ResMed Pty Limited v Commissioner of Patents
[2024] NZHC 1881
•10 July 2024
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2024-485-126
[2024] NZHC 1881
UNDER the Patents Act 1953 IN THE MATTER
of an appeal from a decision of the Assistant Commissioner of Patents ([2024] NZIPOPAT 2)
BETWEEN
RESMED PTY LIMITED
Appellant
AND
THE COMMISSIONER OF PATENTS
Respondent
Hearing: 10 June 2024 Appearances:
I Finch and J R E Rowland for Appellant G F Arthur KC for Respondent
Judgment:
10 July 2024
JUDGMENT OF McHERRON J
Table of Contents
Introduction[1]
Background[7]
The patent application[10]
Examination reports[13]
Applicable law[27]
Patents Act 1953 applies[28]
Principles of construction of patent specifications[32]
Claims must be fairly based on the specification[35] The Mond Nickel test for determining whether a claim is fairly based on the specification[38] Decision under appeal[42]
Assistant Commissioner’s application of Mond Nickel test to ResMed’s claims[46]
ResMed’s submissions on appeal[66]
ResMed’s criticisms of the Assistant Commissioner’s approach[66]
An elbow shaped connector is not required to make the vent holes work[71]
RESMED PTY LIMITED v THE COMMISSIONER OF PATENTS [2024] NZHC 1881 [10 July 2024]
The Assistant Commissioner misapplied the fair basis test[74]
Assessment[78]
The Assistant Commissioner correctly applied the fair basis test from Mond Nickel[85]
The Assistant Commissioner did not determine that vent holes needed to be located on
an elbow[93]
An elbow is an essential feature of the technology as disclosed in the complete specification[94]
Conclusion[101]
Result[102]
Costs[103]
Introduction
[1] ResMed Pty Ltd appeals a 17 January 2024 decision of the Assistant Commissioner of Patents.1 The decision under appeal concerns ResMed’s nasal mask system. The mask system is used to treat respiratory disorders, including sleep disordered breathing.
[2] The system comprises three main components: a positive airway pressure device, an air delivery tube, and a patient interface (or mask). At issue is the description of a specific part between the air delivery tube and the patient interface.
[3] In the complete patent specification describing ResMed’s invention, the word “elbow” is used for this part. However, in a subsequent claim, ResMed refers to the part as a “connector”.
[4] In the decision under appeal, the Assistant Commissioner determined that ResMed’s use of the term “connector” to describe this part in its claim set was not fairly based on the matter disclosed in ResMed’s complete specification for the mask system. The Assistant Commissioner concluded that “connector” was too broad a term to use instead of the term “elbow”, as that term was used in the specification.
[5] ResMed disagrees. It seeks an order reversing the decision of the Assistant Commissioner and directing that its Patent Application No. 786047, which uses the term “connector” instead of the term “elbow” throughout the claim set, be placed in order for acceptance.
1 Re Patent Application No. 786047 [2024] NZIPOPAT 2 (Decision under appeal).
[6] For the reasons set out below, I uphold the Assistant Commissioner’s decision and dismiss ResMed’s appeal.
Background
[7] To understand the use of the word “elbow” in context, it is helpful to refer to figure 3-2 from the complete specification of the nasal mask system:
[8] ResMed’s complete specification lists “reference signs” naming various parts of the device that are numbered in figure 3-2 (and the other illustrations in the complete specification). Relevantly, part numbers in figure 3-2 correspond to the following part names:
(a)125 elbow
(b)120 elbow assembly
(c)129 swivel cuff
(d)130 air delivery tube assembly
(e)135 connector
(f)150 cushion assembly
(g)3200 plenum chamber
(h)3500 decoupling structure.
[9] The part numbered 125 located between the air delivery tube and the mask, is a pictorial embodiment of the elbow. (The connector numbered 135 is a separate component from the elbow part at issue — see [90] below.)
The patent application
[10] ResMed’s original patent application in New Zealand for the nasal mask system had a filing date of 12 April 2013.2 ResMed has filed further applications with separate claim sets that protect different elements of the system. In March 2022, ResMed filed a divisional application (No. 786047), which derives from the original patent application.3
[11] The divisional application has a deemed filing date of 12 April 2013 (being the original filing date of ResMed’s application).4 A deemed filing date is significant for many reasons. To receive the benefits of the 2013 deemed filing date for the 2022
2 Patent Application No. 767639.
3 The Assistant Commissioner describes this application as the great great great great grandchild of the original New Zealand application, as a result of so-called “daisy-chaining”.
4 A “divisional application”, such as application 786047, is an application which is made for “any part of the subject matter” of the application it is divided from (which is known as the “parent”). In practice, the body of the specification of a divisional application is identical to its parent but the claims differ to address a different concept or embodiment disclosed in the specification: Patents Act 1953, s 12(5); Patents Regulations 1953, reg 23.
application, ResMed must substantiate the link between the two, through a principle known as “fair basis”. As will be discussed further below, the fair basis principle is reflected in s 10(4) of the Patents Act 1953.
[12] The decision under appeal followed four patent examination reports, the three most recent of which had concluded that ResMed’s claims were not fairly based on the complete specification. The main reason for the examiner’s conclusion that the claims were not fairly based on the specification, which is the central issue in ResMed’s appeal to this Court, was the use of the word “connector” in the claim set as a generic substitute for the word “elbow”.
Examination reports
[13] ResMed’s claims as filed on 10 March 2022 with the application referred to a “swivel elbow and connector assembly”.
[14] The application was first reviewed by a patent examiner in March/April 2022. The examiner raised objections to this claim set.
