Belden Wire and Cable Company v Pacific Dunlop Limited

[1998] APO 36

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 658282 in the name of BELDEN WIRE AND CABLE COMPANY

Title:          Flexible Shielded Cable

Action:          Opposition under section 59 (Patents Act 1990) by PACIFIC DUNLOP LIMITED

Decision:          Issued            .

Abstract

This decision is a final determination.  The specification was amended in response to a first hearing and decision, and the applicant asked to be heard in regard to the final determination.  The opponent filed comments adverse to the proposed amendments, but made no further submissions, nor appeared at the hearing.  There was insufficient evidence before the delegate to justify refusal of the application, which will now proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 658282 by BELDEN WIRE AND CABLE COMPANY and opposition thereto by PACIFIC DUNLOP LIMITED

background

The invention is a coaxial cable which includes a central conductor, a surrounding dielectric, a conductive foil of less than a certain thickness, and a conductive braid over the foil.  As originally filed the foil and braid were able to be made from a number of defined, and well known, electrically conductive materials.

During examination the applicant's own prior art was cited; this disclosed an identically structured cable, but with copper as the only material for the foil and the braid.  In response, the claims were amended to exclude the copper foil and copper braid combination, and in that form the application was accepted, and in due course opposed.

In my decision issued June 1997 I found that the opposition ground relating to manner of manufacture was established.  I said at page 11:

" In this application a notable aspect was the failure to identify any consequences at all involved in replacing the copper on copper combination with the other combinations. ..... (it) was argued by the opponent that the applicant had merely taken materials known per se, known in the cable art, known to have properties making them suitable for use in cable shielding, and so used them, overcoming no difficulties in the manufacture and no improvement over the prior art. ..... This, they said, was the mere new use in a known article of a known material, the known properties of which made it suitable for this new use."

Cases referred to included Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232, NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 26 IPR 513, and L & G's Application (1941) 58 RPC 21.

I concluded that:

" ..... the opponent's case on the ground invoking section 18(1)(a) is made out; claim 1 is not for an invention which is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.  The other claims 2-17 are all dependent on claim 1, and in the absence of any submissions in their support, I make the same findings in regard to them."

I also found some section 40 defects.

Though expressing some doubt that patentable subject matter was disclosed in the specification, I nevertheless allowed a period in which relevant amendments could be proposed, and this was done, accompanied by written submissions.  The amendments proposed attracted adverse comments from the opponent, who argued that they did not overcome the findings in my decision.  The opponent subsequently sought to withdraw these comments, but were advised that this could not be done.  They also said that, subject to the amendments being allowed, they would have no objection to the application proceeding to grant.

In due course the amendments were allowed, and the application became due for the final determination of the opposition.  The applicant advised that it wished to be heard in the matter, and the opponent that it did not.  A hearing was set for 16 June 1998 in Canberra, and Mr Turner, patent attorney of Spruson & Ferguson, appeared for the applicant.

SPECIFICATION

For comparison the single independent claims at acceptance and as amended are as follows.  I note that the description has also been amended to reflect the new claim and the section 40 findings in my decision.

The accepted claim

"1. A flexible shielded cable having at least one elongated flexible metal conductor, a layer of flexible dielectric material disposed about the conductor, a thin foil disposed about the layer of flexible dielectric material, the foil having a thickness of less than 0.0030 inches (.0762mm), a metallic braid or serve disposed about the foil and a layer of bonding agent bonding the foil and braid or serve, comprising
(a) when the foil is a copper foil tape or a copper composite tape, the metal or serve is bronze, plated bronze, nickel, plated nickel, silver or gold; and
(b) when the foil is conductive epoxy, non-copper composite tape or non-copper foil tape, the metal braid or serve is copper, bronze, plated bronze, nickel, plated nickel, silver or gold."

The amended claim

"1. A flexible shielded cable having at least one elongated flexible metal conductor, a layer of flexible dielectric material disposed about the conductor, a thin foil shield disposed about the layer of flexible dielectric material, the foil being of copper foil tape or copper composite tape having a dielectric substrate and a copper surface with the substrate bonded to the dielectric material, the copper foil tape or copper surface having a thickness of less than 0.0030 inches (.0762mm), and a bronze braid disposed about the foil and a layer of bonding agent bonding the foil and the braid."

It can be seen that the major change is to limit the claim to a copper foil tape (or a copper composite tape) together with a bronze braid, which in effect is to terminate the accepted claim after "bronze" at line 2 of paragraph (a).  A minor change is to require the foil to be effective as a shield.

SUBMISSIONS

From the applicant

· As there was no single accepted claim corresponding to new claim 1, though of course it is one of the specific alternatives defined in the accepted claim, then I am not bound by my earlier decision that the accepted claim was not for a manner of manufacture, and I can consider the new claim on its merits.

