Fysh Pty Ltd v Wesley Jessen Corporation

[2000] APO 2

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 620083 in the name of  FYSH PTY LTD

Title:          Improved Contact Lens Design

Action:          Opposition by WESLEY JESSEN CORPORATION under Section 104 of the Patents Act 1990

Decision:          Issued

Abstract

The amendments which were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition.  The opponent alleged that two of the amendments introduced matter not in substance disclosed in the specification as filed and did not meet the requirements of section 40.

The amendments were found to be allowable.  When the disclosure of the specification was read in light of the common general knowledge and account was taken of the findings made in the section 59 opposition, the substance of the amendments could be found in the specification as filed.  Similarly, when account was taken of the findings in the section 59 opposition, the amendments were properly construed and the consideration was confined to matters which arise as a result of the amendment, as section 102 requires, the amendments comply with the requirements of section 40.  An amendment may be allowed even though it does no more than explain what is already in the claim when properly construed, as appears the case with a large proportion of the amendments involved here.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 620083, in the name of FYSH PTY LTD and an opposition by WESLEY JESSEN CORPORATION under Section 104 of the Patents Act 1990.

BACKGROUND

Patent Application No. 620083 in the name of Igel International Limited was advertised accepted on 31 January 1991. The application was opposed by Wesley Jessen Corporation. Prior to the opposition being heard the applicant filed a request to amend the specification under section 104 of the Patents Act and this was also opposed. Subsequently both oppositions were heard together, and in Igel International Limited v Wesley Jessen Corporation and General Optical Pty Ltd [1996] APO 22 (referred to hereinafter as "the section 59 opposition") the delegate found that there were valid objections to the specification under section 40 both as it stood and as it was proposed to be amended, and allowed the applicant the opportunity to amend. The section 104 amendment which had been the subject of the opposition was refused for non-compliance with subsection 102(1) and paragraph 102(2)(b).

Fresh section 104 amendments to the specification were eventually advertised accepted on 26 February 1998. Wesley Jessen Corporation opposed allowance of these amendments as well, and served its Statement of Grounds and Particulars on 26 May 1998. On 25 September 1998 the applicant sought dismissal of the opposition under Regulation 5.5. Shortly thereafter a request was made under section 113 for the application to proceed in the name of the assignee Fysh Pty Ltd, and this was granted on 12 October 1998. Subsequently, in Fysh Pty Ltd v Wesley Jessen Corporation [1998] APO 74, the request for dismissal was upheld in respect of some of the grounds of opposition, but not others, and it was directed that only some particulars be available for the opponent to argue at the hearing on this opposition.

No evidence has been served in relation to this matter.  At one point it appears that the opponent may have been contemplating putting in evidence in support, and indeed sought an extension of time in which to do so.  However the applicant (who by then was Fysh Pty Ltd) objected to the extension, and the opponent withdrew the request on the day before the hearing which had been convened to hear the objection.

The hearing on the present matter took place in Canberra on 27 October 1999.  The applicant was represented by Mr John Walsh, patent attorney of Walsh & Associates, Sydney.  The opponent was represented by Mr John Terry, patent attorney of Griffith Hack, Sydney.

THE LAW

The allowability of amendments is governed by section 102, which provides:

"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).

(3) This section does not apply to an amendment for the purpose of correcting a clerical error or obvious mistake made in, or in relation to, a complete specification."

Section 40(2) requires that a complete specification describe the invention fully, including the best method known to the applicant of performing the invention, and end with a claim or claims defining the invention.  Section 40(3) requires the claim or claims to be clear and succinct and fairly based on the matter described in the specification.

In accordance with regulation 5.3(4), these are the only grounds on which the allowance of a proposed amendment of a complete specification may be opposed.

It is clear from section 102, which governs the allowability of a proposed amendment of a complete specification, that the test provided by section 102 is confined to matters which arise as a result of the amendment (see also Kornelis' Kunsthars Producten Industrie BV v WR Grace & Co-Conn, (1994) AIPC 91-056 at 38,204). Furthermore, and in accordance with regulation 5.3(4), the only grounds for opposition to allowance of a proposed amendment of a complete specification is that the amendment does not comply with section 102. It therefore follows from the combined operation of these provisions that the presence of pre-existing section 102 (and, by implication, section 40) deficiencies which are unaffected by amendment is irrelevant to the present action.

It is pertinent to the present matter that a delegate of the Commissioner has already issued a decision having determined certain issues in relation to the present matter.  Any such determination is final, and may not be varied subsequently except on appeal - Ex parte Mole Engineering Pty Ltd (1981) 35 ALR 119.