[15] ResMed submitted an amended claim set on 8 April 2022 which completely replaced the March claim set and included several references to the term “connector”. Previous references to elbow were removed.
[16]The relevant part of the 8 April 2022 amended claim reads as follows:
a connector which connects to the plenum chamber,5 wherein the connector forms a flow path for conveying the flow of gases from an air delivery tube to an interior of the plenum chamber when the air delivery tube is connected to the connector and the connector is connected to the plenum chamber, wherein the connector is constructed from a rigid material; and
a venting arrangement comprising a plurality of vent holes configured to permit the flow of gases from the patient interface for washout of gases exhaled by the patient;
5 The “plenum chamber” is the part of the patient interface/mask and is numbered 3200 in figure 3- 2 above. “Plenum chamber” is defined at [000480] of the complete specification as a “portion of a patient interface having walls enclosing a volume of space, the volume having air therein pressurised above atmospheric pressure in use. A shell may form part of the walls of a mask plenum chamber. In one form, a region of the patient’s face forms one of the walls of the plenum chamber.”
wherein the vent holes are provided on the connector;
wherein the vent holes are positioned on a tapered surface of the connector which is substantially rounded to promote diffusion of the flow of gases exiting through the vent holes, …
[17] In his second examination report dated 9 May 2022, examiner Steve Smith identified several concerns with ResMed’s use of the term “connector” in its amended claims.6 The examiner found that “elbow” was the appropriate term for the claim wording to ensure the claim was fairly based on the matter disclosed in the specification.7 The examiner considered that the terms “connector” and “elbow” are not synonymous.8 In particular, the examiner was concerned that there was no fair basis for ResMed to omit any reference to an elbow. Rather, the examiner considered:
… an elbow is still required between the air delivery tube and the cushion assembly9 (no embodiments seem to omit an elbow), thus should be included in this claim. …
[18] In its response to this report dated 7 July 2022, ResMed submitted that paragraph [000248] of the complete specification provided a “clear fair basis” for the way in which the term “connector” is used in the claims.
[19]Paragraph [000248] of the complete specification provides:
[000248] The elbow may be referred to as an adaptor, connector or may be described as any element attach [sic] an air delivery tube to a patient interface.
[20]This paragraph, according to ResMed’s July 2022 response:
… makes it clear that the term “connector” is an alternative to the term “elbow”. This implies that, wherever the term “elbow” is used in the specification, the term “connector” may alternatively be used. Therefore, the selection of the term “connector” in the claim is fairly based on the specification.
[21]ResMed also noted that:
In some contexts, “connector” is used in the specification to refer to a component/portion that connects an elbow to the plenum chamber. However,
6 Further examination report of Steve Smith, Principal Patent Examiner, 9 May 2022.
7 Patents Act 1953, s 10(4).
8 Decision under appeal, above n 1, at [22].
9 The “cushion assembly” is the part of the mask that provides a seal surrounding the patient’s nose: complete specification at [00093].
it is clear that “connector” is used in claim 1 to generally refer to a component that connects an air delivery tube to the plenum chamber (e.g. an elbow), and this is clearly consistent with what paragraph [248] tells the reader. Therefore, the “connector” of claim 1 may also have a component/portion that connects an elbow portion to the plenum chamber, and that elbow portion can also be part of the connector.
[22] In the third examination report of 18 July 2022 the examiner maintained his objection to ResMed’s use of the term “connector” as a substitute for the term “elbow”.10 Mr Smith noted that there were 379 instances of the term “elbow” in the original specification. But para [000248] was the only instance of such elbow being referred to as an adaptor, connector or any element for achieving the connection noted.
[23] As far as the examiner could tell, every other use of the term “connector” in relation to an “elbow” in the specification had a different meaning, and is either separate to the elbow, or is built-in to the elbow. The examiner interpreted para [000248] as meaning that there must be an elbow, but that it can be referred to in a functional sense as an adaptor, connector or element for attachment for respective adaption, connection or attachment.
[24] In other words, the elbow may be referred to, in a functional sense, as an adaptor, connector or element for attachment, but it is still an elbow. The examiner rejected ResMed’s implication that an elbow with an inherent “bend” is not essential and could be replaced by an equivalent piece that is straight and does not need to have any inherent bend. Nowhere in the original specification did the examiner find a basis for more broadly describing the features as now claimed by effectively replacing the term “elbow” with “connector”.
[25] Following further comments by ResMed, the examiner maintained his objection in his fourth examination report.11 The examiner agreed that “connector” is a more generic term than “elbow” (as noted above). However, he disagreed that “connector” is a commonly known alternative term for an elbow, in the sense of the two terms being synonymous. As a result of this outstanding objection, ResMed’s divisional application No. 786047 was not placed in order for acceptance.
10 Further examination report of Steve Smith, Principal Patent Examiner, 18 July 2022.
11 Further examination report of Steve Smith, Principal Patent Examiner, 28 October 2022.
[26] ResMed requested a hearing before an Assistant Commissioner, which occurred in September 2023.
Applicable law
[27] Before turning to the Assistant Commissioner’s decision, it is useful to review the applicable law, including the principle of fair basis.
Patents Act 1953 applies
[28] As the deemed filing date of 12 April 2013 pre-dates the commencement of the Patents Act 2013, it was common ground that the former Act, the Patents Act 1953 (the 1953 Act) applies, despite its repeal on 24 February 2017, pursuant to transitional provisions in the 2013 Act.12
[29]Under s 10(3) of the 1953 Act, a complete specification must:
(a)particularly describe the invention and the method by which it is to be performed; and
(b)disclose the best method of performing the invention which is known to the applicant and for which they are entitled to claim protection; and
(c)end with claim(s) defining the scope of the invention claimed.