· Some evidence was provided of comparative tests which were made on samples of cable with, on the one hand, copper foil and copper braid, and on the other, copper foil and bronze braid, but otherwise substantially identical and in accordance with claim 1.  The tests involved the number of flexing cycles that could be performed before breakage of braid strands occurred.  The figures showed the number of cycles before breakage increased by a multiple of at least several times for the copper and bronze cable over the copper and copper cable.

· It was submitted that this improvement was unexpected, and even more unexpected was the magnitude of the increase.

· The tests conducted show that the cable now claimed has unexpected merit, and represents some advance in the art, something which in the decision was criticised for its absence.  The claim now defines a true and patentable combination in that the integers when placed together have a working interrelationship producing a new and improved result; British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 cited.

· I note that this material was supplied only as file correspondence; Mr Turner offered to provide it in statutory declaration form if required, but I indicated that I was prepared to accept it at face value in the circumstances.

· A further limitation now is that the foil is a shield.  I do not think that much can depend on this, as it is difficult to see how it could be otherwise, in contrast perhaps to a braid.

· It must also be noted that the opponent has no objection to the new claims.

From the opponent

· The opponent filed adverse comments under regulation 10.2(7) in response to the proposed amended claims.  They subsequently sought to withdraw these comments, but were advised that no mechanism was available by means of which this could be done, and further that they would be considered by the delegate when making the final determination.  Only two or three points were made.

· The amended specification does not describe the invention fully, including the best method of performance, as there is nothing which points to the claimed copper and bronze being the best method.

· The claim was still not for a manner of manufacture for the reasons given in the decision.  It was still a "mere new use" of a material for that which its known properties make it suitable.

· The comments also appear to suggest (though I could be wrong here) that the amended claim is flawed on the separate statutory ground of obviousness, since if cable flex life was of concern, then it would be a simple and obvious thing to do to replace the prior copper braid with one made of bronze.  Having done that, the improved flex life observed was only what would be expected by a person skilled in the art.

DECISION

Section 40

I do not understand the opponent's comments here regarding the best method of performance; it is the specification as amended which is relevant, and the description there makes no mention of anything other than a copper foil with a bronze braid.

Whether the amended claim is fairly based on the specification as filed, and correspondingly whether the amendment was properly allowable under section 102(1), may however be a different matter.  While there is no doubt that the amended claim falls within the scope of the accepted claims, nor that the cable claimed was disclosed in the specification as filed, this disclosure however was together with a multitude of others.  There seems to me to be some doubt whether the Mond Nickel Rules (Mond Nickel Company Ltd's Application (1956) RPC 189) would have been satisfied.

However I have received no submissions on this; the opponent specifically states they have no comment on section 102 allowability, and in any case the amendments have of course been allowed.  I will pursue this no further.

Manner of Manufacture

The cable now claimed is but one of several dozen covered by the accepted claim, and I agree with the applicant's submission that I am not bound by my decision that the former claim was not for a manner of manufacture, to make the same finding now in regard to the amended claim.  Influential in my earlier decision was that practically every useful conductor known in the art was claimed, without any suggestion that any of them were of any particular significance.

Now claimed is a single combination, and evidence has been produced that this combination demonstrates, it is said, surprising improvements in flex life compared to the prior art.  This evidence is not in statutory declaration form, but the opponent has not disputed the figures, and I accept them.

The opponent has however disputed that the improvement is surprising, and say that it is only what a person skilled in the art would expect.  This may be so, but clearly what is required to establish the fact is evidence from a person or persons skilled in the art, and there is none.

I conclude that it is not established that new claim 1 is not for a manner of manufacture.

Obviousness

In my earlier decision I found that the evidence failed to establish what was common general knowledge (cgk) in the art, and then this ground of opposition necessarily failed.  A relevant difficulty in proceeding under this heading was the large number of different combinations covered by the claim.

This has now changed.  Previously cited US 4694122 discloses all the features of the amended claim, except that the earlier copper braid is now made of bronze.  This document is the applicant's own prior art, and prima facie, must surely be regarded as the kind of information which would satisfy section 7(3).

Consequently, if it was established that it was cgk in the cable industry that bronze (which is an alloy of copper) is a viable (or perhaps preferable) alternative to copper where mechanical strength is a concern, and that to a person skilled in the art it would be an obvious thing to do in the present case, then new claim 1 could be found to be obvious.  In my inexpert opinion this is far from unlikely.

However, the fact is I have received no argument on this issue, nor any evidence of cgk, and I do not consider it appropriate for me to conduct my own investigations.

CONCLUSION

For the reasons mentioned I consider the application to be questionable.  Nonetheless the applicant is entitled to benefit from any doubts caused by inadequate evidence, and I consider that in all the circumstances it is not inappropriate for the application to be allowed to progress.  Accordingly I direct that the application proceed to sealing.

COSTS

The applicant must naturally bear its own costs.

RG Tolhurst
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Spruson & Ferguson

Patent attorneys for the opponent   :  Griffith Hack, Melbourne