Asahi Kasei Kabushiki Kaisha v W R Grace & Co.-CONN

[1995] APO 1

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 625497 in the name of ASAHI KASEI KABUSHIKI KAISHA

Title:    A PHOTOSENSITIVE RESIN COMPOSITION FOR PRODUCING A RELIEF PRINTING PLATE

Action:    Opposition to grant by W.R. Grace & Co.- CONN. Request to amend statement of grounds and particulars

Decision:    Issued            .

Abstract:    Amendments to statement of grounds and particulars are consequential to the amendments proposed to the specification after the service of evidence in answer.  The applicant will not be unduly prejudiced, request granted.  Considering all the circumstances it is not appropriate at this time to grant the applicant leave to adduce further evidence in response to the amended particulars.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 625497 by ASAHI KASEI KABUSHIKI KAISHA.  Opposition thereto by W.R. GRACE & CO.-CONN, and a request to amend the statement of grounds and particulars.

background

Application 625497 was filed on 23 March 1989. The application was advertised accepted on 16 July 1992.  W.R. Grace & Co.-CONN (GRACE) filed a notice of opposition on 16 October 1992 and served a statement of grounds and particulars on 16 November 1992.

Amended statements of grounds and particulars were filed on 27 November 1992, 7 December 1992, 12 January 1992, and 12 May 1993.  These were all allowed without objection from the applicant.  GRACE served its evidence in support on 17 May 1993.  The applicant (ASAHI) served its evidence in answer on 15 October 1993. This evidence included reference to amended claims.

On 14 December 1993 the applicant requested leave to amend the specification and filed further amendments on 11 March 1994.  Leave to amend was advertised on 23 June 1994.  In anticipation of this request the opponent, on 10 November 1993, requested directions regarding the time for serving evidence in reply.  On 25 January 1994 a direction was made setting the time for serving evidence in reply as 3 months after the amendments proposed by the applicant were allowed, withdrawn or refused.

On 14 July 1994 the opponent requested that the statement of grounds and particulars be amended.  The applicant objected to the proposed amendments and the matter was set down for hearing in Canberra on 29 August 1994.  ASAHI was not represented at the hearing and relied on written submissions from Mr Louis C. Gebhardt, patent attorney of Watermark, Melbourne.  GRACE was represented by Mr Raymond Evans, patent attorney of Phillips, Ormonde and Fitzpatrick, Melbourne.

AMENDMENT TO THE STATEMENT OF GROUNDS AND PARTICULARS

The opponent's stated reasons for the 14 July 1994 request to amend the statement of grounds and particulars are set out in the declaration made by Raymond Lewis Evans on 14 July 1994.  These are, in summary, that the applicant's evidence in answer acknowledged that claim 1 prior to amendment was not novel and appeared to address claims which accord with those proposed by the applicant on 14 December 1994, and "in order to reply to the Evidence in Answer the Opponent is therefore required to address limitations in the claims which were not present at the date of service of Evidence in Support."

The statement of grounds and particulars includes a list of documents supporting the grounds of opposition of lack of novelty, lack of inventive step and not a manner of manufacture.  The opponent's proposed amendment seeks to add to this list the following document:

.Berner et al "Recent Developments in Photinitiators" J. Oil Col. Chem. Assoc., 1978, 61,105-113.

Mr Evans states that:

"This paper is specifically referred to on page 130 of the Roffey text which refers to control of the surface/through cure balances of UV curable compositions.....I had not seen the Berner et al reference before obtaining a copy in June 1994.

...The Berner et al reference is specifically relevant to the claims as proposed to be amended for the following reasons.  As indicated on page 105 the Bener (sic) et al paper addresses UV curable compositions of a broad range of applications and specifically refers to the manufacture of printing plates............Page 152 specifically addresses light stabilization and refers to the problem of overcuring the surface of "thicker films, like 2mm unsaturated polyester plates" and the authors suggest the use of Hindered Amine Light Stabilizers in such compositions."