[30] Claims define the monopoly sought and the specification provides further detail as to the invention. Claims must relate to one inventive concept.13
[31] Section 12 of the 1953 Act requires a complete specification to be examined. The examiner must report if the specification does not comply with the requirements of the 1953 Act, as happened here.
12 Patents Act 2013, s 253(1)(b).
13 Patents Act 1953, s 10(4).
Principles of construction of patent specifications
[32] A patent specification is a unilateral statement by the patentee, in words of its own choosing, addressed to a person “skilled in the art”,14 by which the patentee informs the reader what it claims to be the essential features of the new product.
[33]The Supreme Court summarised the following well-established principles in
Lucas v Peterson Portable Sawing Systems Ltd:15
(a)Construction of a claim is a matter for the Court.
(b)A patent specification is to be read as a whole and given a purposive construction. It must be construed as it would be understood by an appropriate addressee — a person skilled in the relevant art.
(c)Each part of a complete specification is to be read objectively in its overall context and in light of the function of that part. The claims are to be interpreted by reference to the object and description in the body of the specification.
(d)Claims define the scope of the monopoly, limiting what others may do. They must clearly define the protected field so others may fairly know where they cannot go.
(e)The description in the body of the specification may assist interpretation but it cannot modify the monopoly the inventor has clearly marked out. If their claim is formulated too narrowly so that imitators do not infringe, that cannot be rectified by reference to the description. If it is too wide, consequent invalidity cannot be saved by reading in limitations appearing in the description.
14 Sometimes referred to as the “notional skilled addressee”.
15 Lucas v Peterson Portable Sawing Systems Ltd [2006] NZSC 20; [2006] 3 NZLR 721 at [26]– [28].
(f)The description of a preferred embodiment does not confine the scope of the invention claimed more broadly.
[34] The language chosen is of critical importance. As Lord Hoffman said in Kirin- Amgen Inc v Hoechst Marion Roussel Ltd:16
The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety…. the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice.
Claims must be fairly based on the specification
[35] The historical position was that a patent claiming something different or wider than the invention disclosed was contrary to the Statute of Monopolies.17 This historical position received statutory recognition under the Patents Act 1949 (UK), which introduced the requirement that the claim be “fairly based”. This approach was in turn adopted in New Zealand in the 1953 Act, s 41(1)(i) of which provides that a patent may be revoked by the Court if the scope of any claim of the compete specification is not sufficiently and clearly defined or that any claim of the compete specification is not fairly based on the matter disclosed in the specification.
[36] Section 10(4) of the 1953 Act provides that the claims of a complete specification must be fairly based on the matter disclosed in the specification:
10 Contents of specification
…
(4) The claim or claims of a complete specification must relate to a single invention, must be clear and succinct, and must be fairly based on the matter disclosed in the specification.
…
[37] The English Court of Appeal has outlined the following steps to ascertain whether claims are fairly based on a complete specification:18
16 Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (HL) at [34].
17 H Fletcher Moulton The Present Law and Practice Relating to Letters Patent for Invention
Butterworth and Co, London 1913 at 19.
18 C Van der Lely NV v Ruston’s Engineering Co Ltd [1985] RPC 461 at 506 per Neill LJ.
(a)construe the specification itself to discover the nature of the invention and, where stated, the problem with which the invention is intended to deal;
(b)construe the claims, a task which is to be approached purposively and practically, not legalistically;
(c)decide whether the claim is fairly based on the specification. A correct statement of the rule is that the claims in a patent must not go beyond the disclosure in the specification.
The Mond Nickel test for determining whether a claim is fairly based on the specification
[38] Both parties, and the Assistant Commissioner in the decision under appeal, used the decision of the UK Patents Appeal Tribunal in Mond Nickel Co Ltd’s Application as a guiding framework.19 In that case, Lloyd-Jacob J set out a test for determining whether a claim is “fairly based” on the disclosure in the specification.20 While reluctant to define all that is imported by the use of that phrase, Lloyd-Jacob J said a three-fold investigation is called for, as follows:
(a)Is the alleged invention broadly described in the provisional specification?
(b)If so, is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?
(c)If not, does the claim include as a characteristic of the invention a feature on which the provisional specification is completely silent?
19 Mond Nickel Co Ltd’s Application [1956] RPC 189 [Mond Nickel].
20 The test, as expressed, relates to provisional specifications. The appellant submitted it can equally apply to a complete specification. Susy Frankel and Jessica Lai note that several New Zealand authorities have followed Mond Nickel as a general fair basis test: Patent Law and Policy (LexisNexis, Wellington, 2016) at 298 citing Allied Chemical Corporation v Commissioner of Patents [1970] NZLR 166 and Rohm & Haas Company [1996] NZIPOPAT 3, (23 April 1996) Patent application number 184759 at 9–11 per Assistant Commissioner Gray.
[39] The Assistant Commissioner points out that the considerations in Mond Nickel are only a framework for assessing fair basis. Fair basis ultimately requires determining whether the claims go beyond the disclosure in the complete specification.
[40] In Aktiebolaget Hassle v Alphapharm Pty Ltd Gummow J reformulated the Mond Nickel test so that it applies in a case such as the present which does not relate to a provisional specification, as follows:21
(a)Is the alleged invention as claimed in claim 1 broadly described in the body of the specification?22
(b)Is there anything in the body of the specification which is inconsistent with the alleged invention as claimed in claim 1?
(c)Does claim 1 include as a characteristic of the invention a feature as to which the body of the specification is wholly silent?
