Enichem Synthesis S.p.A. v Ciba Geigy AG
[1996] APO 34
•28 June 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 610992 in the name of Enichem Synthesis S.p.A.
Title: Stabilizing Composition for Organic Polymers
Action: Opposition under s.104, Patents Act 1990 by Ciba-Geigy AG.
Decision: Issued .
Abstract: The opposition has succeeded.
The amendments are not allowable under section 102(1).
There is no ground of opposition under section 102(1) if an amendment alters the descriptive part of the specification, and does not result in any change to the scope of the claims.
In determining whether as a result of amendment a claim of the specification claims matter “in substance disclosed” or not, the test for fair basis of a claim can be employed. Thus, for an amended claim to claim matter in substance disclosed in the specification as filed, then that claim must, in effect, also be fairly based on the specification as filed. United-Carr Incorporated’s Application (1971) RPC 23 accepted as reasonable the rules set out in Mond Nickel Co Ltd’s Application (1956) RPC 189, for testing a proposed amended claim against the original disclosure.
For an amended claim to be “fairly based” on the invention as disclosed in the specification there must be “a real and reasonably clear disclosure”, of what is proposed to be claimed, in the specification as filed. CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 48.
The amendments also not allowable under section 102(2).
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 610992 by Enichem Synthesis S.p.A and an opposition under s.104 of the Patents act 1990 by Ciba Geigy AG.
background
Australian patent application number 30159/89 was lodged on 21 February 1989 by Enichem Synthesis S.p.A (Enichem). The application claimed priority from IT application number 19508A/88, which was filed on 24 February 1989.
The application was advertised accepted on 30 May 1991 and assigned the number 610992. A Notice of Opposition under s.59 of the Patents Act was filed by Ciba-Geigy AG (Ciba) on 30 August 1991. This opposition is yet to be heard.
Enichem filed a request to amend the complete specification on 28 April 1993 and gave the following reasons for the amendment:
“In light of opposition proceedings, the applicant wishes to propose amendment to the claims in order to distinguish the present application from the prior art that has been raised during these proceedings ...
The present invention has been substantially limited to a specifically defined composition that shows particular advantages over the prior art. The advantages are specifically indicated by the inclusion of comparative examples”.
After a series of comments from Ciba about the allowability of the amendments and further amendments by Enichem, leave to amend was granted in accordance with Regulation 10.5, and particulars of the request advertised on 20 October 1994.
On 18 January 1995 Ciba filed a Notice of Opposition to the allowance of the amendments. No evidence was served in relation to this matter and it was heard in Melbourne on 13 February 1996.
Ciba was represented by Mr John Slattery of Davies Collison Cave, and Enichem by Mr David Tadgell of Phillips Ormonde & Fitzpatrick, both patent attorneys of Melbourne.
The invention relates to a stabilizing composition for thermoplastic organic polymers.
The proposed amendment makes changes to both the description and the claims and relates to the definition of the amounts of the constituents present in the stabilizing composition.
Claim 1 as proposed to be amended is as follows
1. A stabilizing composition for thermoplastic organic polymers, including:
a) a sterically hindered antioxidant phenol chosen from:pentaerythritol-tetra[3-(3,5-di-tert-butyl-4-hydroxy-phenyl) propionate]; n-octadecyl ester of b-(3,5-di-tert-butyl-4-hydroxyphenyl) propionic acid;
1,3,5-tris(3’,5’-di-tert-butyl-4-hydroxy-benzyl)-isocyanurate;
1,3,5-tris(3,5-di-tert-butyl-4-hydroxy-benzyl)-2,4,6-trimethylbenzene;
ethyleneglycol-bis(3,3-bis3’-tert-butyl-4’-hydroxy-phenyl) butyrate; and
hexamethylene-1,6-di[3-(3,5-di-tert-butyl-4-hydroxy-phenyl) propionate];
b)a triaryl phosphite of the general formula
where: R1 represents the tert-butyl or 1,1-dimethyl-propyl group; and
R2 represents the methyl, tert-butyl or 1,1-dimethyl propyl group; and
c)a dialkylthiodipropionate containing from 10 to 20 carbon atoms in each alkyl portion;
wherein (c) varies from 1 weight % to 5 weight % of (b), the weight ratio of (a) to (b) varies between 1:1 and 1:2, and the weight ratio of [(b)+(c)]/(a) varies between 1:1 and 2.1:1.