THE SPECIFICATION

The invention relates to the design of soft contact lenses.  Some understanding of the nature of the invention can be obtained from the following passages from the accepted specification:

"In the past, soft contact lenses have been designed according to the corneal shape to afford maximum stability, fit and comfort for the wearer such that there is an optimum relationship between the corneal and/or scleral profiles and the back surface of the contact lens.……….Thus, correcting refractive error has been achieved by designing the front surface of the lens only."
"Designing contact lenses primarily by back surface comfort criteria has a number of attendant disadvantages……...one……..is that all refractive error must be corrected from the front surface geometry alone, thus restricting the designer in his/her choice of anterior topography."

"The present invention seeks to overcome the aforesaid disadvantages of the prior art lenses by providing a contact lens, either spherical or toroidal, which is designed with both back and front surface geometry thereby allowing greater design versatility in correcting the refractive error in the eye but without compromising a close comfortable proximity between the lens and the eye of the wearer."

For the purposes of this decision it is not necessary for me come to a concluded view as to the essential nature of the invention that is described, although to do so may in any case not have been possible.  In his decision on the section 59 opposition, the delegate of the Commissioner found that the specification as it stood and as it was proposed to be amended was insufficient in its description of the nature of the invention, stating:

"Mr Walsh suggested that the lens does not fit perfectly on the cornea.  That seems to be the answer to the problem posed by Dr Ho; it seems logical that there must be some degree of non-conformity and there must be some, albeit small, tear layer for the posterior surface to provide some partial refractive correction.  I think Dr Ho's comments on this matter are valid; he is an expert in the field but he was confused by a lack of explanation in the specification of this aspect of the invention. Consequently, I am of the view that the specification does not comply with S.40(2)(a).

Taking into account the combined effect of the specification, amendments, evidence and submissions before me in this case, I am drawn to conclude that there appears to be some degree of uncertainty on the part of the applicant as to the exact nature of its invention, having regard to this feature of the fit criteria.  Amendments to the claims for example indicate multiple attempts to accurately define this feature.  Written submissions received on 31 October 1995 and 31 January 1996, subsequent to the hearing, also demonstrate some lack of consistency and confidence to accurately define this feature; eg. some parts of those submissions are as follows:

'...in cases where an invention is inherently difficult to describe a court will give due allowance where the invention is unusual.'

'The specification as accepted and as proposed for amendment includes claims to a novel lens configuration which still satisfies fit criteria yet is not designed according to fit criteria.'

'The opponent has not shown that a lens form existed before the priority date wherein the back surface design is not dictated by fit criteria and is thus independent of the topography of the eye to which it is fitted whilst still satisfying comfort criteria.'

'Put simply, the claimed invention resides in a soft contact lens characterised in having a back surface which, whilst satisfying comfort and fit criteria, includes back surface curves which are designed according to refractive criteria independent of the topography of the eye of the wearer.'

I am not completely comfortable with the notion that the present invention is difficult to describe, since a contact lens is a relatively simple device in the sense that it does not have many different components.  Even if I was convinced that the invention was difficult to describe or define, I think that is not a sufficient reason for me to find that the specification completely complies with S.40 in this case, since it is a fundamental requirement that a specification fully describes the invention.

The report of American Cyanamid's (Danns') Patent in [1971] RPC 425 at 449 discusses an underlying assumption of patent law that the monopoly rights conferred upon a patentee are conferred for a consideration that the improved techniques disclosed in the patent would pass into the public domain. Lord Wilberforce states:

'This expectation has dictated the requirement that the specification should be so clear and explicit as to enable the invention to be worked by a suitably intelligent member of the public on the strength of its contents alone.'"

While finding the specification lacked sufficiency, the delegate thought that there may be patentable subject matter in the specification and thus gave the applicant an opportunity to propose amendments to overcome this and the other objections to the specification he had found to be present.  The ensuing amendments are the ones under consideration in this opposition.  However, it is outside the scope of this decision to find whether the amendments have actually achieved their mission.  Rather, the purpose of this decision is to determine whether the amendments are allowable as amendments.