[41] The Assistant Commissioner also referred, in the decision under appeal, to the “well established” approach under the 1953 Act to give the benefit of the doubt to the applicant. This approach is supported by case law including by reference to principles such as:23
(a)The Patent Office should only refuse to allow application to proceed which on no reasonable view could be said to be within the ambit of the legislation.24
(b)The Commissioner ought not to refuse acceptance of an application and specification unless it appears practically certain that letters patent granted on the specification would be held invalid.25
21 Aktiebolaget Hassle v Alphapharm Pty Ltd [1999] FCA 628, 44 IPR 593 at [196].
22 In Imperial Chemical Industries Ltd’s Patent Application [1960] RPC 223, at 228, the Patents Appeal Tribunal (UK) clarified that the term “broadly” carried the meaning of “in a general sense”.
23 Decision under appeal, above n 1, at [8].
24 R v Patents Appeal Tribunal, ex parte Swift & Company [1962] RPC 37 at 46 per Parker CJ.
25 Hughes Aircraft Company [1995] NZIPOAT 3.
Decision under appeal
[42] The decision under appeal is a decision of Assistant Commissioner of Patents Warren Coles dated 17 January 2024. The decision was made on the papers after considering written submissions filed on behalf of ResMed.
[43] The Assistant Commissioner upheld the examiner’s objection that the term “connector” could not be fairly based on the original complete specification. The Assistant Commissioner’s decision concludes that the proper test for fair basis asks whether the feature as claimed is in substance disclosed in the complete specification and determines disclosure of the feature(s) must be able to be “gleaned” from the specification as a whole.26
[44]ResMed’s claims were as follows:27
WHAT WE CLAIM IS:
1. A patient interface for delivering a flow of gases at a positive pressure compared to ambient air pressure to a patient, for treating and/or preventing respiratory disorders, the patient interface comprising:
a cushion assembly configured to deliver the flow of gases to the patient’s airways, the cushion assembly comprising a seal-forming structure configured to seal to the patient’s face to provide the flow of gases to at least the patient’s nares, and a plenum chamber constructed from a flexible or semi-rigid material;
a positioning and stabilising structure configured to in use hold the seal- forming structure in a sealing position on the patient’s face;
a connector which connects to the plenum chamber, wherein the connector forms a flow path for conveying the flow of gases from an air delivery tube to an interior of the plenum chamber when the air delivery tube is connected to the connector and the connector is connected to the plenum chamber, wherein the connector is constructed from a rigid material; and
a venting arrangement comprising a plurality of vent holes configured to permit a flow of gases from the patient interface for washout of gases exhaled by the patient,
wherein the vent holes are provided on the connector,
wherein the vent holes are positioned on a tapered surface of the connector which is substantially rounded to promote diffusion of the flow of gases
26 Decision under appeal, above n 1, at [49].
27 This is the marked up claim set ResMed sent to IPONZ on 7 October 2022.
exiting through the vent holes, and wherein the vent holes are located around at least a superior portion of a circumference of the flow path when the connector is connected to the plenum chamber, and
wherein the vent holes are positioned on the tapered surface of the connector such that the venting arrangement extends at least half-way around the circumference of the flow path.
2. The patient interface according to claim 1, wherein the venting arrangement comprises between 20 and 80 holes.
3. The patient interface according to either claim 1 or 2, wherein the vent holes are uniformly spaced apart from each other on the tapered surface of the connector.
4. The patient interface according to any one of claims 1 to 3, wherein the venting arrangement is provided without vent holes located in an inferior portion of the circumference of the flow path.
5. The patient interface according to any one of claims 1 to 4, wherein each vent hole has an inlet and an outlet, and wherein each inlet is larger than the corresponding outlet of each vent hole.
6. The patient interface according to any one of claims 1 to 5, further comprising a short tube attached to the connector.
7.
The patient interface according to any one of claims 1 to 6, wherein the connector comprises an elbow.
8.7. The patient interface according to any one of claims 1 to 6, wherein the positioning and stabilising structure comprises:
a main headgear loop configured to extend in use across the patient's cheeks, between the patient’s eyes and the ears, and across a top region of the patient's head, and
a rear strap extending between the main headgear loop and across a rear region of the patient's head, wherein the rear strap is configured to connect the main headgear loop at points located above the patient’s ears.
8. The patient interface according to claim 7, wherein the main headgear loop extends across at least a portion of the zygomatic bone.
9. The patient interface according to either claim 7 or 8, wherein the rear strap extends across at least a portion of the occipital bone.
10. The patient interface according to any one of claims 7 to 9, wherein the positioning and stabilising structure comprises an adjustment portion configured to adjust the length of the main headgear loop in the top region of the patient’s head.
11. The patient interface according to any one of claims 7 to 10, wherein the positioning and stabilising structure comprises a pair of adjustment portions configured to adjust the length of the rear strap at regions of the patient’s head located over the temporal bones.
12. The patient interface according to any one of claims 1 to 11, wherein the positioning and stabilising structure is configured to in use create a sealing force which extends at an angle relative to the Frankfort horizontal plane, the sealing force extending in a superior-posterior direction.
[45] The Assistant Commissioner noted that claim 7 had been deleted during the course of the examination.28 That is why it is shown as struck out text above. This deletion is significant as it goes to the heart of ResMed’s position in the present appeal. As the Assistant Commissioner noted, ResMed considers the term “connector” to be broader than the term “elbow”.29
Assistant Commissioner’s application of Mond Nickel test to ResMed’s claims
[46] The Assistant Commissioner structured the rest of his decision by reference to the three Mond Nickel questions.
