products Pty Ltd
Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date: 9 February 2024
Hearing Date: Written submissions completed on 10 January 2024
Catchwords: PATENTS – opposition under section 104 – grates for use in areas of foot traffic – opposition to allowability under subsection 102(1) and 102(2) considered – whether as a result of the amendments, the specification would claim or disclose matter that extends beyond that disclosed in the specification as filed – whether as a result of the amendments, the claims would not be supported – constructions of features – amendment allowable – issues do not arise as a result of the amendment – costs awarded against opponent
Representation: Patent attorney for the patentee: Jones Tulloch
Patent attorney for the opponent: Alder IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2022100189
Title:Improved Grate and Method of Manufacture (2)
Patentee:Orca Civil Products Pty Ltd
Decision Date: 9 February 2024
DECISION
As a result of the amendment requested on 12 July 2023, the specification does not claim or disclose matter that extends beyond the specification as filed, nor does it produce claims that are not supported. The amendment is allowable in accordance with section 102.
The opposition is unsuccessful, and I allow the amendment request of 12 July 2023.
I award costs against the opponent in accordance with Schedule 8 of the Patent Regulations (1990).
REASONS FOR DECISION
BACKGROUND
AU 2022100189 is an Australian innovation patent (the patent) granted on 11 January 2023 and certified on 9 May 2023 in the name of Orca Civil Products Pty Ltd (the patentee). The patent claims an earliest priority date of 15 April 2015 as a divisional application of parent application AU 2016100260 which relies itself upon provisional application AU 2015901348.
Subsequent certification in 2023, the patentee sought to amend the specification under section 104 on 12 July 2023. On 27 September 2023, Yeti Civil Products Pty Ltd (the opponent) sought to file a notice of opposition to the certification of the innovation patent along with an opposition to the allowance of the amendment. On 28 September 2023 a delegate of the Commissioner of Patents wrote to the parties informing them that no opposition to certification had been filed because regulation 5.6(1) stipulates that an opposition under s101M is affected by filing a notice of opposition, the statement of grounds and particulars (“SGP”) and a copy of each document accompanying the SGP. Reg 5.6(2) makes it clear that the documents specified in Reg 5.6(1) must be filed at the same time. No such documents were filed by the opponent. With this noted, the matter that proceeded was opposition to amendments under section 104 with an SGP for this matter being due on 27 October 2023. The opponent filed the SGP for this section 104 matter which is the subject of this decision on 13 October 2023.
The matter was set for hearing by way of written submissions completed on 10 January 2024. No evidence was filed.
Arguments raised by the opponent in the SGP in support of their opposition where that the amendment did not comply with s102(1)(a) in that as a result of the amendment, it claimed or disclosed matter extending beyond that disclosed in the complete specification as filed, and that as a result of the amendment, the claimed invention was not supported (s102(2)(b)). In their submissions in reply a number of new arguments were put forward by the opponent suggesting that: the claims were not clear and succinct (s102(2)(b)); that the amended claims did not fall within the scope of the claims before amendment (s102(2)(a)); that the amendment resulted in a specification that was not clear and complete enough for the invention to be performed by a person skilled in the art (s102(2)(b)); and that as a result of the amendment the claims rely on referenced to the drawings as prohibited by s40(3A) (s102(2)(b)). While not properly raised, and there being no opportunity for the patentee to comment, it will be seen that these submissions add nothing to the opponent’s case, and I will address them briefly following my primary reasoning merely for completeness.
THE RELEVANT LAW
The application for the patent was filed in 2022, and the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 therefore apply to the present patent.
The requirements for the allowability of amendments are governed by subsections 102(1) and (2) which state that:
(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).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment, the relevant time being the time of certification.
s102(1)(a) - Claim or disclose matter that extends beyond that disclosed at filing
Subsection 102(1) was considered by Beach J in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH [2020] FCA 328, where he noted the following at [215] to [218]:
“First, as has been pointed out, the test is a strict one.
Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.
Third, the required disclosure may be express or implied, but on any view must be clearly and unambiguously so. In this regard, a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.
Fourth, 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”.
Thus, the correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn or directly derive from the complete specification as filed.
s102(2)(b) and s40(3) - The claim(s) must be supported by matter disclosed in the specification
The requirement of support was discussed by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC[1]:
“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:
...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”.
[1] (No 3) [2020] FCA 1477 at [546]-[547]
It is therefore the case that under s40(3), the matter in a claim of a specification must be supported by an enabling disclosure in the description and any drawings, graphics, photographs and sequence listing (i.e., the body of the specification).
Construction of Claims and Specification
As is usually the case, critical to the present matter is proper construction of the specification and claims. Here, I note the comments of Middleton J in Eli Lilly and Company Limited v Apotex Pty Ltd[2]:
“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.”
[2] [2013] FCA 214; 100 IPR 451 at [139].
Furthermore, the correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[3]:
“…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.”[3] [2009] FCAFC 70 at [118] – [120]
THE INVENTION
As noted above, the present matter deals with the specification as proposed to be amended on 12 July 2023 which amended claims and pages 5 and 6 of the description.
The patent is directed towards a grate that operates in areas of foot traffic. The specification[4] discusses the desire for such grates to have narrow gaps between the top bars of the grate so as to be “heel-safe”, and also points to issues with welding bars to achieve desired spacing and aesthetic. Most relevantly to the present invention the specification discusses the desire for slip resistance, particularly in combination with narrow gaps to achieve heel safety. The invention thus seeks to overcome at least one of these disadvantages or provide a useful alternative.
[4] Specification at page 2
Preferred embodiments are discussed in the specification. Figs 1a to 1e provide a clear picture of the relevant embodiment.
The specification describes these figures as follows[5]:
Referring to Fig 1a, there is depicted a grate 100 in accordance with a preferred embodiment in an assembled condition. An exploded view of the grate 100 can be seen in Fig 1b and is comprised of three types of component, a plurality of topbars 130 (see also Fig le), a plurality of support bars 110 (see also Fig 1c) and banding bars 120 (see also Fig 1d). Typically each of the top bars 130, support bars 110 and banding bars 120 are formed of metal. Preferably they are formed of steel. More preferably they are formed of mild steel or stainless steel. The top bars 110 (sic) (and 230 and 330) have a width and height of about 13 mm by about 5 mm, although the top bars in other embodiments may have different dimensions suitable to the application and configuration.
[5] Specification at page 4 lines 16 - 24
Figs 1f and 1g show quite clearly how parts of the support bars 110 poke out beyond the supported top bars 130 to provide a mechanism for slip resistance.
Figs 1f and 1g are supported by the following text[6]:
While each of the preferred embodiments described with reference to the drawings include banding bars 120, 220 and 320, a grate in accordance with an alternate embodiment need not include banding bars. Referring to Fig 1f, there are shown two substantially mirror image support bars 110a and 110b which are formed by cutting one piece or sheet of metal. The sectional view of the grate 100 in Fig 1g depicts how each support bar 110 is configured to accommodate the top bars 130 in an assembled condition. The measurements indicated in Figs 1f and 1g (and Figs 2d and 2f, and Figs 3d and 3f) are in mm and demonstrate that the distance between any two adjacent top bars 130 is about 5 mm. It is preferred that the top surface of the support 110, formed by laser cutting, that protrudes by about 2 mm between each top bar 130 includes is slip resistant. Specifically, it is preferred that laser cutting of the support bars 110 gives anodular (sic) slip resistant surface.
[6] Specification at page 5 lines 1 - 11
It is this structure that aligns clearly with the claims as proposed to be amended whereby protruding support bars provide slip resistance, and top bars are of a quadrilateral shape.
The Claims as Proposed to be Amended.
There are five claims in the present innovation patent. The relevant amendment in question concerns claim 1. Claim 1 as proposed to be amended is as follows with added features underlined.
A grate for use in areas with foot traffic, comprising:
a plurality of top bars; and
a plurality of support bars configured to accommodate the top bars in an assembled condition; and
wherein a portion of the support bars protrude between and above the top bars, in an assembled condition; and
wherein the protruding support bars provide slip resistance; and wherein the top bars are of a quadrilateral form.
SUMMARY OF SUBMISSIONS
The opponent makes key points along the following lines:
· Firstly, the opponent submits that the complete specification as filed does not disclose the form of the top bars being quadrilateral and in as much, the amendment claims or discloses matter extending beyond the specification as filed.
· Secondly, they argue that the specification as filed does not disclose any information in relation to the quadrilateral form of the top bars and how the form contributes to the working of the invention. They suggest that the specification does not provide a base to entitle the patentee to the monopoly and thus the claims as proposed to be amended are not supported, and that the amended claims are materially different from the invention disclosed.
In response to arguments from the patentee, the opponent also raised new bases of attack which I summarise as follows:
· Claim 1 is not clear as to which parts of the top bars are of quadrilateral form.