AMENDMENT OF THE SPECIFICATION

The applicant's requests for leave to amend the specification, in particular by adding features to claim 1, result in a new claim 1 which follows with the new matter underlined:

Claim 1.  A photosensitive resin composition when used to produce a flexographic printing plate having a thickness in the range of 3mm to 10 mm, said resin composition comprising:

(A)from 5.0 to 98.0% by weight, based on the total weight of components (A), (B), (C) and (D), of a polymer having at least one ethylenically unsaturated group and having a number average molecular weight of 5,000 to 100,000 selected from the group consisting of a prepolymer, a binder polymer and a mixture thereof,

(B)from 1.0 to 94.0% by weight , based on the total weight of components (A), (B), (C) and (D), of an ethylenically unsaturated monomer,

(C) from 0.05 to 10.0% by weight, based on the total weight of components (A), (B), (C) and (D), of a hindered amine having a piperidine ring represented by the formula:

(structural formula given)            (I), and

(D)from 0.001 to 10.0% by weight, based on the total weight of components (A), (B), (C) and (D), of a photopolymerization initiator selected from the group consisting of acetophenone and a derivative thereof, benzoin and a derivative thereof, benzophenone and a derivative thereof, benzoic acid and a derivative thereof, anthraquinone and a derivative thereof, xanthone and a derivative thereof and thioxanthone and a derivative thereof.

Claim 5.A method for producing a relief printing plate having a thickness in the range of 3 mm to 10 mm, which comprises the steps of:

(a)providing a photosensitive resin layer, then in either order for exposure;

(b)subjecting one surface of said resin layer to relief exposure through a transparency having a transmitting pattern, and

(c)subjecting the other surface of said resin layer to back exposure;

(d)subjecting the resultant exposed resin layer to development to obtain a relief printing plate;

(e)washing said relief printing plate; and

(f)drying the washed relief printing plate;

wherein said photosensitive layer is composed of a photosensitive resin composition comprising:

(components (A), (B), (C) and (D) as defined in claim 1 are here set out)

APPLICANT'S SUBMISSIONS

The applicant in written submissions objected to the amendment of the statement of grounds and particulars:

"We understand that the purpose of the application under Regulation 5.9 is to introduce a further reference (w) Berner et al "Recent Developments in Photoinitiators" at page 2a of the Statement of Grounds and Particulars.

We have reviewed the statements made in the attached declaration and are singularly unimpressed by the arguments and statements made in support of the introduction of the further evidence. We object to the incorporation of reference (w) into the Statement of Grounds and Particulars.

Our review of the specification of the above application reveals that there is throughout pages 2 to 9 thereof a very detailed discussion of the problems with which the inventors of the invention have grappled, viz, to provide a relief printing plate, more particularly a flexographic printing plate which is devoid of the problems discussed in great detail at pages 2 to 7 of the specification. In other words, the specification is not directed to a novel composition but rather to a composition to be used for the purpose of bringing about a an amelioration or improvement of certain properties in printing plates subjected to very strong actinic radiation. We are not dealing here with a throw away reference to the general use of the compositions of the application but rather the specification deals specifically with the purpose and use of the composition of the application in improvement of the properties of certain printing plates.

We should also point out that the applicant's original claims contained a method claim directed to producing a relief printing plate, etc. Thus, this is clearly not an application which originally was solely directed to a novel composition per se. It was always the intention of the applicant that the composition be claimed in the context of its use in producing printing plates and it is only the fact that the Japanese applicant was unaware of the drafting requirements and peculiarities of Australia that the composition claims were couched in terms which led to the belief that the composition claim was considered to be novel. It is not.

Accordingly, the arguments and statements made in the Statutory Declaration to the effect that the opponent was simply unaware from a reading of the specification as to where the real essence of the invention resided, are quite clearly fallacious and invalid. As mentioned above, right throughout the specification there is a very intense description of the problems with which the inventors were grappling and to which the invention was directed, viz, a composition for use in a specified application and this was made patently clear by including a method claim which was specifically directed to this new use. The opponents could not have failed to be aware of this method claim.

It is quite clear that the opponent has simply overlooked a piece of prior art and is now attempting to introduce this new piece of prior art which it should have introduced in the original Statement of Grounds and Particulars and in the Evidence-in-Support, bearing in mind the nature of the description of the specification as mentioned above.

Certainly, the applicant reserves the right to respond to this citation if it is admitted by the Patent Office at this late stage of the opposition proceedings, and objects strongly to the inclusion of this prior art which has been necessitated by an oversight of the opponent."

OPPONENT'S SUBMISSIONS

The opponent provided written support in the form of a declaration by their patent attorney, Raymond Evans, for their reasons for requesting to amend the statement of grounds and particulars.  At the hearing Mr Evans made the following further submissions, in summary:

The circumstances related to this case are very similar to the copending request to amend the particulars under application 624994.

One result of the amendments under section 104 is that claim 1 is now directed to a composition when used to produce a flexographic printing plate having a thickness in the range 3 mm to 10 mm.  This is in effect a claim to a process, a specific process for producing a specific article having a specific thickness, from 3-10 mm.  (See eg Wellcome v Commissioner of Patents 30 ALR, 510 at p.516.) None of the claims prior to amendment make any reference whatsoever to thickness and so there is no indication that the thickness was regarded by the applicant as being relevant to the invention claimed.

