three compartments.
[51] The applicant does not agree with the above submission by the respondent. This was more pronounced when
its Counsel submitted its interpretation of the word "plurality" using The Short Oxford English Dictionary.
[52] Even the respondent concedes that:
"Generally, it might be contended that a claim may legitimately go beyond the example of embodiments disclosed in
the specification . . . "20
[53] The respondent, however, came up with a rider or qualification for the above submission when it stated
further:
". . . but then the proposed amended claim will remain, as pointed out in Bateman (supra), a claim for something that
is not covered by the general or generalised disclosure of the invention in the specification.21
[54] The respondent consequently argued that as required in Mullard Radio Valve Company Ltd v Philco Radio
Television Corp (supra):
". . . there would be no 'equiparation' between matter disclosed in the specification and the invention as claimed in
the amended claim."22
[55] The respondent contends further that in any event, giving the narrowest possible meaning to the term
"plurality" there is no real, practical operational difference between the existing phrase "at least two
compartments" and the proposed new phrase, "more than two compartments" and that a claimed or alleged
difference is more apparent than real.
[56] My understanding of the above contention by the respondent is that if the rack assembly is inutile with two
and three compartments, an amendment from "at least two" compartments to "two or more" compartments
would serve no purpose whatsoever. The respondent is in fact saying that more than two compartments may
be three compartments and three is not only inutile; it is not the "larger number of compartments" of or in the
specification.
[57] The respondent persists with its argument that the applicant is the instance that ought to have furnished
reasons why:
". . . such a selfevidently purposeless amendment ought to be allowed . . . "
[58] It scoffs at the applicant's reposté that it was, because of validity concerns for claim 29 in the light of the
articitation [sic], Miura US Patent 3,588,116, informed the amendment or advised to amend. In its revocation
application, the first respondent contends and anticipates claim 29, rendering it or claiming it invalid.
[59] There are several problems with the respondent's arguments: Even if there was merit in the argument that
the claims of the patent
Page 366 of [2014] 1 All SA 355 (GNP)
postamendment are not fairly based on the teaching of the body of the specification, it is clear from the
respondent's own evidence that the alleged invalidity of the patent in this regard (lack of fairness) is not
brought about by the amendment now sought to be made by the patentee. The respondent's argument that
the alleged lack of fair basis is a defect which exists in the same form both pre and postamendment is not a
legitimate basis upon which an opposition to an amendment in terms of section 51(6) of the Act can be
claimed. That section provides expressly that it is only where the effect of the amendment is to bring about a
lack of fair basis that an amendment may be refused. The respondent's remedy, if it considers that its
argument has any merit, is not to oppose the amendment, but to seek the revocation of the patent based on
lack of fair basis in the action proceedings. Furthermore, the respondent's premise that there is no teaching in
the body of specification (prior to the amendment) of a shuffler with only, "for example three or four
compartments" is simply wrong.
[60] From the papers filed herein,23 the specification refers to:
". . . a plurality of compartments",
invariably meaning, two or more card receiving compartments in the body of the specification.
[61] The fact that the shuffler might only include three or four compartments into which the cards are placed when
the shuffling process commences, is therefore:
61.1 broadly described in the body of the specification prior to amendment;
61.2 not inconsistent with the body of the specification prior to amendment;
61.3 a feature about which the body of the specification cannot be said to be wholly silent.
[62] I should mention here that Counsel for the applicant took all the trouble at the start of his argument as well
as throughout his submissions on behalf of the applicant, to introduce evidence represented by the sketches,
drawings and super structure of the card shuffling machine itself, explaining stepbystep how the machine
presently operates as well as how it would operate postamendment. I am persuaded that that
demonstration convincingly points to the applicant's contentions being more cogent than the respondent's.
[63] It is thus my finding that the claims postamendment are fairly based on the body of the specification pre
amendment.
[64] I have looked critically at Mr Rademeyer's contribution under this heading, especially when he answered the
plurality argument on behalf of the respondent, more particularly when he contended that the card shuffling
device cannot work with two or three compartments.24 It is my