1. Is the alleged invention as claimed broadly described in the complete specification?
[47] The Assistant Commissioner recorded his agreement with ResMed that, in broad terms, there is a connecting member coupling an air delivery tube to a patient interface disclosed in the complete specification.30 Assessing claim 1 as a whole, the Assistant Commissioner considered that the invention as claimed in claim 1 is directed towards a patient interface for delivering a flow of gases to a patient at a positive pressure rather than at ambient air pressure.31 Accordingly, on the basis of the disclosure in the complete specification, the Assistant Commissioner concluded that the invention claimed in claim 1 is broadly described in the complete specification.32 Therefore, the Assistant Commissioner answered the first question from the Mond Nickel test in the affirmative.
28 Decision under appeal, above n 1, at [18].
29 At [19].
30 Decision under appeal, above n 1, at [52]. The Assistant Commissioner noted that the examiner answered the first question from Mond Nickel in the negative in his third report.
31 At [53].
32 At [56].
[48] In reaching the finding that the invention as claimed is broadly described in the complete specification, the Assistant Commissioner accepted that an elbow has the functional characteristics of a connector.
[49] Having answered the first question from the Mond Nickel test affirmatively, the Assistant Commissioner proceeded to consider the second question from that test.
2. Is there anything in the disclosure of the complete specification that is inconsistent with the alleged invention as claimed?
[50] In answering this, the Assistant Commissioner found “the issues [in the second question] centre on the meaning and interpretation of paragraph [000248] in the complete specification, and the meanings of terms in that paragraph.”33
[51]To recall, paragraph [000248] provides:
[000248] The elbow may be referred to as an adaptor, connector or may be described as any element attach [sic] an air delivery tube to a patient interface.
[52] The Assistant Commissioner had regard to ResMed’s submissions that all that is required is an element that attaches “an air delivery tube to a patient interface” and that there is no requirement that the component connecting the air delivery to the patient interface be elbow shaped — which is why it is also apt to be described as an “adaptor” or “connector”.
[53] The Assistant Commissioner considered the ordinary dictionary meaning of “elbow”, as “a sharp bend in the course of a river, road etc; an angle in a tube, etc; a short piece of pipe bent at an angle to join two long straight pieces”34 and as “a fitting for joining plumbing pipes at a 45° or 90° angle”.35
[54] The Assistant Commissioner also referred to the glossary section of the compete specification, which defines elbow as follows:36
33 At [61].
34 Decision under appeal, above n 1, at fn 26 (footnote original): Oxford English Dictionary at the URL fn 27: Collins dictionary Complete specification at [000476].
Elbow: A conduit that directs an axis of flow or air to change direction through an angle. In one form, the angle may be approximately 90 degrees. In another form, the angle may be less than 90 degrees. The conduit may have an approximately circular cross-section. In another form the conduit may have an oval or rectangular cross-section.
[55] The Assistant Commissioner’s decision refers to the dictionary definition of “connector” as “a device that joins two pieces of equipment, wire, or piping together; and any of various devices for connecting one object to another”.37 The Assistant Commissioner noted that while there were numerous references to connector in the complete specification (used in a different context), there was no express definition of that term in the glossary section.38
[56] The Assistant Commissioner also adopted a dictionary definition of “referred” as a word used to name, mention or describe something.39 Therefore, the Assistant Commissioner considered “the elbow must be able to in some way act as a connector, and be able to connect in some way”.40
[57] Finally, the Assistant Commissioner referred to the dictionary definition of the words “describe” (when something describes a particular shape it forms that shape) and “or” (a word used to link two or more alternatives).41
[58] The Assistant Commissioner disagreed with ResMed’s submission that there is no requirement the component connecting the air delivery tube to the patient interface be elbow shaped. Instead, the Assistant Commissioner concluded in relation to paragraph [000248] of the complete specification:42
(a)the subject of the sentence is an elbow;
(b)the elbow must have certain attributes in order for it to be, and function as, an elbow;
37 At fn 30, Collins dictionary: At [70].
39 Decision under appeal, above n 1, at [72].
40 At [73].
41 At [75] and [76].
42 At [83] and [88].
(c)the elbow must have attributes to enable it to function as a connector (that is, it must be able to connect an air delivery tube to a patient interface);
(d)the connector referred to at [000248] can only be in the shape of an elbow;
(e)the elbow is being referred to in para [000248] in a functional sense, that is, what function the elbow must perform.
[59] The Assistant Commissioner therefore concluded that the element may be any element so long as it is in the form of an elbow having attributes of an elbow, and capable of performing the function of attaching an air delivery tube to a patient interface. This is consistent with the description and drawings of the complete specification which describe and illustrate the element connecting an air delivery tube to a patient interface as an elbow.43
[60] The Assistant Commissioner referred to numerous references in the complete specification of the purpose of the elbow being to decouple drag forces from the patient interface, which assists in maintaining the seal of the mask to the patient.44 Indeed, referring to figure 3-2 (above), the elbow assembly is also referred to in that diagram as a decoupling structure (see the part numbered 3500). The Assistant Commissioner referred to the use of an elbow being preferable in relation to drag forces for the majority of the time and the majority of positions that the patient is in when they are receiving therapy instead of a non-elbowed component with ball and socket joint.45
[61] The Assistant Commissioner considered it is clear from the complete specification that the elbow referred to in the complete specification is a form of connector that connects an air delivery tube to a patient interface and that the element
43 At [91].
44 At [96], referring to the complete specification at [000244].
45 Compete specification at [000422].
coupling the air delivery device to a patient interface is only disclosed and contemplated as being in the form of an elbow.46
[62] Based on his conclusions, the Assistant Commissioner answered the second Mond Nickel question in the negative, finding the disclosure in the complete specification is inconsistent with the invention as claimed.47
[63]The final inquiry in Mond Nickel is:
3. Does the claim include as a characteristic of the invention a feature on which the specification is completely silent?
[64] The Assistant Commissioner did not answer the third question given his conclusion to question two. Therefore, he concluded that both claim one and all dependent claims in the amended claims set, which include the term “connector”, were not fairly based on the original complete specification.48
[65] Thus, the essential question in ResMed’s appeal to this Court remains whether the claims go beyond the disclosure in the complete specification.49
ResMed’s submissions on appeal
ResMed’s criticisms of the Assistant Commissioner’s approach
[66] ResMed argues that the Assistant Commissioner applied the wrong test by assessing the claim set through the framing that the claimed feature must be “in substance” disclosed in the complete specification. ResMed observes that this formulation is taken from s 40(1) of the 1953 Act. However, ResMed says that this test relates to amendments post-acceptance not the examination of a patent application pre-acceptance.
46 Decision under appeal, above n 1, at [103].
47 At [104].
48 At [110].
49 C Van der Lely NV v Ruston’s Engineering Co Ltd, above n 18, at 506–507.
[67] ResMed submits that the correct approach is instead to ask whether the claim as a whole is fairly based on the disclosure in the complete specification.
[68] ResMed also submits that the Assistant Commissioner adopted the wrong starting point for his assessment of fair basis, namely whether it was appropriate for ResMed to use “connector” instead of “elbow” in its claim. ResMed submits that the correct test is whether the claims, which use the word “connector”, are fairly based on the complete specification. In other words, it is appropriate to ask whether the specification “broadly describes” the use of a connector in the context of the claimed invention.
[69] In relation to the references to “elbow” in the complete specification including the drawings contained in it, ResMed submits that these should be regarded as merely illustrative and not limiting.50 ResMed submits that the complete specification makes that clear through statements which indicate that the technology is illustrated “by way of example, and not by way of limitation, in the figures of the accompanying drawings”.51
[70] In addition, ResMed refers to sections of the complete specification which state that, in interpreting the disclosure, all terms should be interpreted in the broadest reasonable manner consistent with the context,52 and that descriptive references to particular embodiments are merely illustrative of the principles and applications of the technology.53
An elbow shaped connector is not required to make the vent holes work
[71] ResMed emphasises that the invention protected by its March 2022 application focuses on an arrangements of vent holes on a tapered surface of a connector. It submits that the Assistant Commissioner erroneously held that the specification teaches that an elbow shape is necessary to work the claimed invention. ResMed submits that the specification itself teaches that an elbow shape is not critical to the
50 Mond Nickel, above n 19, at 195.
51 Complete specification at [00106] and [000238].
52 At [000500].
53 At [000502].
implementation of the claimed invention. It says that the shape of the connector has nothing to do with the way the vents work and there is nothing in the specification that requires the use of an elbow to make the vents work. It says that nothing in the specification requires an elbow shape to achieve the advantages of the invention.
[72]Overall, ResMed submits that:
(a)the complete specification clearly broadly describes the use of a connector in the context of the claimed invention;
(b)that use of the connector is not inconsistent with the claim;
(c)the complete specification is not wholly silent on the feature of a connector.
[73] ResMed submits that based on the correct application of the Mond Nickel test for fair basis, the Assistant Commissioner ought to have concluded that the claims using the word “connector” are fairly based on the complete specification. Therefore, ResMed submits the Assistant Commissioner’s decision should be reversed in favour of an order directing that ResMed’s application is in order for acceptance.
The Assistant Commissioner misapplied the fair basis test
[74] ResMed submits that fair basis ensures that the claimed invention is described in a general sense in the required application. The focus of the fair basis test is on the invention as claimed — the entire claim, not its constituent parts.
[75] The fair basis test implicitly acknowledges that there does not have to be an identity of language between the specification and the claims. If identity of language was required there would be no need for a fair basis test at all. ResMed notes that, under the 2013 Act, fair basis is no longer the applicable test. Instead under s 39(2)(c) of the 2013 Act, claims must be supported by the matter disclosed in the complete specification. This, ResMed says, is a more rigorous standard, but it is not the standard I am to apply here. Nor was it the standard the Assistant Commissioner applied.
[76] ResMed says that the Assistant Commissioner correctly identified that Mond Nickel as the appropriate test for fair basis and that the Mond Nickel test could be applied liberally.54 However, ResMed expresses doubts about the Assistant Commissioner’s use of the words “the feature as claimed must be in substance disclosed in the complete specification”.55 In particular, ResMed says it is not clear how strictly the Assistant Commissioner applied that standard.
[77]In relation to the application of the Mond Nickel test:
(a)ResMed agrees with the Assistant Commissioner’s conclusion at [56] of the decision under appeal that the claimed invention, including the use of the term “connector”, is broadly described in the complete specification. ResMed submits that the relevant consideration is what the specification teaches to the skilled addressee about the importance and functional attributes of the connector component to the claimed invention.
(b)Although the complete specification uses the term “elbow” and exemplifies the mask system described in the specification with elbow shaped components, the disclosures relevant to the invention place no importance on an angled elbow shape. In other words, ResMed submits it is unnecessary to use an elbow shaped connector to realise the invention that is protected by its claims. It says that it is the venting arrangement that is the inventive concept of the claims. Use of an elbow shape is not essential to the venting arrangement. Accordingly, ResMed submits that there are no inconsistencies arising from use of the broader term “connector”.
(c)In relation to the third question in the test, ResMed submits that the complete specification is not wholly silent on the connector integer of the claims.
54 Decision under appeal, above n 1, at [26]–[28].
55 At [49]. The expression “in substance disclosed” derives from Ethyl Corporation's Patent [1972] RPG 169 (CA) at 194–195 per Lord Denning.
Assessment
[78] In respect of its application, and this appeal, ResMed now seeks a patent claim giving it monopoly rights over a mask that uses a type of connector between the air delivery tube and cushion assembly that does not have to be an elbow.
[79] The question for this Court on appeal is whether ResMed’s claim extending to each and every type of connector between the cushion assembly mask and the air delivery tube is fairly based on a complete specification or should ResMed’s claim be required to use an elbow because its complete specification says so?
[80] To recap the applicable law, s 10(3) of the 1953 Act provides that a complete specification must particularly describe the invention and the method by which it is to be performed, disclose the best method for performing the invention known to the applicant, and end with a claim or claims defining the scope of the invention.
[81]Under s 10(4) of the 1953 Act, the claims of a complete specification must:
(a)relate to a single invention;
(b)be clear and succinct; and
(c)be fairly based on the matter disclosed in the specification.
[82]My assessment is governed by these two provisions.
[83] Although ResMed did not seek to adduce any evidence as to what would be apparent from the complete specification to a skilled addressee, it is clear to the Court that ResMed’s patent specification relevantly discloses the use of an elbow, rather than a more generic form of connector. The specification indicates the advantages of using an elbow and the disadvantages of not using an elbow. Moreover, as the Commissioner submits, all of the patent applications in the daisy-chain of applications accepted since the original application was filed in 2013 include a swivel elbow or an elbow. No accepted claims use the broader term “connector” to define the component connecting the mask to the air delivery tube.
[84] The parties have agreed that the test used in Mond Nickel is applicable. The Commissioner also relied on the approach taken by the English Court of Appeal in C Van der Lely NV v Ruston’s Engineering Co Ltd for ascertaining whether claims are fairly based on a complete specification, in particular the statement in that case of the rule that claims in a patent must not go beyond the disclosure in the specification.56
The Assistant Commissioner correctly applied the fair basis test from Mond Nickel
[85]I consider that the Assistant Commissioner correctly applied the test from
Mond Nickel, as follows:
(a)At stage one of the test, the Assistant Commissioner correctly determined that, “in broad terms, there is a connecting member coupling an air delivery tube to a patient interface disclosed in the complete specification”.57 However that does not mean that the Assistant Commissioner found the patent specification disclosed connectors generally. Rather, the specification discloses only that the elbow has a function of a connector. In other words, elbows are a sub- set of connectors.
(b)At stage two of the test, the Assistant Commissioner reviewed whether there was inconsistency with the alleged invention claimed. He correctly concluded that the element coupling the air delivery device to the mask has only been disclosed and contemplated as being in the form of an elbow. Accordingly, I accept the Assistant Commissioner’s analysis that the complete specification was inconsistent with a claim extending (as ResMed’s does) to any and all forms of connector. As the Assistant Commissioner determined, such a claim was not fairly based on the specification.
(c)The Assistant Commissioner did not address stage three of the test — whether the claim includes a feature on which the complete
56 C Van der Lely NV v Ruston’s Engineering Co Ltd, above n 18.
57 Decision under appeal, above n 1, at [52].
specification was wholly silent. The Assistant Commissioner found ResMed’s claim was inconsistent with the specification. On appeal, stage three only needs to be addressed if the Court finds the Assistant Commissioner was wrong in relation to stage two. However, I uphold the Commissioner’s analysis and conclusion in relation to stage two. I also note that, in my view, the complete specification is silent on whether a general connector may be used to form the flow path of gases from the air delivery tube to the mask. Rather, the specification only discloses an elbow doing that job.
[86] In my view, para [000248] of the complete specification only relates to different words that can be used to describe an elbow, namely an adapter, connector or any element attaching an air delivery tube to a patient interface. I do not consider that para [000248] discloses that connectors more generally may be used. Nor do I consider that the reference to vents on the connecting element from elbow to mask amounts to a disclosure of a connector acting as the flow path between air delivery tube and mask.
[87] I consider ResMed’s broadening of the term “elbow” in favour of the term “connector” conflicts with the basic requirement that claims must not go beyond the disclosures in the specification. If such broadening of language were allowed, it will give rise to questions of fairness to competitors. They make decisions based on what is contained in the specification. It will be unfair if competitors cannot rely on what ResMed disclosed in 2013, especially if they have been operating on the basis of that disclosure since then. There is a “public interest to prune speculative monopoly claiming down to the actual consideration provided by the applicant for [their] patents”.58 It ensures that the monopoly claimed is not more extensive than the invention disclosed and that “those who desire to ascertain how they are affected by a monopoly may be able to do so with a maximum degree of precision and economy of time”.59
58 Susy Frankel and Jessica C Lai, above n 20, at [9.4.1] citing The Upjohn Co [1967] NZIPOPAT 4 (7 November 1967) Patent Application No 137150 at 4 per Assistant Commissioner Wadham.