The specification concludes with a number of claims, of which only claim 1 is of relevance in this matter.  Claim 1 as accepted reads:

"1.  A soft contact lens having a concave posterior surface for fitting to the eye of a wearer, a convex anterior surface for exposure from the eye of a wearer, and said soft contact lens containing a correction with an astigmatic component for the eye, the improvement to said soft contact lens comprising:
     said posterior surface including a refractive segment sufficient in dimension to afford substantial pupil coverage, said refractive segment configured for at least some of the correction of the eye of a wearer including an astigmatic component in a first central zone, said first central zone being juxtaposed to the central portion of the eye of a wearer;
     said posterior surface at said first central zone being surrounded by a second posterior zone for fitting said soft contact lens to the eye of the wearer about said first central zone to maintain said contact lens to the eye of the wearer;
     said first central zone in combination with said anterior surface of said lens allowing an arbitrary amount of refractive correction of error in the eye of said wearer."

Claim 1 as proposed to be amended by the current amendments is more closely related to the proposed amended form of the claim under consideration in the section 59 opposition than to the accepted version of the claim.  It reads, with additions and deletions compared with the previously proposed amended form of the claim indicated, respectively, by underlining and striking through:

"1.  A soft contact lens having;

a concave posterior surface for fitting to the eye of a wearer,

a convex anterior surface;

said soft contact lens providing a correction with an astigmatic component for the eye, said posterior surface including a refractive segment in a central zone sufficient in dimension to afford substantial pupil coverage and configured for at least some of the correction of the eye and including the astigmatic component, said central zone being juxtaposed to the central portion of the eye;

said posterior surface including a posterior zone surrounding the central zone for fitting said soft contact lens to the eye to maintain the lens on the eye;

wherein, said central zone has curvatures and meridians which are not based upon corneal topographic curvatures or meridians and yet, in combination with the anterior surface of the lens, allows refractive correction of an eye independent of the topography of the cornea, and wherein, said juxtaposition of the central zone arises from draping of the lens about the cornea.

THE STATEMENT OF GROUNDS AND PARTICULARS

As a result of the outcome of the dismissal action in respect of this opposition, the only grounds of opposition upon which the opponent may rely are those numbered 1, 4 and 5 in the statement of grounds and particulars.  These relate to subsection 102(1) and paragraph 102(2)(b) of the Patents Act and are expressed in the statement as follows:

"1.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the specification would claim matter not in substance disclosed in the specification as filed."

"4.The amendments, or some of them are not allowable because as a result of the amendments, or some of them, the specification would not comply with sub-section 40(2) in that the specification does not end with claims limited to defining the invention described."

"5.The amendments, or some of them, are not allowable because as a result of the amendments, or some of them, the specification would not comply with sub-section 40(3) namely that one or more of the claims are not clear and/or not succinct and/or not fairly based on the matter described in the specification."

The only particulars for these grounds remaining after the dismissal action are:

"no substantive disclosure and no meaning subsists in the accepted specification with reference to phrases in claim 1 including:

^{…………..}

(ii)       [wherein, said central zone has curvatures and meridians which are not based upon corneal topographic curvatures or meridians and yet, in combination with the anterior surface of the lens, allows refractive correction of an eye independent of the topography of the cornea]

(iii)      '[the] juxtaposition of the central zone arising from draping of the lens'."

SUBMISSIONS

Mr Terry submitted as follows:

·     in this matter the onus is on Fysh to substantiate and justify an amendment after acceptance.

·     no proposed amendments have been offered with regard to the description in line with the claims and as a consequence the claims are not fairly based.

·     when deciding whether something is in substance disclosed, you cannot take a word or phrase in isolation, instead you must interpret the word or phrase in context.

·     "Draping of the lens about the cornea" is a reference to the conventional feature of every soft contact lens as is substantiated by the evidence in this opposition and refers to the lens changing its curvature and profile when applied to a cornea to substantially follow the profile of the cornea and thereby this feature of the claim refers to what is a conventional feature of any soft contact lens which comes into juxtaposition, i.e. face to face contact with the cornea.  However, the apparent clarity of this phrase in isolation leaves the claim unclear as no sensible meaning can be determined having regard to other phrases in the claim.

·     the exact nature of the draping of the lens depends on the topography of the cornea and therefore must affect the resultant refractive correction achieved on a particular eye.  Therefore the "juxtaposition feature" is in conflict with the preceding feature that the lens allows refractive correction of the eye independent of the topography of the cornea.

·     The reference to "juxtaposition" becomes unclear as there is an implied distinction by virtue of different language used previously in the claim for "fitting" the lens in the posterior zone yet juxtaposition also prima facie implies fitting.