The opponent is clearly entitled to draft their statement of grounds and particulars on the assumption that the applicant has defined the monopoly they seek in their claims (See EMI v Lissen (1939) 56 RPC p.39.) and should not be expected to anticipate and produce evidence on all restrictions that could be introduced to a claim.  It would be unreasonable to expect the opponent to try to interpret the claims to include these amendments which the applicant has described as "extensive".  (See their application, of 17 August 1993, for an extension of time to serve evidence in answer.) 

If you consider the specification itself, examples 15 and 16, Table 5, p.82, which are examples of the invention, have a thickness of 1 and 2 mm, respectively.  There is nothing in the specification that actually suggests that the invention excludes thicknesses of less than 3 mm.

The Berner et al reference is relevant because it addresses the thickness question in relation to the manufacture of printing plates and it makes specific reference to this being a new use for a "new class of light stabilisers - the hindered amines." (See the second last page of the article.)

The amendment to the Statement of Grounds and Particulars is consequential to the amendments made by the applicant.  Furthermore, the Berner at al document is not some radical departure from the Grounds and Particulars, but it is a reference which is specifically referred to in one of the textbooks cited as document (s) in the Particulars.

On the question of undue prejudice, the date or the time in which the amendments were made should be considered relative to the day the applicants lodged their section 104 amendments.  The amendments to the particulars were proposed shortly after publication of granting leave to the applicant to amend, and even before the amendments were finally allowed.  The time for service of evidence in reply has not been delayed in any way.

The question of whether the opponent was previously aware of the document is not relevant in these particular circumstances as the opponent can only be expected to choose the appropriate particulars on the basis of the claims on file.  It is the specific amendments to the claims which make this particularly relevant and the opponent should be entitled to make consequential amendments.

The public interest dictates that the opponent should be allowed to amend their Statement of Grounds and Particulars. (See Kaiser Aluminium v Reynolds 20 CLR 136.) The present claims are different from those which were considered during examination. They have an additional limitation which the examiner has not considered. The opponent is in the best position to examine the prior art relevant to this change. To deny the opponent the opportunity to amend the particulars in these circumstances will in effect cut them out of the opposition, as a result of the applicant's own actions.

In relation to the relevant provisions of the regulations the amendments to the particulars could be allowed under either part (b) or (c) of regulation 5.9(1).  Again the question of undue prejudice favours the opponent, because while there may be prejudice (and there always is) when the particulars are introduced.  This prejudice is not undue under those circumstances given the actions of the opponent in quickly amending the Statement of Grounds and Particulars and given that the amendments are consequential on the section 104 amendments.

The applicant has stated that they wish to reserve the right to respond to this citation if it is admitted.  If the applicant has grounds for such a response, they should apply under regulation 5.10(4) to serve further evidence.  It would not be appropriate for them to respond before the opponent has given their evidence in reply and the question of whether new matter has been raised may be judged.

DECISION

The facts of this case are very similar to those in my previous decision in Asahi Kasei Kabushiki Kaisha v W.R. Grace & Co.- Conn (unreported decision dated 13 December 1994 on application 624994).  In brief, the opponent in the present case has sought to amend their statement of grounds and particulars to take account of amendments made to the specification by the applicant.  These amendments have had the effect of changing claim 1 from a claim to a specific composition to one to a process in which the composition is to be used and, significantly, one which is further restricted by previously unclaimed limitations.  The same further limitations are introduced into the method claim, claim 6.

Specifically, the amendments limit component (A) of the composition in both claim 1 and claim 6 to being a polymer "having a number average molecular weight of 5,000 to 100,000" and "having at least one ethylenically unsaturated group".  However, although some of the members of the group from which component (A) was to be selected were polymers "having at least one ethylenically unsaturated group", others , eg. the "polyamide ether" and the "polyamideimide ether" are not limited to having such a group" (p.33,l.21-25).

More pertinent in regard to the opponent's request to amend the Statement of Grounds and Particulars, the amendments introduce the requirement that the printing plate produced should be flexographic and have a thickness in the range of 3mm to 10mm.  These features were disclosed in the specification but there was no suggestion that they were features which went to the essence of the invention.  In fact, at p.53,l.7-15, it was stated that:

"The photosensitive resin composition of the present invention provides particularly excellent results, when it is used for preparing a relief printing plate having a thickness of 1mm or more."