59 At 5.
[88] As the Assistant Commissioner points out in the decision under appeal, the brief summary of the technology contained at paras [00026]–[00038] of the specification relates to an elbow or swivel elbow. Indeed, according to the third examination report there are 379 incidences of the term “elbow” in the original specification. No embodiment of the invention is given in the specification showing the interface between the mask and air delivery tube as anything other than an elbow.60
[89] Several paragraphs in the complete specification emphasise illustrations of the technology are by way of example and not by way of limitation.61 But, as Mr Arthur KC submitted on behalf of the Commissioner, these interpretive references do not permit “back filling of technology”. In that respect, none of ResMed’s accepted claims since 2013 use the term “connector” to define the component that connects the cushion assembly to the air delivery tube. The illustrative diagrams show a variety of different elbow shapes, but all of them have a bent shape and conform with the definition of an elbow set out at paragraph [000476] of the complete specification:
Elbow: A conduit that directs an axis of flow or air to change direction through an angle. In one form, the angle may be approximately 90 degrees. In another form, the angle may be less than 90 degrees. The conduit may have an approximately circular cross-section. In another form the conduit may have an oval or rectangular cross-section.
[90] In the complete specification there are several references to the presence of an elbow and a connector.62 However these are two separate things. The elbow is the interface between the mask and the air delivery tube. The “connector” in the specification is a separate component from the elbow, connecting the elbow to the patient interface. It is not a replacement for the elbow as it is in the sense used in the claim.
[91] I agree with the Assistant Commissioner’s analysis of para [000248] of the complete specification. This paragraph means that the elbow must have attributes enabling it to function as a connector to attach an air delivery tube to the patient interface. But it still must be in the form of an elbow. In that regard, the Commissioner
60 Complete specification at paragraphs [000333]–[000336], [000348]–[000423]; figures 3-2, 3–11,
3–13, 3–42 — 3–118–3.
61 Paragraphs [000106], [000238], and [000500].
62 Paragraphs [00027], [000247], [000333]–[000336] and [000476].
identified the advantages disclosed in the complete specification for an elbow, particularly to decouple drag forces (making it less likely the mask will be pulled off the wearer’s face).
[92] In other words, all this means is that the elbow functions as an adapter or connector, not that any connector will suffice, even if it is not an elbow. If that had been the intention in the complete specification then, in my view, ResMed would have needed to expressly state that any connector could be used as the conduit between mask and air delivery tube, rather than specifically refer to an elbow.
The Assistant Commissioner did not determine that vent holes needed to be located on an elbow
[93] It does not follow that because vent holes can be located elsewhere than on an elbow, that an elbow does not need to be used to connect the mask and the air delivery tube. At the hearing, both parties accepted that the Commissioner’s decision is vent- location neutral. As indicated above, the question for this appeal is whether, according to the complete specification, the connector has to be an elbow. The answer to that question is not affected by whether the elbow does or does not have a venting arrangement on it. The issue of whether vent holes have to be on an elbow was not determined by the Assistant Commissioner and was a red herring for the purposes of this appeal.
An elbow is an essential feature of the technology as disclosed in the complete specification
[94] By calling the connecting device an elbow, the specification tells the skilled addressee that the interface is to be in the shape of an elbow. It does not need to say an elbow is in the shape of an elbow (though in fact it does so in the definition at [000476]). However, the specification does not say anything to suggest that an elbow would be other than elbow-shaped.
[95] Accordingly, I agree with the Assistant Commissioner’s analysis that the interface between mask and air delivery tube is to be an elbow, albeit that there is a wide variety of possible elbow shapes and venting arrangements. The specification
always discloses and describes an elbow and does not give any example where the element used as the conduit between mask and tube is anything other than an elbow.
[96] Moreover, as the Commissioner points out, before the introduction of the claims on 8 April 2022, no aspect of the specification or the claims addressed the venting arrangement on any other type of connector than an elbow between air delivery tube and mask.
[97] The specification also identifies the specific advantages of an elbow.63 The advantages of an elbow are consistent with the elbow being an essential feature of the technology.
[98] Accordingly, I accept the Commissioner’s conclusion at [49] of his decision — that the proper test for fair basis is whether the feature claimed is in substance disclosed in the complete specification as a whole. According to this test, I accept the Commissioner’s conclusion that the references in the amended claim set to any and all types of connector go beyond the disclosure in the complete specification. For while an elbow may be a connector, a connector is not always an elbow.64 I consider that the Assistant Commissioner, in reaching this conclusion, was mindful and respectful of the need to give ResMed the benefit of any doubt.
[99] ResMed’s specification has always had an elbow as the interface between air delivery tube and mask. It was only in 2022 that ResMed began to assert that for the purposes of the venting system an elbow is not part of the invention. However, when it filed its patent in 2013, the only interface was on an elbow.
[100] So, an elbow is an essential requirement of the nasal mask system as disclosed in the complete specification. As was held in Imperial Chemical Industries Ltd’s patent application, a claim which does not include an essential requirement is neither logically nor legitimately fairly based.65
63 Paragraphs [000422], [000371].
64 Decision under appeal, above n 1, at [108].
65 Imperial Chemical Industries Ltd’s Patent Application, above n 22.
Conclusion
[101]I conclude that:
(a)an elbow is an essential requirement, as it is clear that an elbow is in every aspect of the invention disclosed and the specification sets out the advantages of an elbow. As such, it may not be left out of the claim with “connector” used as an alternative. It is inconsistent with the complete specification not to have an elbow.
(b)the Assistant Commissioner correctly reviewed and understood the specification and correctly stated and applied s 10(4) of the 1953 Act. He correctly decided that a claim that encompasses any type of connector (rather than requiring an elbow) was not fairly based on the complete specification.
Result
[102]ResMed’s appeal is dismissed.
Costs
[103] I encourage the parties to resolve matters of costs between themselves. My preliminary view is that the Commissioner is entitled to costs on a 2B basis. If either party disagrees, memoranda may be filed (no more than five pages, and no later than 14 days after the date of this judgment).
McHerron J
Solicitors:
James & Wells, Hamilton for Appellant Crown Law, Wellington for Respondent
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