·     by purporting to define a characterising shaping of the central zone with a negative feature (i.e., "has curvatures and meridians which are not based upon corneal topographic curvatures or meridians" [emphasis added]) leaves the claim unclear in a portion of the claim which is the vital portion in purporting to draw a distinction over the prior art.  The wording covers a lens where the curvatures and meridians in fact accord with corneal topographic curvatures and meridians and thus is not delimited to a method of manufacture which avoids that approach, an approach which in the decision on the section 59 opposition was found to be a conventional approach.  That decision appeared to find that the invention described was a method characterised by not following a conventional approach and the amendment is therefore not allowable because the claims do not exclude a conventional approach in any clear terms and do not delimit the scope of monopoly to the invention originally described insofar as it can be understood.  The invention should be defined as a method in which a particular procedure is done, or as a contact lens resulting from such a method.

·     The term "topography" is not defined in the specification and not being a clear term of art leaves the entire specification of claim 1 unacceptably unclear.  If, as indicated in the evidence, a keratometer could be used to measure the cornea, this only gives topographical information or mirror image information and not the topography of the cornea, unless there is some restricted definition of "topography".

Mr Walsh submitted:

·     when designing a contact lens, two factors have to be taken into account:

(i)  comfort and fit

(ii) refraction.

·     the opposition should be dismissed under regulation 5.5(3) because of the actions of the opponent leading up to the hearing.

·     there is ample disclosure in the specification of the expression "curvatures and meridians" used in conjunction with the lens of the invention.  The term "toric" used in the specification is defined in the Dictionary of Visual Science as "pertaining to a lens which has one surface with meridians of least and greatest curvature located at right angles to each other."

·     the term "draping" generally refers to the behaviour of the lens on eye during the engagement with the cornea such that the lens will be influenced in the way it settles or fits by the contour of the cornea.  The lens off eye will have a back surface refractive correction which will not mirror the corneal profile.

·     the passages set out in the particulars are clearly understandable to a person skilled in the art when read in conjunction with the remainder of the claim.  The first of these passages goes to the heart of the invention described in the specification as filed.  All terms are supported in the specification as filed and do not take the claim as proposed for amendment outside the scope of the specification as filed or the claims as allowed.

·     the terms used in the passages identified by the supporting particulars are clear, succinct and fairly based, as has been proven by the submissions filed during examination of the amendments.

I will provide more details of the parties' submissions, where relevant, later in my decision.

DECISION

Preliminary issue

At the hearing Mr Walsh commenced by submitting that I should apply subregulation 5.5(3) to dismiss this opposition.  The basis upon which this course of action was urged was alleged past misdemeanours by the opponent, in particular procedural delays and a failure to raise the issues being canvassed in the present opposition when it had an opportunity to do so when the amendments were under examination.  (I think that fairness requires that I also mention that similar complaints to that which the applicant is now making have previously also been levelled by the opponent against the applicant.)

The rights of applicants to seek summary dismissal appear to be circumscribed by subregulation 5.5(1).  However, putting aside the issue of whether subregulation 5.5(3) may be invoked in the manner the applicant is seeking to do, I do not understand the rationale underlying Mr Walsh's submission.  In particular, and as I pointed out to Mr Walsh at the hearing, the outcome of the hearing would, in any case, be to either dismiss or not dismiss (that is, uphold) the opposition.  I indicated to Mr Walsh that if he was asking me to peremptorily dismiss the opposition, I declined to do so.  It is a well established principal of law that a serious opposition should be dealt with on its merits rather than be shut out through a lamentable failure in procedure: Kaiser Aluminium & Chemical Corp v. Reynolds Metal Co, (1969) 120 CLR at 143.

Allowability of the Amendments

Three general principles which have relevance in this matter for determining whether the amendments are allowable are:

(1)  In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, the full Federal Court said that a "two stage" process must be followed when determining whether a proposed amendment satisfies the test for allowability imposed by section 102(1). The first stage, which requires a comparison between the specification as it stands immediately before the amendment and how it would stand after amendment, enables the identification of what matter results from the amendment. Once the matter resulting from the amendment has been identified, that matter is compared with the specification as filed in order to determine whether the specification would claim matter not in substance disclosed in the specification as filed. The court when discussing the second stage emphasised that:

"The subsection [102(1)] focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression 'matter not in substance disclosed in the specification as filed'.  The key point to keep in mind is that the words 'as a result of the amendment' are not to be confused with the expression 'after the amendment'."

