Enduroco Pty Ltd v Bus IP Holdings Pty Ltd [2025] APO 29

"[c]ommon sense dictates that, when read as a whole, the specification requires that the sub-frame indirectly supports the front axle assembly. That is direct support of the front axle assembly is nonsensical and inoperable. The purpose of the proposed amendment is to restrict the language of the claim such that it excludes the nonsensical construction."

"Accordingly, we request the Delegate to favourably reconsider his position."

1. In the alternative, the applicant submitted that the proposed amendment constituted the correction of an obvious mistake because it would be apparent to the person skilled the art that the unqualified language in the claims was obviously a mistake. The applicant referred to the following evidence given by Edbert Ta for the opposition to the amendments:

"In this regard, the function of the sub-frame 300 can be understood by visualising a scenario where the sub-frame 300 was not included in the conversion system 300 [sic - 100]. If we look at Figure 6 of the '941 Application, the first end of the lower control arm 164 is coupled to the mounting bracket 167 and the second end of the control arm 164 is coupled to the sub-frame 300. If the sub-frame 300 was removed, the lower control arm 164, particularly the second end of the lower control arm 164 would be unsupported and simply hang in the air. Therefore, the conversion system of the '941 Application provides for mounting and supporting of the OEM IFS and in particular the OEM lower control arm 164 of the OEM IFS 160. If subframe 300 were to be removed, lower control arm has no pivot point.

The stub axles 150 (which are also a part of the front axle assembly 140) are also supported by the subframe 300. Paragraph [061] states: 'The independent front suspension assembly 160 is coupled to the stub axle assemblies 150 provided at either end of the front axle assembly 140. The stub axle assembly 150 engages the independent suspension assembly 160 through the upper 'A' shaped upper control arms 162 and lower control arms 164.'

Consequently, the stub axle assemblies 150 are mounted to, and supported, by the ends of the upper and lower control arms 162 and 164 of the independent suspension assembly 160. Since the lower control arms are mounted to the sub-frame 300, it follows that the stub axle assemblies 150 are supported by the sub-frame 300 via the mounting of the lower control arms 164.

Indirect mounting and supporting of the stub axles 150 on the sub-frame 300 is achieved via the lower control arms 164."[11]

"It is readily apparent to the skilled addressee, as exemplified by Mister Ed Ta, who submitted a Declaration on behalf of the applicant, that the unqualified language in the claims: '...a sub-frame for attachment to a chassis of the vehicle for mounting and supporting the independent suspension assembly and the front axle assembly...' is obviously a mistake as it leads to an absurd result where the front axle assembly is left swinging in the breeze."

1. The applicant also pointed to ToolGen Incorporated v Fisher (No 3)[12], in which Nicholas J quoted with approval the following from Holtite Ltd v Jost (Great Britain) Ltd[13]:

"In the context of correcting it, the natural meaning of the expression 'obvious mistake' is that: what must be obvious is not simply that there has been some mistake but also what the mistake is and what is the correction needed. But the correction needed does not fail to be obvious merely because, as a matter of drafting, there is more than one way of expressing it without affecting its meaning. Furthermore, having regard to the function of the specification as a warning to the public of the limits of the monopoly claimed, the mistake must be apparent on the face of the specification itself to an instructed reader versed in the particular art to which the invention relates."[14]

1. The applicant submitted that the claim covering the direct mounting of the front axle assembly to the sub-frame, which was plainly inoperable, was the mistake that was obvious to the person skilled in the art. In relation to the correction being readily apparent to anyone, more particularly the person skilled in the art, the applicant submitted:

"In relation to the correction needed, there are only two ways one apparatus can be mounted and supported on another. That is the consequence of both logic and the plain meaning of the words of the claims, as well as the language of the specification as a whole. That is one apparatus must be mounted either directly or indirectly on the other. As mounting the first apparatus (the front axle) directly on the second apparatus (the sub-frame) renders the system inoperable, the correction necessary immediately presents itself: the mounting is indirect."

1. In their submissions I believe that the applicant has misunderstood the nature of a final determination.

1. In a final determination, any findings made in the original decision cannot be revisited (see, for example, Novozymes - referring to R v Smith; Ex parte Mole Engineering Pty Ltd[15], Iluka Midwest Ltd v Technological Resources Pty Limited[16], Iluka Midwest Ltd v Technological Resources Pty Limited[17] and Merck Sharpe & Dohme (Australia) Pty Ltd v Genentech Inc[18]). My finding that the claims only encompass direct mounting and supporting stands, and the final determination proceeds in a manner consistent with this finding. That is, I cannot, as requested by the applicant, "reconsider my position". My findings can only be overturned by appeal.

1. In my s59 decision I found that the language of the claims limited the sub-frame to be configured for direct mounting and supporting of both the independent suspension assembly and the front axle assembly. That is, contrary to the applicant's submissions, and notwithstanding the absence of "direct" in the claims, my finding was that the claims did not include both direct and indirect mounting within their scope. They only included direct mounting. The amendment proposed by the applicant proceeds on a mistaken assumption. Moreover, changing the mounting arrangement in the claims from the direct mounting arrangement that I found to exist to an arrangement which is not direct would clearly place the scope of the claims outside the scope that exists now. Such an amendment would not be allowable.

1. In relation to this ground, I do not consider that Mr Ta's evidence, as highlighted by the applicant, supports the interpretation the applicant has attributed to it. In my view, Mr Ta's evidence stands for the unremarkable proposition that, if the sub-frame was missing, the lower control arm would be unsupported. However, the claims do not contemplate a missing sub-frame and, as such, the front axle assembly is not "left swinging in the breeze". Mr Ta states that the front axle assembly is indirectly supported by the sub-frame, as indicated in the final sentence of the quoted passage above. Be that as it may, this evidence does not reveal any error in the claims. Indeed, Mr Ta's interpretation might even raise the question: "By what is the front axle assembly indirectly supported by the sub-frame?". Regardless, the claims remain clear and bear the construction I adopted in the s 59 decision. To my mind the applicant's argument seems somewhat academic. Moreover, the obvious correction proposed by the applicant finds no support in the evidence it relies on. I cannot identify the evidence that supports this conclusion.

1. Neither the nature of the alleged obvious mistake nor the proposed correction is, in my view, sufficiently clear or self-evident to meet the criteria set out in Holtite. I note that the paragraph in Holtite from which the applicant drew its quoted passage also includes the following:

"An amendment, if allowed, is retrospective to the date of filing the complete specification. So, with one exception, an amendment which enlarged the limits of the scope of the invention claimed would make actionable, ex post facto, what at the time when it was done the doer had no reason to suppose amounted to an infringement of the patentee's rights. An amendment that would have this effect is what is forbidden by the section. The one exception is where the amendment is for the purpose of correcting an 'obvious mistake'; but this exception is not in conflict with the policy disclosed by the remainder of the section, since if the mistake was obvious, it cannot have misled." (my bolding)[19]

1. Thus, an obvious mistake cannot mislead the reader, as the reader would recognise both the existence of the error and what was intended instead. I found the claims to be clear and to convey a definite meaning. The fact that this meaning differs from what is described in the remainder of the specification does not, in and of itself, indicate the presence of an error. It simply means the claims lack support. To suggest otherwise equates a lack of support with an obvious error.

1. Viewed from another perspective, this alternative submission by the applicant is essentially saying that no one reading the claims would conclude that direct mounting was intended, but would naturally arrive at the applicant's interpretation. But I did conclude that direct mounting was intended. Indeed, I reached this conclusion having considered whether indirect mounting was being claimed[20]. This means that I did not recognise the existence of any error, or its correction; in the terms of Holtite, I was misled. Accordingly, even if there errors in the claim, those errors do not meet the criteria as set out in Holtite.

1. Any amendment that would limit the claims to something other than direct mounting would necessarily fall outside the scope of the original claims and, therefore, be non-allowable. However, as established by the s59 decision, the claims' lack of support could only be addressed by removing the requirement for direct mounting - an amendment that is impermissible under Australian patent law.

1. Moreover, the amendment to remove direct mounting could not be seen as correcting an obvious mistake. Whatever errors there may be in the claims, they are not "obvious" ones.

1. I therefore agree with the Deputy Commissioner's observation at [99] of the s104 decision:

"I do not see how the applicant may amend the specification to overcome this finding of the delegate and comply with s102(2)(a)".

1. I communicated these findings to the parties on 7 August 2025 and, once again, indicated that I intended to refuse the application. I invited the parties to request to be heard. The applicant responded to my letter on 22 August 2025 saying:

"We advise that the Applicant does not wish to be heard in relation thereto.

Accordingly, we request that you issue your decision in this matter."

I received no response or request from the opponent.

1. The amendments filed after the s59 decision have not removed the ground of lack of support. Moreover, there is no allowable amendment which could remove this ground.

1. In the circumstances, I will refuse the application.

1. No party made any submission as to costs. No evidence has been filed, and no hearing has been held. As such, there is no action which could attract an award of costs. Therefore, I make no award of costs.

[1] [2022] APO 74

[3] [2025] APO 3

[4] [2018] APO 2 (Novozymes)

[11] Section 11.3 of declaration by Edbert Ta dated 16 July 2024 filed for the s104 opposition

[12] [2024] FCA 539 (ToolGen)

[13] [1979] RPC 81 (Holtite)

[15] [1981] HCA 25

[16] [2002] FCA 49

[17] [2002] FCA 1233

[18] [2016] FCA 324