American Telephone and Telegraph Company v Pacific Dunlop Limited

[1997] APO 54

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 656677 in the name of American Telephone and Telegraph Company

Title:          Communication Cable Having Water Blocking Capabilities

Action:          Opposition by Pacific Dunlop Limited under Section 59 of the Patents Act 1990.

Decision:          Issued            .

Abstract

The invention relates to a communication cable having water blocking capabilities including both hydrophilic and hydrophobic materials.

Claim 1 not clear in relation to the expressions “consistently dispersed throughout” and “interdisposed throughout”. Claims 13 and 14 redundant. Opposition on the grounds of lack of inventive step and manner of manufacture not successful. Applicant given the opportunity to amend.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 656677 in the name of American Telephone and Telegraph Company and opposition by Pacific Dunlop Limited under Section 59 of the Patents Act 1990.

background

Patent application 656677 was filed by American Telephone and Telegraph Company on 26 May 1993 claiming priority from US 891,349 filed on 29 May 1992. The application was advertised accepted on 9 February 1995.

Pacific Dunlop filed a notice of opposition on 9 May 1995 and served the Statement of Grounds and Particulars on 9 August 1995. The evidentiary stages were completed with the serving of evidence in reply on 30 April 1997.

The opposition was set down for hearing in Canberra on 16 October 1997. The applicant was represented by Mr R Miller of Spruson & Ferguson, Sydney and the opponent by Mr A Ward of Griffith Hack, Melbourne.

Mr Ward indicated that the grounds of opposition pursued by the opponent were in relation to compliance with section 40, lack of inventive step and manner of manufacture.

the specification

The specification indicates that the invention relates to a communication cable having water blocking capabilities. Cables with either hydrophobic or hydrophilic materials are known but it is said that because of differences in operation of these materials their use in cooperation has been purposefully avoided. The need said to be addressed by the invention is for a cable with increased protection against water flow along the cable which specifically includes “both a hydrophobic material in cooperative communication with a hydrophilic material”.

The specification ends with 15 claims, of which claim 1 reads as follows:

“A communication cable which comprises:
a core having a longitudinal axis and comprising at least one transmission medium;
a layer of relatively supple plastic material which is disposed about said core;
a relatively rigid jacket which comprises a plastic material which is disposed about said layer of plastic material and which is characterised by a relatively uniform thickness; and
           water preventing means for preventing the ingress and migration of water within the core, wherein said water preventing means comprises a hydrophilic material in the form of a yarn which includes at least one superabsorbent fibre which is the result of a chemical conversion of a non-superabsorptive fibre and which is consistently dispersed throughout the core and a hydrophobic material which is interdisposed throughout the core.”

evidence

The evidence filed by the parties in this matter comprises declarations made by the following persons:

Evidence in support

• Glenn Ronald Dangerfield, with exhibits GRD 1 to 15. Mr Dangerfield makes statements about the development of communication cables and design strategies to prevent water ingress. The features of the claims are discussed in relation to a number of patent specifications and other documents.

• Hans Anton Mayer, Technical Manager Olex Cables (a division of Pacific Dunlop Limited), with exhibits HAM 1 to 14. Mr Mayer’s evidence is similar in scope to that of Mr Dangerfield.

Evidence in answer

• Professor Joseph Unsworth, with exhibit JU-1. Professor Unsworth provides his view of the relevant common general knowledge and comments on the documents in the evidence in support in relation to the claimed cable.

• Paul Walton Mackenzie, patent attorney, with exhibits PWM 1 & 2. Mr Mackenzie reviews the Dangerfield and Mayer exhibits and compares their disclosure to the invention claimed.

Evidence in reply

• Glenn Ronald Dangerfield. Mr Dangerfield comments on aspects of the Mackenzie and Unsworth declarations.

I will refer to the evidence as appropriate in my decision as well as to the submissions made by Mr Ward and Mr Miller at the hearing.

decision

Section 40

Mr Ward referred me to a number of issues in relation to section 40.

1. The invention is not fully described because “there is no disclosure of what are the superabsorbent fibres and which non-superabsorbent fibres were  converted chemically into superabsorbent fibres”.

In Universal Oil Products v. Monsanto (1973) 46 ALJR 658, Gibbs J. (as he then was) stated:

"The specification is sufficient if the patentee makes the nature of his invention, and how to perform it, clear and intelligible to persons having a reasonably competent knowledge of what was known before on the subject to which the patent relates, and having reasonable competent skill in the practical mode of doing what was then known."