The statement of grounds and particulars states:
‘The grounds and particulars of our opposition are as follows:
(I).that the amendments of items 1-17 of the statement of Proposed Amendments filed in respect of the Request to Amend are not allowable under section 102(1) of the Patents act 1990.
PARTICULARS
The amendments are not allowable since, as a result of the amendments the specification would claim subject matter not in substance disclosed in the specification as filed:
(i)the specification as filed does not contain any, or alternatively a sufficient disclosure of a composition as claimed in claim 1 wherein “(c) varies from 1 weight % to 5 weight % of (b)”;
(ii)the specification as filed does not contain any, or alternatively a sufficient disclosure of a composition as claimed in claim 1 wherein “the weight ratio of (a) to (b) varies between 1:1 and 1:2”;
(iii)the specification as filed does not contain any, or alternatively a sufficient disclosure of a composition as claimed in claim 1 wherein “the weight ratio of [(b)+(c)]/(a) varies between 1:1 and 2.1:1”.
(II)that the amendments of items 1-17 of the statement of Proposed Amendments filed in respect of the Request to Amend are not allowable under section 102(2)(b) of the Patents act 1990.
PARTICULARS
The amendments are not allowable since, as a result of the amendments, the specification would not comply with subsections 40(2) or (3) of the Act:
(a)the specification as proposed to be amended would not comply with the requirements of subsection 40(2) to fully, clearly and sufficiently describe the invention, including the best method known to the applicant of performing the invention, as the specification provides no basis for selection of a composition as claimed in claim 1. wherein:
(i)(c) varies from 1 weight % to 5 weight % of (b);
(ii)the weight ration of (a) to (b) varies between 1:1 and 1:2; or
(iii)the weight ratio of [(b)+(c)]/(a) varies between 1:1 and 2.1:1.
(b)the specification as proposed to be amended would not comply with the requirements of subsection 40(3) that the claims be clear and succinct and fairly based on the matter disclosed in the specification, as the specification does not provide any, or alternatively a sufficient basis for a composition as claimed in claim 1. wherein:
(i)(c) varies from 1weight % to 5 weight % of (b);
(ii)the weight ration of (a) to (b) varies between 1:1 and 1:2; or
(iii)the weight ratio of [(b)+(c)]/(a) varies between 1:1 and 2.1:1.
SUBMISSIONS
Ciba’s submissions can be summarised as follows:
The amendments are not allowable under section 102(1) as the applicant seeks to tell us that by selecting particular ranges you get an unexpectedly better yellowness index and it is only when you operate within these ranges that you get the better result This is inconsistent with what was said in the specification as filed and was not in any way foreshadowed or in substance disclosed in the specification as filed.
The amended specification would not comply with section 40 in that the specification would not fully and clearly disclose an invention in the form of a selection. The claims cannot be fairly based on the specification as specification as originally filed disclosed something which was of a totally different complexion to the invention as now claimed.
In particular:
amended pages 14 and 15, filed on 11/5/94, which refer to a comparative example, tell the reader that it is only when certain weight ratios are observed that you get an unexpectedly improved yellowness index. There is no disclosure in the specification as originally filed or amended that it was only when these weight ratios exist is there an unexpectedly better yellowness index observed. This was not something which was in substance disclosed in the specification as filed.
there are a number of examples in the specification as originally filed which provide the promise of the invention (an unexpectedly better yellowness index) with weight ratios outside those in the amended claims.
the applicant is now telling us that these are outside the scope of the invention and that it is only when you are within the weight ratios as now claimed that you get the unexpectedly better yellowness index. There was nothing to support that in the original specification.
the applicant has produced new omnibus claim which appears to be an attempt to exclude particular tests.
Ciba also relied on submissions made during the amendment proceedings which I will not repeat here.
Ciba referred to Ethyl Corporation's Patent 1972 RPC 165, AMP Incorporated v Commissioner of Patents (1974) AOJP 3224, United-Carr Incorporated's Application 1971 RPC at 23, Mond Nickel Co Ltd's Application 1956 RPC 189, Shionogi and Co. Ltd's Application, (1967) RPC 623, Cooper's Animal Health v Western Stock Distributors 11 IPR 20 and Hoffman-La Roche & Co AG v. Commissioner of Patents (1970) 123 CLR 529
Unichem’s submissions can be summarised as follows:
The first concern of the Opponent’s Statement of Grounds and Particulars is that the amendments are not allowable under section 102(1) because as a result the claims claim particular ranges which were not in substance disclosed in the specification as filed.
The applicant in amending its claims is seeking to claim preferred embodiments of the specification as filed. The majority of the examples as originally filed are in the range where “c” varies from 1 weight % to 5 weight % of “b”. Claim 2 as filed clearly foreshadowed that the preferred upper limit of the preferred range is 5 weight %. There is also ample disclosure in the specification as filed for the weight ratios of “a:b” and “(b+c)/a” as now claimed.
The second concern of the Opponent’s Statement of Grounds and Particulars is that the amendments fall foul of section 40(2) and 40(3).
Section 40(2). The claims have been limited to what has been disclosed in the preferred embodiments of the invention as filed.
Section 40(3). It follows that the claims are clear and succinct and fairly based on the specification as filed.
Enichem referred to Ethyl Corporation's Patent 1972 RPC 165 and Brown & Williamson v Philip Morris Inc 29 IPR 299
DECISION
Relevant law
The allowability of amendments is governed by section 102, which states:
What amendments are not allowable?
102. (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2) An amendment of a complete specification is not allowable after the specification has been accepted if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40 (2) or (3).
This must be read in the light of Schedule 1 to the Act:
"In this Act, unless the contrary intention appears:
"claim" means:
(a) when used as a noun in relation to a patent‑a claim (including a dependent claim) of the specification relating to the complete application on which the patent was granted; and
(b) when used as a noun otherwise than in relation to a patent‑a claim (including a dependent claim) of a complete specification; and
(c) when used as a verb‑to claim in a claim (including a dependent claim) of a complete specification;"
a) Section 102(1)
The word "claim" is used as a verb in section 102(1). Consequently, "claim" is to be read as "claim in a claim (including a dependent claim) of a complete specification". Section 102(1) should thus be read as saying:
An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim in a claim (including a dependent claim) of the complete specification, matter not in substance disclosed in the specification as filed.
This is in contrast to the corresponding provision under the Patents Act 1952. There was no definition of "claim" in the 1952 Act, and the term was given an expanded meaning:
"the word 'claim' does not refer to the monopoly claims at the end of a specification but rather to the assertion, of what is the invention, by the specification itself"
(Roussel-Uclaf v Herchel Smith (1974) AOJP 1549 at 1550)
Consequently, there is no ground of opposition under section 102(1) if an amendment alters the descriptive part of the specification, and does not result in any change to the scope of the claims.
However, an amended claim must be fairly based on the specification as filed otherwise the amended claims claim matter not in substance disclosed in the specification as filed.
In determining whether as a result of amendment a claim of the specification claims matter “in substance disclosed” or not, the test for fair basis of a claim can be employed. Thus, for an amended claim to claim matter in substance disclosed in the specification as filed, that claim must, in effect, also be fairly based on the specification as filed. United-Carr Incorporated’s Application (1971) RPC 23 accepted as reasonable the rules set out in Mond Nickel Co Ltd’s Application (1956) RPC 189, for testing a proposed amended claim against the original disclosure.
For an amended claim to be “fairly based” on the invention as disclosed in the specification there must be “a real and reasonably clear disclosure”, of what is proposed to be claimed, in the specification as filed. CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 48.
b) Section 102(2)
This subsection only operates if the specification has been accepted. An amendment is not allowable if:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40 (2) or (3).
Application of the law
It is clear to me from a prima facie reading of the specification as filed and amended that what the applicant has intended to do is restrict its claims to the preferred embodiments of what was disclosed in the specification as originally filed.
The opponent’s submissions went into some detail about the issue of whether the amendments were in substance disclosed and referred to a variety of case law establishing that the principles used to establish the “fair basis” of claims can also be used to establish whether an amendment was “in substance disclosed” in the specification as filed.
In particular, the opponent drew my attention to the principles enumerated in United-Carr Incorporated's Application (supra), in using the Mond Nickel rules and Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (supra) and submitted that these decisions provide a basis for using the “fair basis rules” to determine what is in substance disclosed in the specification as filed.
Ciba read from the head notes of Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (supra) which deals with whether a claim in a petty patent was fairly based on matter disclosed in a provisional specification, a matter analogous to the present circumstances
Petty patent was not fairly based on what was disclosed in the provisional specification as the whole product in the petty patent was different from any which could be regarded as part of an invention disclosed in the provisional. Thus a reading of the provisional specification would not lead readily or by a process of selection to what was set forth in the patent claim.
The petty patent was not fairly based on the provisional as the emphasis of the invention had changed from the description in the provisional specification such that the character of the invention has altered.
and referred me to a number of instances in the present amendments where they submitted the emphasis of the invention had been changed from that in substance disclosed in the specification as filed.
In particular I was referred to:
new page 14 line 16 as follows
Only when the weight ratios of hindered phenol to phosphite [(a) to (b)] are within the ranges of 1:1 to 1:2, and the thiodipropionate (c) content is reduced, is the unexpectedly better yellowness index observed.
new page 15 line 1 as follows
The Tables indicate that only when the weight ratios of hindered phenol to phosphite are within the claimed range of 1:1 to 1:2 and the thioester content is in the range of from 1 weight % to 5 weight % of the phosphite, is there an unexpectedly better yellowness index observed.
new page 14 line 29 where the reference to a range of 6%-3% is outside the range as now claimed.
original Tables 3 and 4 where the content of component (c) is 1, 5 and 10 weight % of (b) and the ratio of (a) to (b) is 1:1. The opponent submits that the yellowness index for test 5 (10%) is not significantly different from tests 3 and 4 (1% and 5%) and that that is consistent with what the applicant originally said, that is, that it is where (c) is in the range of 1-10 weight % of (b) that you get the promise of the invention.
composition 13 in new Table 8 on page 18 where the ratio of (a) to (b) is 1:2 and the weight % of (c) is 10%. The opponent submits that the applicant now tells us that this is outside the invention and does not now give the unexpectedly better yellowness index and that this composition is almost the same composition as in Test 5 of original Table 4.
Ciba also points to other examples of a similar nature.
Enichem submits that:
the passages on pages 14 and 15 in the amended specification are within the context of the invention the applicant is describing and claiming it;
there could be other passages which also fall outside the range of what is claimed. It is, Enichem submits, within the preferred range that the best results are obtained. They refer me to page 4 lines 9 to 15 of the specification as filed which says that “the best results are obtained when the weight range of constituent (b) to constituent (c) is kept within the range of 98:2 and 95:5” and makes comments about the ranges of (a), (b) and (c) which provide optimum melt flow index, colour and long-term stability.
they are not suddenly rediscovering the invention as the claim as filed wasn’t limited to the amended ranges as filed and it is clear from reading the original specification that 13 of the 16 examples as filed fall within the ranges now claimed.
in referring to the range of 6% to 3% on new page 14 said that the invention involves “bucket chemistry”, which I understand to be inexact or approximate chemistry, and that in this context 6% is close enough to 5% and it is not inconsistent to say that 6% will work. It was also difficult, Enichem said, to go back and change experiments which had already been done.
it is comfortable that 1:1 and 2.1 to 1 is an adequate way to express the ratio of (a) to (b) and do appreciate that mathematically the lower limit of the range should be expressed as 1:1.01 and similarly with the upper end of the range.
the proposed amendments do not involve an inventive step beyond what was originally disclosed as it is not claiming a particular range which they say works and are excluding a range that doesn’t work;
it is simply selecting a preferred range and is simply making a choice between “alternative embodiments”, a principle decided in Ethyl Corporation's Patent (supra).
It seems to me that the crux of Ciba’s submission is that the specification as proposed to be amended is not fairly based on the specification as filed “as the emphasis of the invention had changed from the description” in the specification as filed “such that the character of the invention has altered.” [Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd, (supra, head note paraphrased)] and consequently the amendments are not in substance disclosed in the specification as filed.
I accept that it is established that I can use the rules for determining fair basis in the present situation.
I agree with Ciba’s submission that the specification as proposed to be amended is not fairly based on what was disclosed in the specification as filed. By proposing to amend the specification by using the word ‘only’, referring to the use of 1-5 weight % (c) of (b), in the passages beginning on new page 14 line 16 and new page 15 line 1, Enichem has changed the nature of the invention as originally disclosed. The invention as filed disclosed higher levels of component (c) in the composition [10% of (b)] as providing the improved result. A reader of the specification as proposed to be amended must, in my view, be led to the conclusion that the promise of the invention is only achieved when the particular ranges claimed [(c) is 1-5 weight % of (b)] are employed. Enichem appears to have carried out new experiments as the use of (c) in the amount of 6% of (b) was not specifically disclosed previously.
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (supra) is old law. For a claim to be “fairly based” on the invention as disclosed in the specification as filed there must be “a real and reasonably clear disclosure” of what is proposed to be claimed, in the specification as filed. CCOM Pty Ltd v Jeijing Pty Ltd 28 IPR 481
In the present case this principle is applied to the amended claims. There is not a real and reasonably clear disclosure of the invention as proposed to be claimed in the specification as filed. In the specification as filed there is no disclosure that the invention can “only” be performed if you use (c) in the range of from 1-5 weight % of (b). Consequently, the amended claims are not fairly based on the specification as originally filed and claim matter not in substance disclosed.
I find Examples 6 and 14 in Table 8, described as showing unexpected improvement in Yellowness Index, are outside the range of 1-5 weight % (c) of (b) and are hence unclear in the light of the use of the word ‘only’ in the passages referred to on pages 14 and 15. I am not convinced by the submission that because we are working with “bucket chemistry” that 6%, used in Table 8 on page 18 and on page 14, is equivalent to 5%. 6% is clearly different to 5%.
The invention is not fully described because page 14 lines 17 to 21 states that a better yellowness index is “only” observed when the thiodipropionate (c) content is reduced. The data in Tables 1 (tests 3 and 4) and Table 2 (tests 3 and 4), however, shows that a reduction of the thiodipropionate content does not necessarily give a better yellowness index. A similar comment also applies to page 14 lines 34-38.
CONCLUSION
I have found the opposition to succeed on the basis that the amended specification claims matter not in substance disclosed in the specification as filed and does not satisfy section 40.
Consequently, I do not allow the proposed amendments, the subject of the request dated 28 April 1993.
Further, in accordance with the Commissioner’s letter dated 4 June 1993 I direct that the time for serving evidence in reply will expire 2 months from the date of this decision.
COSTS
It is normal to awards costs according to the event.. I see no reason to vary this practice and award costs to Ciba.
R J Sawyer
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Phillips, Ormonde & Fitzpatrick, Melbourne
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