· For the reason of this lack of clarity, the specification is not clear and complete enough for the invention to be performed by the person skilled in the art.
· Claim 1 as proposed to be amended relies on the embodiment in the figures to define the invention and accordingly, the specification does not comply with s40(3A) which prohibits such reliance.
· For reasons aligned with those above, the claim as proposed to be amended does not fall within the scope of the claim before amendment.
While the patentee has not had the opportunity to respond to the later points it will be clear that there is no need for them to do so. Responding to the first two key lines of argument the patentee argues along the following lines:
· On the suggestion that the amendment is directed to matter extending beyond that disclosed in the specification as filed it is said that any issue can not arise as a result of the amendment because of the manner in which the claims are narrowed.
· Support for the amendment can be found in figure 1e and the associated description relating to the figure and the skilled addressee would have no difficulty producing top bars of the range of quadrilateral forms now claimed.
· The claims were previously directed to any form of top bar including circular, triangular, ovoid, star shaped or any such cross section. The present amendment merely excludes or disclaims these possibilities that, on reading the specification as filed, the person skilled in the art would readily understand as being taught.
I will first construe the relevant term myself before considering the case as to non-allowability of the amendment.
CONSIDERATION
Claim Construction – Bars of Quadrilateral form.
Clearly the contentions in the present matter focus upon the introduced feature of the top bars taking on a ‘quadrilateral form’. The patentee suggests that:
“The term ‘quadrilateral has a plain meaning; ‘quad’ means four, ‘lateral’ means sides, therefore, ‘four sides’. Applying this term in the context of the amendment, the person skilled in the art would easily understand that the ‘top bar’ has ‘four sides’.”
Pointing to the specification, the patentee describes the quadrilateral form as representing the cross section of the top bar. They suggest that it would be readily understood by the person skilled in the art that other shapes such as circular, triangular, ovoid, star shaped or other cross sections would be acceptable given particular applications, these shapes being excluded by the amendment.
The opponent responds suggesting ambiguity in the feature of a bar of quadrilateral form. They also point out that the meaning of ‘quadrilateral’ is ‘a flat shape with four straight sides’ and that the ordinary meaning of a ‘bar’ is ‘a long, thin, straight piece of metal or wood’, thus being three-dimensional. They suggest difficultly in determining which part of the bar is of quadrilateral form.
The definitions offered by the patentee and opponent correctly identify the meaning of the words ‘bar’ and ‘quadrilateral’. For completeness I refer to the Macquarie Dictionary[7] which defines bar, quadrilateral, and form as follows:
[7] The Macquarie Dictionary, 8th ed.2022,
noun 1. a relatively long and evenly shaped piece of some solid substance, especially one of wood or metal used as a guard or obstruction, or for some mechanical purpose: the bars of a fence.
Quadrilateral
adjective 1. having four sides.
Form
noun 1. definite shape; external shape or appearance considered apart from colour or material; configuration.
2. the shape of a thing or person.
In the context of the claim being directed to a grate for use with foot traffic thus representing a mechanical construction, I consider that together the words ‘a bar of quadrilateral form’ clearly mean a long evenly shaped piece of solid structural material that has a definite four-sided shape. As a matter of logic, being long and evenly shaped I consider it plain that the four-sided characteristic form of a top bar only truly makes sense in terms of the shape when considered as the cross section perpendicularly intersecting the longitudinal axis of the bar. In this way, a circular form bar will have a circular cross section and a square form bar will have a square cross section. A bar can be of any geometric form and in as much may possess a cross section defined by two dimensional shapes such as those listed by the patentee but excluded from the claim by the present amendment.
Thus, I conclude that the claim as proposed to be amended is directed to a feature whereby the top bars take a form having a perpendicular cross section of two-dimensional shape with four sides. I note that this is consistent with the specification to the extent that a rectangular shape is clearly suggested by the figures above, and more specifically by Fig 1e.
I do not see any rational basis upon which to consider that some geometric aspect of a bar other than such a cross section as I have described above can be considered to produce a quadrilateral form of bar. I consider that the form of a bar is appropriately defined by its cross section perpendicular to its length, and not some other view that may appear for example, as a quadrilateral. It is for these reasons that the opponent’s suggestion of the amendment giving rise to ambiguity are unwarranted.
Does the addition of the feature ‘bars of quadrilateral form’ cause the specification to extend beyond that disclosed at filing?
The opponent fundamentally argues that there is simply no express disclosure of quadrilateral top bars in the specification as filed. They mention that the specification as filed discloses standard roll formed or slit steel may be used for the top bars[8] and that the top bars are substantially parallel to each other as are the support bars in assembled operation,[9] but reiterate that there is no written mention of the shape of the top bars. They add that there is no information regarding the working of the invention and why it would not work if the bars were not quadrilateral. They also suggest the requirement for quadrilateral top bars would not have been obvious. The opponent accepts the presence of a quadrilateral shape in Fig 1e.
[8] Specification as filed at page 4 lines 13-14
[9] Specification as filed at page 4 lines 26-29
In response the patentee first points out that the claims are narrowed and thus do not extend the disclosure. They point to Fig 1e and also suggest that the specification makes it clear that other shapes/forms are possible. They suggest that:
“It would be readily understood by the person skilled in the art that other shapes such as those including a circular, triangular, ovoid, star shaped, or other cross section would also be applicable given particular applications.”
In noting this the patentee argues that the amendment simply disclaims all of the shapes that are not quadrilateral. They also add that it is not a requirement that the specification explain the working of the invention in the context of the shape of the bars.
First and foremost, I agree with the patentee regarding the nature of the amendment and its narrowing effect. Prior to amendment, the claimed top bars did not take any particular form and were thereby directed to any of the cross-sectional shapes that have been discussed in this decision. In other words, the claimed and disclosed matter prior to amendment was generally directed to top bars of any cross-sectional form, and the amendment serves to narrow the claim to be limited to top bars of a quadrilateral form. The amendment uses new words, but it is not an amendment that claims or discloses new matter. In effect the added feature represents a proviso that top bars of all shapes other than quadrilateral are excluded.
In terms of the arguments of the opponent regarding working of the top bars and the quadrilateral shape and the obviousness of such a feature, I agree with the patentee that these are not relevant points. On reading the specification as filed it is clear that the teaching extends to all forms of top bars. The claim as proposed to be amended does not extend beyond this disclosure.
I find the amendment satisfies s102(1)(a).
Does the amendment give rise to an issue of support under s40(3)?
The opponent argues that the feature of ‘bars of quadrilateral form’ is a new feature, and the specification contains no base which can fairly entitle the monopoly. They add that the specification does not provide an explanation as to why the top bar contributes to the working of the invention and that the invention claimed in materially different to that described. The patentee responds similarly to that discussed above.
My take on this question is rather brief and draws largely from my agreement with the patentee that the amended claim is merely a narrowing of all shapes of top bar to simply a quadrilateral shape. With this in mind, any issue that may be alleged as to a lack of support of this feature by the specification is one that does not arise as a result of the amendment. Prior to amendment, all shapes were present including a quadrilateral form of top bars. The amended claim merely disclaims other shapes. Therefore, a s40(3) issue of support cannot arise as a result of the amendment.
I need not consider this ground further to investigate whether the feature of top bars of quadrilateral form is supported by the amended description. As commentary, I do note that the patentee points to Fig 1e and suggests that the person skilled in the art would be well aware of the array of two-dimensional forms available for bars. Fig 1e appears to provide clear disclosure of at least a rectangular form top bar which is a type of quadrilateral. While the extent of forms of top bars supported by the description as it presently stands is at least debatable, I note that it does appear at least reasonable to accept that a person skilled in the art would view Fig 1e as generally teaching at least quadrilateral shapes and that the invention as proposed to be amended is consistent with the description.
I find the amendment satisfies s102(2)(b).
The rest of the arguments advanced by the opponent.
In terms of an argument as to lack of clarity of the feature whereby the bar is of quadrilateral form, I have already answered this above. The feature is clear. There is no further information requiring disclosure in the specification regarding understanding of this feature, and thus an issue of clear and complete disclosure does not arise. The claim as proposed to be amended is plainly within the scope of that prior to amendment.
In terms of the suggestion by the opponent that the amendment is not allowable because it relies on references to the figures, I note that s40(3A) is exclusory to claims which actually reference figures. The claim as proposed to be amended simply does not reference a figure. Nothing more needs to be said here.
CONCLUSION
The amendment is allowable. It merely narrows the claim to a clearly understandable feature that was within the extent of the claim scope and disclosure of the specification prior to amendment.
I allow the amendment.
COSTS
The opposition to the s104 amendments is unsuccessful. I award costs in the normal manner against the opponent.
Dr N. R. Madsen
Deputy Commissioner of Patents
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