The specification directs the reader to a number of references in relation to superabsorbents including synthetic superabsorbents and discusses some examples. This appears to be adequate for an understanding of the invention but in any event Mr Dangerfield says that:

• “Superabsorbent tapes have been extensively used in the cable industry since at least 1975”;

• “By 1992, all major cable manufacturing companies had experimented and or introduced superabsorbents in various forms into their cable designs”; and

• “a super-absorptive fibre resulting from a chemical conversion of a non-super-absorptive fibre was well known at 29 May 1992. Chemical conversion was quite common and was often used to produce superabsorbent fibres”

Accordingly I do not believe the skilled addressee would have any difficulty in understanding or applying the invention as it is described.

1. The expressions “consistently dispersed throughout” and “interdisposed throughout” in claim 1 are not clear.

It is true that the meaning of these expressions does not come readily from the description. Mr Unsworth interprets these words to mean that “the hydrophilic yarn and hydrophobic material are configured geometrically to fill any interstices formed throughout the core” and “helically, radially and axially to prevent movement of moisture both radially and longitudinally in any channels formed in the cable”. I am not sure that this interpretation clarifies the matter or that it has a basis in the description. The difference between “consistently dispersed” and “interdisposed throughout” has also not been explained.

Mr Dangerfield interprets “consistently dispersed” to mean “evenly dispersed” but I am not sure that this can be resolved with Unsworth’s interpretation. Consequently I believe the claims lack clarity in relation to these two expressions.

1. Claims 7 to 12, 13 and 14 are redundant.

Claims 7 and 8 respectively refer to coating and impregnating the hydrophilic yarn with a superabsorbent material. Claim 2 to which they are dependant defines the yarn as longitudinally aligned and from claim 1 that the yarn includes at lease one superabsorptive fibre. Thus I cannot see how these claims are redundant. There is also nothing to indicate that a yarn cannot be impregnated or coated with “at least one superabsorptive fibre”.

Claims 9 to 12 refer to particular superabsorptive materials. If fibres of these materials cannot be made by chemical conversion of non-superabsorptive fibres then there may be an issue in relation to section 40 but I have nothing to suggest that this is the case.

Claims 13 and 14 are clearly redundant and seem to have been overlooked when amendments were made to claim 1.

Inventive Step

When considering the question of a lack inventive step or obviousness in relation to a combination it is the inventiveness of the combination as a whole that must be looked at rather than that apparent from examining each integer in turn (Minnesota Mining & Manufacturing Co v Beiersdorf (1980) 144 CLR 253). The general test to be applied is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date (The Wellcome Foundation Limited v. V R Laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 270). It was also stated in the Wellcome case, supra, at 286 that:

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”

Mr Dangerfield says in his declaration in support that “the use of a combination of hydrophilic water blocking or superabsorbent yarns and hydrophobic materials in communication cables was well known at 29 May 1992”. He refers “in support of this” to a number of patent documents but there is no evidence to suggest that these were common general knowledge (General Tire & Rubber Company v. Firestone Tire & Rubber Company Ltd, (1972) RPC 457). With Mr Mayer he refers to the other features of the claims in similar terms and as a result I am not convinced that the combination now claimed is obvious in the light of common general knowledge. Similarly if any of the various documents referred to in the opponent’s evidence is considered as prior art information under section 7(3) I do not believe the evidence supports the conclusion that the invention is obvious. These is no evidence that specifically indicates that the documents would have been “ascertained, understood and regarded as relevant” and nothing to suggest how any one individually would have led the person skilled in the art to the combination now claimed. Consequently I find on the evidence before me that the invention claimed is not obvious.

Manner of Manufacture

In Ramset Fasteners (Aust ) Pty Ltd v Advanced Building Systems Pty Ltd 34 IPR 256 the court stated that a combination patent may be valid even if each integer, when considered separately, is well known; but in that case the combination itself must be new, and referred to the following passage from Fallshaw Holdings Pty Ltd v Flexello Castors & Wheels Plc 26 IPR 565 at 570:

" There can be no subject matter ... in a mutual relation which is already well known; inventiveness must lie, if at all, in the improvement which is claimed to have been effected in respect of one of the integers.  Only if a change to an integer so transforms the combination as to establish what is truly a new mutual relation in the operation of the integers will it be correct to see the improved result as a new combination."

In light of the foregoing discussion in relation to obviousness there is nothing in evidence to show that the cable claimed is not a "new mutual relation in the operation of the integers" or is otherwise wanting in subject matter. I find therefore that the opposition on this ground is not made out.

conclusion

I have found that claim 1 lacks clarity in relation to the expressions “consistently dispersed throughout” and “interdisposed throughout” and that claims 13 and 14 are redundant. The opponent has not established the other grounds of opposition.

Subject to any appeal, I allow the applicant sixty (60) days from the date of this decision in which to propose amendments overcoming the abovementioned defects. Otherwise I will refuse the application.

COSTS

The opponent has only been successful in relation to section 40. Taking into account all the circumstances I make no award of costs.

P M Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson, Sydney

Patent attorneys for the opponent   :  Griffith Hack, Melbourne