And at p.82, examples 15 and 16, of the invention, in Table 5 have thicknesses of 1 and 2 mm, respectively.

Further, none of these limitations was included in any of the accepted claims. 

In my previous decision, Asahi v Grace (supra), I found that in circumstances such as these the opponent should not be expected to take account of all possible amendments, but that it would be prudent for them to present grounds and particulars, if the art supports it, which cover the most obvious of potential amendments.  In the present case, the claims have been amended to include a number of limitations which were not present in the claims of the accepted specification.  Further, although the limitations were disclosed in the specification, there was no suggestion that they were features which went to the essence of the invention.  On the contrary, examples of the invention were given which did not conform to those limitations.

I find that the opponent could not reasonably have been expected to foresee the applicant's selection, at least, of the thickness range of 3 to 10 mm to define the bounds of their monopoly.

The reason for the form of the accepted claims as stated in the applicant's submissions is irrelevant.  The claims which defined the invention and which the applicant had to address were the accepted claims.

As I stated in my previous decision, Asahi v Grace (supra):

"It follows from my findings that an opponent when faced with a change, of the specific kind already discussed, to the claims which they are opposing might well find it necessary to review their case as a whole, both their original selection of documents and the need to extend their search.  As a question of prejudice to the applicant, it is  prima facie one which results from the applicant's own action in first choosing to claim their invention in a a particular way........

Specifically, in the present case it would be unreasonable to suggest that the opponent should be limited to matters arising incidental to their preparation of the original case or to be prevented from changing the case the applicant has to answer.  The interests of both the public and the opponent will be better served by allowing the opponent to change their particulars to address the new claims, whether or not this includes extending their search.

However, the principles relating to protraction of the case and amendment of the statement of grounds and particulars at the earliest possible opportunity have some relevance in this case.  There could be some protraction of the case if the applicant were to find it necessary to seek to respond by means of further evidence of their own to any new evidence introduced in the evidence in reply as a result of the amended particulars.  That is a possibility but one which can only be addressed if and when it arises.  It also is a consequence of the applicant's original claims."

In the present case the opponent has not sought an extension of time in which to carry out a further search.  They sought to amend their particulars on 14 July 1994, some 4 months after the applicant's last request to amend their specification on 11 March 1994; less than a month after leave to amend was advertised on 23 June 1994; and before final action to allow, withdraw or refuse the applicant's amendments and a further 3 months before the evidence in reply was due as a result of the directions made on 25 January 1994.  Even though the present opposition proceedings are well advanced and the evidence in answer has been served, taking all factors into account I find that the opponent has acted promptly.

I have considered the applicant's submissions but am not convinced that they would be unduly prejudiced if I were to allow the request to amend the statement of grounds and particulars.

SUMMARY

The proposed amendment to the statement of grounds and particulars is consequential to amendments proposed to the claims by the applicant.  It would have been unreasonable to expect the opponent to have taken account of the specific amendments introduced by the applicant's amendments to the specification when preparing their original statement of grounds and particulars.  The opponent acted to request amendment of their statement of grounds and particulars at a time which allowed the applicant fair notice of any change in the case they would need to defend.  Any protraction of proceedings which might arise is ultimately a result of the original form in which the applicant chose to claim their invention.  I find that the amendments to the statement of grounds and particulars are not unduly prejudicial to the applicant and I allow the amendment.

OTHER MATTERS

If I allowed the amendment to the statement of grounds and particulars, the applicant sought the right to respond to the new document so introduced.  I take this as a request to adduce further evidence as they will have the opportunity to make submissions on the document at the substantive opposition hearing.  I do not believe that it is appropriate at this time to exercise the Commissioner's discretion to make a direction to that effect.  On balance I agree with the opponent that if there is a need for the applicant to respond, it would be better dealt with under regulation 5.10(4) after the evidence in reply has been served and the applicant has a better appreciation of any need, which may or may not arise, to adduce further evidence.  I decline to issue such a direction.

COSTS

The opponent has argued that they should be awarded full costs irrespective of the decision in this action because of the nature of the applicant's claims and because the amendments to the claims were extensive.  The applicant has made no submissions as to costs.

I have found in favour of the opponent.  In actions of this kind costs usually follow the event.  I find no reason to depart from that practice in this case and I award costs in favour of the opponent, ASAHI KASEI KABUSHIKI KAISHA, and against the applicant, W.R.GRACE & CO. -CONN.

W. GUNAWARDANA

Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Watermark Patent and Trademark Attorneys, Melbourne

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne