Specification as amended including claim not wholly within scope of a claim in specification
[39] In determining this question, the court must compare the claims pre and postamendment and determine
whether the postamended claims are broader in scope than they were preamendment.12 If they are, the
amendment should not be allowed. If the claims are narrower in scope postamendment than they were pre
amendment as contended by the applicant in this application, then there is no valid objection to the
amendment on this ground.
[40] In the earlier decision in Beecham Group Ltd v Bristol Myers Co,13 the court confirmed among others that the
assessment of whether or not a proposed amendment is permissible, is a threestep process.
[41] As they put it:
"In order to ascertain what was disclosed in the specification before amendment, one has to look at the whole
specification. One must then look at the proposed new claims in order to determine whether they claim (a) matter not
in substance disclosed in the specification before the amendment; (b) and at the description in the body of the
specification after amendment to see whether it describes (c) matter not previously disclosed."
[42] The corresponding view in Bateman14 was the following:
"It is a basic requirement of patent law that a patentee is not entitled to claim more than he has disclosed and
identified as the invention in the specification. That does not mean that the claim may not extend beyond the
examples or embodiments disclosed, but only that the claim may not be for something not covered by the general or
generalised disclosure of the invention."
[43] In the House of Lords case, The Mullard Radio Valve Company Ltd v Philco Radio Television15 it was also held
that:
"[a patentee] is not entitled to claim a monopoly more extensive than is necessary to protect that which he has
himself said is his invention."
Page 364 of [2014] 1 All SA 355 (GNP)
[44] In other words, the matter disclosed in the specification and the invention as claimed in the claims should
"equiparate", according to the respondent.
Specific objections
"at least two" vs "more than two"; "into which cards are delivered one by one . . . "
[45] The respondent contests the applicant's submission that the substitution of the phrase "at least two card
receiving components" in unamended claim 29 with the phrase "more than two card receiving components"
results in a limitation of the scope of the claim, making the amended claim to be wholly within the scope of the
unamended claim.
[46] It is so that it is the applicant's case that the word "plurality" in the specification means "two or more" and
that the word in substance therefore discloses "more than two" or "two or more" card receiving
components.16
[47] The two parties went on to give two different dictionary meanings of the word "plurality". According to the
respondent the word plurality according to the dictionary it relies upon17 does not mean "two or more" but
means "the state of being plural" and "a large number of (people) or (things)". As a consequence, so argued
the respondent:
"On comparison, the specification clarifies the exact meaning of plurality when it says that '(g)enerally speaking, a
larger number of individual compartments is preferred over a few compartments, with 17 to 19 compartments the
most preferred, but it should be understood that the present invention is not limited to a rack assembly of 17 to 1918
compartments.'" (My emphasis)
[48] The respondent further relies on the evidence of its South African notary, attorney, patent expert who apart
from his legal qualifications, also holds a Bachelor and Masters degrees in Engineering, Mr MAJ Rademeyer,
who testified to the effect that:
". . . it is or ought to be selfevident that the device cannot work with just two or three compartments for it is not
possible to achieve/shuffling (sic) with a device having such a small number of compartments."19
[49] Mr Rademeyer's viewpoint is thus that in his view, which is supported by the disclosure of the invention in the
specification, the invention cannot be carried out, for example, with two compartments. He also felt that it
would be inutile on the hypothesis that claim 29 could be construed to mean that the rack assembly could
comprise, for example, two compartments.
[50] It is thus also the respondent's conclusion on this aspect that since it is accepted (according to it, as the
applicant does not accept that) that the patentee did not intend to claim a rack assembly that is inutile,
therefore, properly construed in the light of the disclosure of the invention in the specification, a "plurality" of
compartments can only mean "a larger number of individual compartments" and not, for example, two or
three.
Page 365 of [2014] 1 All SA 355 (GNP)
The logical conclusion according to the respondent is that there is no basis for contending that the proposed
amended claim is fairly based on��matters disclosed in the specification or that it does not introduce new
matter not in substance disclosed in the specification. Conversely stated, there is no fair basis in the
specification for a claim broad enough to include a rack assembly comprising only, for example, two or even