(2)  In A.M.P. Incorporated v the Commissioner of Patents (1974) AOJP 3224 at 3227 Jacobs J of the High Court stated that:

"Although the Act does not now expressly say so, it is clear that within the limited framework which I have described an amendment [to a claim] may be allowed where it does no more than explain what is already in the claim when it is properly construed."

The "Act" to which Jacobs J is referring is the Patents Act 1952, but I consider that his comments are also relevant to the 1990 Act.

A large proportion of the amendments at issue in this matter seem to come within this category of amendment.

(3)  As to whether matter not in substance disclosed is being claimed as a result of an amendment depends upon what construction is placed upon the specification prior to the amendment.  It is one of the "rules of construction" for patent specifications that they must be construed in the light of the common general knowledge in the relevant art at the priority date of the application - see Welch Perrin v Worrel (1961-62) 106 CLR 588 at 610, Decor Corp v Dart Industries 13 IPR 385 and Melbourne v Terry Fluid Controls Pty Ltd (1994) AIPC 91-058.

Turning now to the particular circumstances of this matter, the first aspect in which the opponent contends the proposed amendment would contravene subsection 102(1) and paragraph 102(2)(b) is in regard to the following passage:

"wherein, said central zone has curvatures and meridians which are not based upon corneal topographic curvatures or meridians and yet, in combination with the anterior surface of the lens, allows refractive correction of the eye independent of the topography of the cornea".

It will be convenient to consider this passage as being two parts.  The second part of the passage reads:

"yet [the central zone], in combination with the anterior surface of the lens, allows refractive correction of the eye independent of the topography of the cornea".

This feature was, apart from some small differences (which have been set out previously in this decision), considered by the delegate of the Commissioner in the section 59 opposition.  He found that this was matter in substance disclosed in the specification as filed, which is not surprising as it repeats matter defined in one of the appended claims (23) as filed.  The delegate did find section 40 faults with it, and the small differences to which I have referred appear in the main to be an attempt to remedy those faults.  Whether or not this has been successful is, as I have said, beyond the scope of this decision.  All I am required to determine is if the differences in question result in section 40 deficiencies or matter not in substance disclosed being claimed, and in my view they do not, and nor, as I understand it, is this contended by the opponent.

The first part of the passage in question reads:

"[the] central zone has curvatures and meridians which are not based upon corneal topographic curvatures and meridians."

Mr Walsh went to some effort to establish support in the specification for the use of terminology "curvatures and meridians" in relation to contact lenses, relying primarily on the use of the expression "toric" in describing a particular form of lens.  Mr Terry did not appear to have any issue with the expression, and given the general conformation exhibited by corrective lenses for the eye I am satisfied that the person skilled in the art would understand curvatures and meridians as being intrinsic to contact lenses.

Mr Terry's main concern with this feature appears to be its indefiniteness of scope.  If I understand Mr Terry's argument correctly, it is that if the invention is considered as an article of manufacture, then saying that contact lens has curvatures and meridians which are not based upon corneal topographic curvatures and meridians says nothing specific about the structure per se of the contact lens.  However, the delegate of the Commissioner who decided the section 59 opposition took the view that the way the claim was worded in this regard made it a "disguised process claim", which did impart a limitation to the claim and in fact rendered it novel.  Viewed in this light, I do not see the attributing of a definite meaning to the feature that the central zone of the contact lens of the invention "has curvatures and meridians which are not based upon corneal topographic curvatures and meridians" as presenting any difficulties.

Comparing the first part of the passage to the second part of the passage, the phrase "not based upon" would seem, in my view, to be equivalent in meaning to the word "independent" used in the second part of the passage.  Both expressions convey the meaning that there is no nexus between the elements to which they refer.

A substantial difference between the parts of the passage, does, however, appear, at least on the face of it, to exist in that the first part of the passage refers to the curvatures and meridians of the central zone being not based upon the topography of the cornea, whereas the second part of the passage says the same thing, except in respect of the refractive correction.  Given the nature of this difference, and since, as I have indicated above, the second part of the passage is compliant with the requirements of section 102, it is reasonable to conclude that the first part of the passage complies with the requirements of paragraph 102(2)(b).  However, in relation to subsection 102(1) the question arises as to whether there is an in substance disclosure in the specification that the refractive correction afforded by the central zone of the lens of the invention is as a result of its curvatures and meridians (that is, its shape).  I think the answer to that question must be in the affirmative, as may even be deduced from the statement of the object of the invention, which reads as follows:

"It is one object of the present invention to provide a back lens surface which satisfies the comfort and fit criteria and allows an arbitrary amount of refractive correction of the eye whereby the amount of refractive correction is independent of the topography of the eye."

In this quote the reference to the provision of a back lens surface is clearly a reference to providing a shape for the back lens surface.

Moreover, aside from wording contained in the specification, I do not think there is any doubt that it is common general knowledge that the refractive power of a lens is dependant on its configuration and the refractive index of the material of which it is made.  There is no suggestion in the specification that varying the refractive index of the material has a role this invention, and in any case would not make sense vis à vis the requirement of being independent of the topography of the cornea.  Thus the person skilled in the art would be led to conclude that where reference was made to the refractive correction of the central zone, it was the configuration, or the curvatures and meridians, of the lens that was concerned.

On the basis of the above reasons I find that the passage in claim 1 as proposed to be amended that:

"wherein, said central zone has curvatures and meridians which are not based upon corneal topographic curvatures or meridians and yet, in combination with the anterior surface of the lens, allows refractive correction of the eye independent of the topography of the cornea"

complies with all the provisions of section 102.

The second aspect in which the opponent contends the proposed amendment would contravene subsection 102(1) and paragraph 102(2)(b) is in regard to the following feature:

"[the] juxtaposition of the central zone arises from draping of the lens."

The opponent concedes that "draping" is a commonly used term of art and that considered in isolation the above phrase is clear.  However, it is contended that when the phrase is considered while having regard to other phrases of the claim it has no sensible meaning and is unclear.

In particular, the opponent says that draping refers to the lens changing its curvature and profile when applied to a cornea to substantially follow the profile of the cornea, and refers to what is a conventional feature of any soft contact lens which comes into juxtaposition with the cornea.  This is said to be in conflict with the previous feature in the claim that the lens allows refractive correction of the eye independent of the topography of the cornea.

As a first point of disagreement with the argument put by Mr Terry on behalf of the opponent, I observe that he infers a meaning of "face to face contact" for "juxtaposition".  I note that the Shorter Oxford English Dictionary (third edition) definition of juxtaposition merely requires closeness, rather than contact.  A second point of disagreement is in relation to the phrase "draping of the lens".  The relevant Shorter Oxford English Dictionary (third edition) definition of the term "draping" is "to cover with".  This does not suggest to me that the thing being draped necessarily has to fully conform to the shape of the thing it is being draped upon, but rather only to the limit of its capability to do so.  In the case of the present invention there is a region of the posterior surface which is for fitting the contact lens to the eye (the so-called "posterior zone") and which presumably follows the profile of the cornea.  I do not see why the act of placing this contact lens on an eye in this manner would not fall within the scope of the term "draping".
It may well be that in the case of prior art contact lenses where the posterior of the lens was designed to fully conform to the cornea (although I notice that Mr Terry has hedged a little in this regard by the use of the word "substantially"), there may have been some sort of expectation that draping would produce that outcome.  However, to my mind this is not implicit in the word "draping" itself, and is certainly not the connotation the word has when read in the context of the present specification as a whole.

Thus I find that the feature "[the] juxtaposition of the central zone arises from draping of the lens" is capable of a sensible meaning and is clear when having regard to the other phrases of the claim.  Given the opponent has already conceded that this feature is a conventional feature of every soft contact lens and considered in isolation is clear, no further issue arises regarding whether the amendment of claim 1 to include this feature complies with the provisions of section 102.

CONCLUSION

I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraph 102(2)(b), and as a consequence, the opposition fails on all grounds relied on.  I therefore dismiss the opposition and allow the amendments.

COSTS

Ordinarily in proceedings such as these, costs follow the event. So far as the section 104 opposition is concerned, there are no special circumstances applying in relation to that matter which warrant varying that approach. Accordingly, I award costs in relation to that matter against the opponent Wesley Jessen Corporation.

At the hearing, the applicant raised the issue of costs in relation to the aborted hearing on the request for an extension of time to serve evidence in support in the present matter.  The opponent consented to being heard in relation to that issue at the hearing then in progress.  Clearly the applicant is entitled to have its costs awarded in that matter, as the opponent seemed more or less prepared to concede, the only question being which items of Schedule 8 to the Patents Regulations are applicable.  In my view the only applicable item is item 9, namely, "Preparation of case for hearing."

Accordingly, in relation to the extension of time to serve evidence in support matter I award costs according to item 9 of Schedule 8 of the Patents Regulations against the opponent Wesley Jessen Corporation.

E J Knock
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant:  Walsh & Associates, Sydney

Patent Attorneys for the opponent:  Griffith Hack, Sydney