Gabriele Ludwig v The Arizona Board of Regents on behalf of the University of Arizona
[2018] APO 55
•22 August 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gabriele Ludwig v The Arizona Board of Regents on behalf of The University of Arizona [2018] APO 55
Patent Application: 2010213535
Title:Diffractive trifocal lens
Patent Applicant: The Arizona Board of Regents on behalf of the University of
Arizona
Opponent: Gabriele Ludwig
Delegate: O L Haggar
Decision Date: 22 August 2018
Hearing Date: Written submissions completed on 26 April 2018
Catchwords: PATENTS – opposition under section 104 – opposition governed by the Patents Act 1990 as amended by the “Raising the Bar” provisions – requirements of sections 102(1) and 102(2)(b) considered – implicit disclosure – disclosure of a drawing alone – opposition succeeds – costs awarded against the applicant
Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: FPA Patent Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010213535
Title:Diffractive trifocal lens
Patent Applicant: The Arizona Board of Regents on behalf of the University of
Arizona
Date of Decision: 22 August 2018
DECISION
The opposition succeeds. I refuse the amendments. I award costs according to Schedule 8 against the applicant.
BACKGROUND
Patent application 2010213535 (the application) was filed by the Arizona Board of Regents on behalf of the University of Arizona (the applicant) on 12 February 2010. Following examination the application was advertised as accepted on 9 July 2015. On 9 October 2015 Gabriele Ludwig (the opponent) filed a notice of opposition under section 59 to the grant of a patent on the application.
The evidentiary stages of the section 59 opposition were completed on 16 September 2016. On 6 January 2017 the applicant requested leave to amend the specification. Leave was granted and advertised on 16 February 2017. The opponent filed a notice of opposition under section 104 to the allowance of the proposed amendments on 18 April 2017 and a statement of grounds and particulars (the SGP) on 18 May 2017. Evidence in support was completed on 4 September 2017, evidence in answer was completed on 6 November 2017, and evidence in reply was completed on 6 December 2017.
On 10 January 2017 the parties were advised that the Commissioner did not intend setting the section 59 opposition for hearing until the fate of the proposed amendments had been finalised. This decision is accordingly confined to the section 104 opposition which was heard on the basis of written submissions filed by the opponent on 27 March and 17 April 2018 (OS), and by the applicant on 10 and 26 April 2018 (AS).
THE SPECIFICATION
The specification describes the field of the invention as generally relating to diffractive optics and ophthalmology, and more specifically to the design and construction of corrective multifocal intraocular or contact lenses useful for treating presbyopia.
The specification explains that diffractive lenses may be used as contact lenses and intraocular lenses for correcting presbyopia, a condition in which the eye exhibits a progressively diminished ability to focus on near objects. Diffractive lenses have a repeating structure that may be formed in the surface of an optical element and is typically comprised of a series of concentric annular zones each having a discrete step, the size of which is referred to as a “step height”, in optical thickness at its outer periphery. The resulting surface structure is said to act as a circularly symmetric diffraction grating that disperses light into multiple diffraction orders, each diffraction order being consecutively numbered beginning with the zeroth order. The specification summarises the principle of design of a bifocal lens in the paragraph bridging pages 2 and 3:
“The amount of optical energy directed into each diffraction order is dictated by the zonal step heights. A lens designer may choose, for the diffractive surface features of a bifocal lens, step heights so as to introduce, for example, a one-half wavelength phase change between adjacent zones, which directs approximately 40% of the incident light into the zeroth diffraction order corresponding to distance vision, and 40% into the positive first diffraction order, corresponding to a near vision. The remaining 20% of the incident light in a conventional bifocal lens is directed to other diffraction orders that are not useful for vision.”
The specification states at page 3 line 5 that existing designs for multifocal intraocular and contact lenses use either refractive optics, a combination refractive/diffractive design or diffractive lenses that direct light into a single diffractive order. At page 3 lines 11 to 18 it is stated that none of the existing alternatives succeeds in directing enough light into a diffraction order that corresponds to an intermediate focal distance.
The specification accordingly contemplates a diffractive multifocal lens with concentric annular zones in which there are distinct steps in optical thickness between each zone, and in which the step heights, instead of being equal as in conventional designs, differ from one zone to another in a periodic fashion. This is said to particularly increase “… at least the second order diffraction efficiency of the lens to address intermediate distance vision for trifocal lenses”. The specification then states at page 4 lines 10 to 15:
“By modelling and plotting a topographical representation of the diffraction efficiencies resulting from such a surface profile, dimension parameters such as step height values may be selected so as to achieve directing a desired proportion of light power into designated diffraction orders, thereby optimising the distance, intermediate, and near performance of the multifocal lens.”
The specification next describes a number of preferred embodiments with reference to some accompanying drawings. Figures 4 and 5 are reproduced below.
Figure 4 is a cross-sectional view of the physical surface profile, as a function of radius, for a diffractive structure of a trifocal diffractive lens, showing two alternating step heights. Figure 5 is a plot of the optical phase change introduced by the diffractive structure of Figure 4, again as a function of radius, showing corresponding alternating step heights for five representative zones.
The specification continues as follows:
“Fig 4 shows a cross-sectional view of a physical surface profile 130 of a diffractive structure fabricated in an upper optical surface 102 of a lens according to a preferred embodiment. A lower surface of the lens, 134, is a refractive surface. The radial width of each annular diffractive zone 104 decreases from the centre of the lens to the edge of the lens to maintain equal areas of the diffractive zones. The step heights between each zone alternate between two values, starting with the larger step height 136 for the transition between the central zone and the first annular zone. A smaller step height 138 characterises the transition between the first and second zones. This alternating step height pattern is repeated out to the edge of the lens.
Fig 5 shows a plot of the radial profile 140 of the optical phase change experienced by an incident light ray as it passes through an enhanced diffractive trifocal lens having the surface profile shown in Fig 4. Elements of radial profile 140 have a sawtooth shape 141 … in which each of the concentric zones is located at the same radius, but the step heights are not all substantially equal. Instead, a first set of peaks 142, having larger step heights 144, alternate with a second set of peaks 146 having smaller step heights 148. These features of the phase profile correspond to surface profile step heights 136 and 138, respectively. By alternating the step heights incident light power may be directed to the diffractive orders corresponding to distance, intermediate, and near vision.”
And later when discussing the computer-generated topographic plots shown in Figure 6 of the diffraction efficiencies of a lens having the profile of Figure 5:
“In each of the plots, the X coincides with a light grey-shaded region, the greyscale value indicating that the light power is directed equally into each of the zeroth, first, and second diffraction orders, so that distance, intermediate, and near vision are all substantially equally enhanced.”
THE PROPOSED AMENDMENTS
The accepted specification ends with thirteen claims. Claim 1 reads:
“1. A diffractive multifocal lens comprising an optical element having a first diffractive optical surface having a single radial surface profile comprising a plurality of concentric annular zones concentric with a central zone and assignable, from the outer edge of the central zone to the edge of the lens, as alternating odd and even numbered zones each having a projected surface area, wherein the optical thickness of the lens changes monotonically within each zone, a distinct step in optical thickness occurs at the junction between the zones, the height of the steps differs between at least some adjacent zones, and a pattern of step height differences between two or more adjacent zones repeats periodically from the centre to the edge of the lens so as to tailor diffraction order efficiencies of three consecutive orders of the single radial surface profile of the optical element.”
Independent claim 12 is directed to a method of making a diffractive multifocal lens the product of which is closely related in design to the lens of claim 1.
The proposed amendments seek to add the following paragraph to claims 1 and 12:
“wherein the height of the steps is determined by the difference between a respective initial height defining a zero or baseline phase value and a respective peak phase value, and wherein the pattern of step height differences between the two or more adjacent zones repeats periodically from the central zone to the edge of the lens resulting in a sawtooth phase profile, wherein the initial heights of the saw teeth for the two or more adjacent zones have the same zero or baseline phase value, from the central zone to the edge of the lens.”
The proposed amendments also seek to introduce new claims 14 to 26 which are identical to claims 1 to 13 as accepted save for the addition of the following paragraph to new independent claims 14 and 25:
“and wherein the height of the steps is determined by the difference between a respective initial height and a respective peak value, and wherein the pattern of step height differences between the two or more adjacent zones repeats periodically from the central zone to the edge of the lens in a sawtooth shape wherein the respective initial heights follow a straight or monotonic profile from the central zone to the edge of the lens.”
THE SECTION 104 OPPOSITION
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the RTB Act) since the request for leave to amend and the request for examination of the application were filed after 15 April 2013. Therefore amendments to sections 40 and 102 of the Act apply to the present opposition as a consequence of Schedule 1, items 55(1)(e) and 55(9)(e) of the RTB Act.
The standard of proof that applies to section 104 oppositions proceeding under the RTB Act has not been expressly stated in the Act. However, as reasoned by the delegate in Cytec Industries Inc v Nalco Company [2018] APO 4 at [18]: ‘it is a logical inference that the standard required is the balance of probabilities (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof”. The parties have indicated their agreement with the delegate’s reasoning[1].
[1] OS at [3.5]; AS at [23]
Grounds of opposition
The SGP sets forth the grounds of opposition in the following terms:
As a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed; and
As a result of the amendment, the specification would not comply with subsection 40(2) or (3) of the Patents Act 1990.
These grounds read directly onto the provisions of subsection 102(1) and paragraph 102(2)(b), respectively. In contrast, the opponent’s written submissions do not place any reliance on the requirements of subsection 40(2), or the clarity and succinctness requirements of subsection 40(3). I will as a consequence proceed on the understanding that the opponent has abandoned these grounds.
There are two surviving grounds: subsection 102(1) and paragraph 102(2)(b) when read with the support requirement of subsection 40(3). However, it is apparent from the parties’ written submissions that the opponent has pursued the first ground only, whereas the applicant’s defence of the opposition primarily rests on the second. I will deal with this divergence in approach in due course.
The evidence
The evidence is summarised in the table below.
| Evidence | Declarant | Exhibits | Date | Reference |
| In Support | Valdemar Portney | VP9 and VP10 | 26 July 2017 | Portney #1 |
| Valdemar Portney | VP11 to VP13 | 2 September 2017 | Portney #2 | |
| In Answer | Gregory William Forbes | GWF-1 to GWF-3 | 6 November 2017 | Forbes |
| In Reply | Valdemar Portney | 1 December 2017 | Portney #3 |
Dr Portney and Prof Forbes each hold a PhD in theoretical physics. Since 1998 Dr Portney has provided consulting services, engaged in product development, and licensed developed products in the field of ophthalmic and physiological optics. He has acquired extensive experience in the study and design of diffractive and multifocal lenses generally, and of intraocular diffractive and multifocal lenses in particular. For his part Prof Forbes has over 30 years’ experience in physics and optical science, including diffractive optics. He is currently director of a private consultancy in the area of optical systems. Clearly, both declarants may be regarded as persons who are skilled in the relevant art.
Statutory framework
The opposition has as a whole been argued on the basis of subsection 102(1) and paragraph 102(2)(b) which provide as follows:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a) the complete specification as filed;
(b) other prescribed documents (if any).(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) .........
(b) the specification would not comply with subsection 40(2) or (3).
The “other prescribed documents” for the purposes of paragraph 102(1)(b) are listed in regulation 10.2A as:
(a) an abstract that was filed with the complete specification;
(b) a missing part or element of a complete specification that was incorporated into the specification, in accordance with regulation 3.5A or Rule 20.5 or 20.6 of the PCT;
(c) an amendment that has been made to the complete specification after filing, for the purpose of:
(i)correcting a clerical error or obvious mistake; or
(ii)complying with paragraph 6(c) of the Act.
For present purposes the only “other prescribed document” is the abstract that was filed with the specification.
The “relevant time” for the purposes of paragraph 102(2)(b) is after the specification has been accepted: paragraph 102(2A)(a). Subsection 40(3) as it applies to the present opposition states that the claim or claims of a complete specification must be supported by matter disclosed in the specification.
RELEVANT PRINCIPLES
Operation of section 102
It is clear from the language of subsection 102(1) and paragraph 102(2)(b) that an assessment of whether an amendment is allowable under either provision must take account of the consequences that would follow “as a result of the amendment”.
This assessment accordingly necessitates a comparison between the specification as it stands and how it would stand if amended as proposed. As affirmed by authority, the starting point of the comparative inquiry for the purposes of subsection 102(1) is the specification as originally filed (RGC Mineral Sands v Wimmera Industrial Minerals Pty Ltd [1998] FCA 1358; 89 FCR 458 at 466), and for the purposes of paragraph 102(2)(b) is the specification as it stood immediately prior to amendment (Apotex Pty Ltd v Les Laboratories Servier (No 2) FCA 1019; 79 IPR 100 at [88]). Although not decided under the RTBAct, I see no reason why these cases do not continue to provide relevant precedent.
In the present case the specification immediately before amendment is the specification as it existed at acceptance.
Subsection 40(3): “supported by matter disclosed in the specification”
The requirement of support was introduced as a replacement for the former requirement of fair basis. The purpose of this change is explained in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (the Explanatory Memorandum) at item 9:
“This item is intended to align the Australian requirement with overseas
jurisdictions’ requirements (such as the UK). Overseas case law and administrative decisions in respect of the ‘support’ requirement will be available to Australian courts and administrative decision-makers to assist in interpreting the new provision.”
The general approach to the requirement of support is as stated in Schering Biotech Corp’s Application (Schering) [1993] RPC 249 by Aldous J at 252:
“to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.”
The support requirement was first dealt with in proceedings before the Commissioner in CSR Building ProductsLimited v United States Gypsum Company (CSR) [2015] APO 72. After reviewing in detail a number of overseas decisions, the delegate (at [115]) formulated a 3-step approach to answering the question of support which was underpinned by the concept of the “technical contribution to the art”.
The “technical contribution to the art” is not to be confused with the “inventive concept” that is often discussed in relation to inventive step. The distinction was explained by Lord Walker in Generics (UK) Ltd v H Lundbeck A/S (Generics) [2009] UKHL 12; [2009] RPC 13 at [30]:
“’Inventive concept’ is concerned with the identification of the core (or kernel, or essence) of the invention – the idea or principle, of more or less general application … which entitles the inventor’s achievement to be called inventive. The inventor’s technical contribution to the art is concerned with the evaluation of its inventive concept – how far forward has it carried the state of the art?”
The extent of the invention as claimed should correspond to the technical contribution to the art in order for it to be supported. This has been stated as meaning that “the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words … the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.” (Generics at [97] per Lord Neuberger quoting with approval from the decision in Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653).
The support requirement was first considered by the Federal Court of Australia in Encompass Corporation Pty Ltd v InfoTrack PtyLtd [2018] FCA 421 where Perram J did not have regard to the approach formulated in CSR, but instead directed attention (at [170]) to the two concepts said by the Explanatory Memorandum to be broadly encompassed by the term “support”. That is, there must be (a) a basis in the description for each claim and (b) the scope of the claims must not be broader than is justified by the extent of the description, drawings or contribution to the art.
Subsection 102(1): “claim or disclose matter that extends beyond [the original disclosure]”
As explained in the Explanatory Memorandum at item 29:
“The item introduces a provision preventing amendment of a complete patent specification after filing to add new matter that would go beyond the disclosure contained in the specification at its filing date. An applicant would not be able to amend the specification to add any material that the hypothetical skilled person could not directly derive by reading the information in the specification as filed.”
Thus the effect of subsection 102(1) is to prohibit an amendment to the specification which as a result would not have met the disclosure and support requirements of section 40 at the time of filing the specification. This is reflected in the Australian Patent Office Manual of Practice and Procedure (the MPP) at 2.23.8.2A:
“The effect of sec 102(1) is that an amendment must not add new matter that the hypothetical person skilled in the art could not directly derive by reading the information in the complete specification as filed and other documents prescribed by regulation 10.2A. However, where the person skilled in the art could directly derive the matter sought to be added to the specification from this combination of documents, an amendment will be allowable under sec 102(1).
The correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the complete specification as filed, in combination with the prescribed documents. This comparison is a strict one in the sense that subject matter will be added unless it is clearly and unambiguously disclosed in the relevant documents when read in combination.”
The MPP further indicates that an amendment is not allowable under section 102(1) if it would lead to the specification claiming and/or disclosing an invention which is fundamentally different from that disclosed in the specification as filed and other prescribed documents.
ISSUES TO BE DECIDED
The opponent’s objections
The objections advanced by the opponent to the allowability of the proposed amendments to the claims raise three issues for consideration.
Independent claims 1 and 12 if amended as proposed would introduce the feature of an “initial height defining a zero or baseline phase value”, and subsequently state that the “initial heights of the saw teeth for the two or more adjacent zones have the same zero or baseline phase value from the central zone to the edge of the lens.”
The opponent firstly contends that:
“[t]he introduction by these passages into claims 1 and 12 of the claim feature that the initial heights of the saw teeth for the two or more adjacent zones ‘have the same zero or baseline phase value’ results in claiming an invention that is fundamentally different from that originally disclosed and in consequence constitutes disclosed and claimed matter as a result of the amendment that extends beyond that disclosed in the complete specification as filed.”[2]
[2] OS at [4.3]
This feature of proposed independent claims 1 and 12 will be referred to as the “zero or baseline phase value” feature.
Newly proposed independent claims 14 and 25 state that the repeating pattern of step height differences is “in a sawtooth shape” and that “the respective initial heights follow a straight or monotonic profile from the central zone to the edge of the lens.”
The opponent’s next contention pursues twin lines of attack:
“The introduction by these passages into claims 14 and 25 … of the claim features that the repeating pattern of step height differences is ‘in a sawtooth shape’ and that the respective initial heights [of the physical steps] ‘follow a straight or monotonic profile from the central zone to the edge of the lens’ results in claiming an invention that is fundamentally different from that originally disclosed and in consequence constitutes disclosed and claimed matter as a result of the amendment that extends beyond that disclosed in the complete specification as filed.”[3]
[3] OS at [4.6]
These features of proposed independent claims 14 and 25 will be referred to respectively as the “sawtooth shape” feature and the “straight or monotonic profile” feature.
The opponent is likewise critical of the proposal to amend the body of the specification so that its general disclosure of the invention coincides with the proposed independent claims.
The divergent approaches
As said beforehand, the parties’ written submissions have between them centred on subsection 102(1) and paragraph 102(2)(b).
However, although the opponent’s written submissions briefly assert a breach of the support requirement of subsection 40(3), it is plainly evident from the language they use that the objections raised by the opponent rely entirely on the provisions of subsection 102(1). The applicant, on the other hand, has in the main followed the approach formulated in CSR, and contends that “if s 40(3) is complied with (i.e. there is support for the [amended claims]) then the ‘extends beyond’ point (under s 102(1)) cannot succeed.”[4]
[4] AS at [13]
The opponent has rejected this contention:
“… the opponent does not agree with the applicant’s apparent contention that the ground of objection to an amendment in section 102(1) is equivalent to non-compliance with the requirement of section 40(3) that “the claim or claims must be…..supported by matter disclosed in the specification”. While non-compliance with the latter may in most cases inevitably follow from non-compliance with the former, it certainly does not follow that compliance with S.40(3) establishes compliance with S.102(1). In general, the support requirement of S.40(3) can arguably be met by amending the specification to provide support, but this is possible only if S.102(1) is not contravened. The requirements of S.102(1) and 102(2)(b) are clearly entirely different requirements” (original emphasis).[5]
[5] OS at [12.1]
The statement emphasised above is consistent with the MPP at 2.11.7A. Nevertheless, while confirming that an amendment to the body of the specification may be allowable under paragraph 102(2)(b) as it relates to subsection 40(3), but not subsection 102(1), I do not think this statement means that the fundamental considerations that apply to one ground are of no consequence at all when considering the other. As can be derived from Generics and the Explanatory Memorandum, the question to be ultimately decided under each ground is whether the person skilled in the art would learn anything about the invention from the specification as proposed to be amended which they could not learn from the specification before amendment. Rather, it seems to me that the statement is simply alluding to the distinction I have previously discussed between the baseline disclosure against which the allowability of a proposed amendment is to be assessed for the purposes of subsection 102(1) as compared to paragraph 102(2)(b). Put simply, any amendment made to the specification after the time of filing is to be excluded from the assessment under subsection 102(1). Conversely, the assessment under paragraph 102(2)(b) must have regard to the specification as amended between filing and acceptance.
It can thus be seen that an amendment to the body of the specification which remedies a lack of support under subsection 40(3) will nonetheless contravene subsection 102(1) if it adds new matter to the combined disclosure of the specification as filed and the other documents prescribed by regulation 10.2A.
It bears comment though that in the present case the only effect of the amendments made to the body of the specification since filing has been to align the so-called consistory statements with the independent claims subsisting at the time. However, as said in Schering, the mere mention in the specification of features appearing in a claim does not necessarily serve as a sufficient support for the claim. The applicant has recognised as much.[6] In these circumstances, I am disposed to the view that a finding of non-compliance with the support requirement encompassed by paragraph 102(2)(b) would inevitably follow from an adverse finding in respect of subsection 102(1).
[6] AS at [83]
Based on the foregoing, I intend to take the totality of the written submissions into consideration notwithstanding the different approach each party has adopted.
CONSIDERATION
I have reproduced Figures 4 and 5 of the drawings accompanying the specification earlier in this decision. To help understand the consideration which follows, it will be recalled that Figure 4 illustrates the physical surface profile of an exemplary lens according to the invention, while Figure 5 illustrates the optical phase change profile of light passing through the lens of Figure 4.
It is also convenient at this point to note that the following consideration is unaffected by the disclosure of the abstract which, for present purposes, is the only “other document” prescribed by regulation 10.2A.
The “zero or baseline phase value” feature
It is agreed between the parties that there is no express disclosure of a baseline phase value other than zero. The parties are, however, diametrically opposed as to whether a non-zero baseline is implicitly disclosed. The case pressed by the opponent is best explained by reference to the following evidence from Dr Portney:
“[The specification as filed] describes a normalisation to zero … for the initial height/first value in Figures 3 and 5, but does not in fact disclose normalisation to any other reference value. Such disclosure is not implied. While normalisation to some other reference value is possible (as Mr [sic] Forbes notes) this is a modification of [the specification as filed] and is not disclosed, either actually or implicitly in [the specification as filed].”[7]
[7] Portney #3 at [6]
Although not immediately clear, I think that when read in context Dr Portney is referring to an obvious modification of the original disclosure of the specification as distinct from an express or implicit disclosure at the time of filing. He continues as follows:
“[The specification as filed] describes and illustrates, in Figures 3 and 5, phase change profiles in which all the initial step heights/first values are normalised to zero. The actual corresponding initial physical step heights may of course vary. Thus, [the specification as filed] describes and illustrates that, in Figures 3 and 5, the initial heights of the saw teeth are all zero from the central zone to the edge of the lens. It follows from [the preceding paragraph] that there is no disclosure in [the specification as filed], actual or implied, of a uniform value for the initial height of the saw teeth in the phase change profiles other than zero.”[8]
[8] Portney #3 at [7]
Prof Forbes begins his discussion of the amendments proposed to independent claims 1 and 12 by stating that the expression “zero or baseline phase value” indicates a phase value that has been normalised to zero or some other reference value. He then goes on to assert:
“As is well understood by workers in the field of diffractive lenses, phase is a relative thing and it is only the phase differences that have significance; any constant value can be added to a phase distribution and it has no impact because the phase differences remain the same. Similarly, any skilled worker would understand that the ‘baseline’ can be given any constant value at all – zero is simply a convenient choice. I therefore see no merit in the observation made in [Portney #2] that the ‘notion that there is a profile other than zero … is something new that I do not learn from reading [the specification as filed]’. Any skilled worker would implicitly understand that a baseline other than zero could be adopted without affecting in any material way the working of the diffractive lens as specified in … the amended claims”[9] (original emphasis).
[9] Forbes at [32] and see also AS at [65]
What Prof Forbes appears to be saying here is that the adoption of a non-zero baseline would naturally occur to the skilled person. This evidence suggests to me that Prof Forbes has impermissibly read the specification as filed with the benefit of hindsight (European CentralBank v Document Security Service Inc (ECB) [2008] EWCA Civ 192 at [13], [37]). On further consideration, I believe the comparison Prof Forbes has conducted between the phase profile diagrams prepared by him and Figure 5 is similarly tainted.[10] This failing aside, it is not enough for present purposes that the feature of a non-zero baseline may be obvious; it must necessarily be implicit (ECB at [15]).
[10] Forbes at [17]-[27], Figures GWF-1 to GWF-6
Before continuing, I quickly pause to again mention that in accordance with proposed independent claims 1 and 12, the height of the steps is determined by the difference between a respective “initial height” defining a zero or baseline phase value, and a respective “peak phase value”. With this in mind, I now turn to Figures 2 and 3 of the accompanying drawings which are directed to a prior art diffractive lens. In common with the relationship between Figures 4 and 5, Figure 3 illustrates the optical phase change profile of light passing through the lens of Figure 2. At page 6 lines 20 to 34 the specification describes the elements of the phase change profile as having a sawtooth shape characterised by sharp peaks comprising a leading edge that rises from a first value normalised to zero, gradually to a peak value, and a trailing edge that falls abruptly from the peak value back to the initial height (reference numerals omitted). It seems the expressions “first value” and “initial height” have been used interchangeably.
This is the only instance in the specification as filed where the expression “normalised to zero” is used. The specification also makes no further mention of a first value, an initial height, or a peak value. I note though that Dr Portney says that while not actually stated, it may be inferred that the sawteeth depicted in Figure 5 have initial heights that are normalised to zero.[11] The same can likely be said of Figure 7. Regardless, the fact remains that the disclosure of relevance to the question presently under consideration is extremely brief even to the point of nowhere referring to a “baseline” and, most notably, goes no further than teaching the normalisation of the first value/initial height of the steps to zero. In my opinion, the disclosure as it thus stands falls well short of clearly implying a baseline phase value other than zero.
[11] Portney #3 at [5]
I consequently find that if amended as proposed to include a non-zero baseline phase value, independent claims 1 and 12 (as well as their corresponding consistory clauses) would contravene subsection 102(1). For the reasons given in [52] above, it follows that if so-amended the specification would also contravene paragraph 102(2)(b) when read with the support requirement of subsection 40(3).
The “sawtooth shape” feature
This feature is related to the physical surface profile of the lens illustrated by Figure 4. The applicant has conceded that the specification does not use the expression “sawtooth shape” when referring to Figure 4, which is the very point made by the opponent:
“… the opponent is … drawing attention to a notable aspect of the specification as filed,
which does describe the phase change profiles of Figures 3 and 5 and the unillustrated lens tooth profile of Figure 2 as “sawtooth”, but notably does not use this term in relation to Figure 4. The profile of Figure 4 is however quite different from the profiles of Figures 3 and 5 and so one might conclude that the lack of description of the term in relation to Figure 4 was deliberate on the part of the draftsman” (original emphasis).[12][12] OS at [15.9]
I am not persuaded by this submission. The specification describes Figure 4 as showing a step height pattern formed between alternating larger step heights and smaller step heights. To my mind, the zigzag profile of the step height pattern, which is clearly visible in Figure 4, falls within the ordinary meaning of the expression “sawtooth shape”.
I consequently find that if amended as proposed to include the sawtooth shape feature, independent claims 14 and 25 (as well as their corresponding consistory clauses) would not contravene subsection 102(1). For the reasons given in [52] above, it follows that if so-amended the specification would also not contravene paragraph 102(2)(b) when read with the support requirement of subsection 40(3).
The “straight or monotonic profile” feature
The applicant has admitted that the specification does not disclose a straight profile that is followed by the initial heights of the steps,[13] but maintains (without further elaboration) that there is disclosure of the initial heights of the steps following a monotonic profile. As the opponent has correctly submitted, this admission alone warrants refusal of the proposed amendments as a whole.
[13] AS at [80]
The next difficulty facing the applicant is that there is no express disclosure of a monotonic profile, and nor does the applicant suggest that it is implicit. The applicant has attempted to address this shortfall in disclosure by resort to what is shown by Figure 4. The applicant’s additional reliance on Figures 5 and 7 is clearly misguided since neither drawing illustrates the physical profile of the lens. Nonetheless, it is well settled that a drawing can of itself provide the disclosure required, and that the interpretation of a drawing is a question to be assisted where necessary by evidence of what the drawing would convey to the skilled person.[14]
[14] See e.g. Nicola Leonardis v Sartas [1996] FCA 1548 at [18]
The only evidence on the second facet of the straight or monotonic profile feature comes from Dr Portney. Indeed, Prof Forbes has acknowledged that he was not asked by the applicant to comment on the proposed addition of this feature to new independent claims 14 and 25.[15] After noting that the term “monotonic” relevantly means “unchanging or changing in only one direction (i.e. either always increasing or always decreasing)”, Dr Portney submits:
“There is no suggestion of any specific relationship linking the height coordinates of the bottoms of the steps in the lens radial surface profile or the lens phase change profile, and no mention that these bottoms follow a monotonic profile from the central zone to the edge of the lens – or otherwise. The notion that there is such a specific relationship … is something new that I do not learn from reading [the specification as filed].”[16]
[15] Forbes at [16], [28]
[16] Portney #2 at [8]
The opponent takes this evidence further by arguing that when judged by the eye, Figure 4 is not sufficiently informative as to enable a determination of whether the bottoms (i.e. the “initial heights” to borrow the language of the proposed claims) of the steps follow a monotonic profile. I agree with the opponent. To reiterate, Figure 4 illustrates the physical profile of the steps formed between the annular zones of the lens. It is clear at first glance that this figure shows a series of steps extending above the horizontal axis to varying heights such as to exhibit a pattern of step height differences between each zone which repeats periodically from the centre to the edge of the lens. Figure 4 further shows a smooth curve extending below the horizontal axis out to the edge of the lens. I think the curve can be aptly described as having a “monotonic profile”. However, even on a close inspection of Figure 4, it is not possible to tell what the curve is intended to depict. I have as a result formed the view that the curve could not, as asserted by the applicant, be considered to represent the profile followed by the bottoms of the steps without the supposition of technical matters which, on the evidence of Dr Portney, simply do not emerge from the specification as filed.
I consequently find that if amended as proposed to include the straight or monotonic baseline feature, independent claims 14 and 25 (as well as their corresponding consistory clauses) would contravene subsection 102(1). For the reasons given in [52] above, it follows that if so-amended the specification would also contravene paragraph 102(2)(b) when read with the support requirement of subsection 40(3).
Additional issue
The opponent has somewhat belatedly objected to the proposed inclusion in independent claims 1 and 12 of the requirement that “… the height of the steps [in the lens surface profile] is determined by the difference between a respective initial height defining a zero or baseline phase value and a respective peak phase value …” The opponent submits that the physical heights of the steps cannot be “determined” by phase height.[17] I have assumed for present purposes that by “phase height” the opponent means the difference between the zero or baseline phase value and the peak phase value.
[17] OS at [16.1]
I will refer to the feature in question as the “step height” feature.
In response the applicant directs attention to the formula referenced by the specification which the applicant says establishes the mathematical relationship between the surface profile of the lens and the phase profile of light passing through the lens. The applicant proceeds as follows:
“This formula is referred to … in relation to the phase profile in Figure 5 (as part of the description of embodiments of the invention). It is in the context of this formula and the relationship it describes between the lens profile and the phase profile that it is apparent that the step heights in the lens profile can be determined from phase values in the corresponding phase profile.”[18]
[18] AS filed 26 April 2018
The specification as filed sets out a mathematical formula at page 8 lines 10 to 18 which has been derived from a cited article for calculating the diffraction efficiencies of the phase change profile of Figure 5. The formula is expressed in terms of two alternating step heights, “A1” and “A2”. As best can be understood from the specification, the topographic plots of diffraction efficiencies shown in Figure 6 have been generated using the same mathematical formula. The plots are said to be illustrative of different diffractive lens designs “dictated by the choice of step heights A1 and A2”. This disclosure does not appear to me to indicate that phase height is determinative of step height as contended by the applicant, and nor do I think this contention finds support elsewhere in the specification:
- “A lens designer may choose, for the diffractive surface features of a bifocal lens, step heights so as to introduce, for example, a one-half wavelength phase change between adjacent zones …” (page 2 lines 32 to 34)
- [with reference to Figure 5] “… a first set of peaks, having larger step heights 144, alternate with a second set of peaks having smaller step heights 148. These features of the phase profile correspond to surface profile step heights 136 and 138 [in Figure 4] respectively”. (page 7 lines 16 to 19)
Thus the specification seems at best to disclose a correspondence of the step heights in the phase profile with the step heights in the surface profile. As submitted by the opponent, “’correspond to’ does not imply any rule or correlation as does ‘determined by’”. I observe in passing that, as alluded to by the SGP,[19] the further requirement in proposed independent claims 1 and 12 that the respective initial [physical] heights of the steps “define “ a zero or baseline phase value similarly confuses the nature of the relationship between step height and phase height.
[19] SGP at [1.2.3], [1.3.1]
I consequently find that if amended as proposed to include the step height feature, independent claims 1 and 12 (as well as their corresponding consistory clauses) would contravene subsection 102(1). For the reasons given in [52] above, it follows that if so-amended the specification would also contravene paragraph 102(2)(b) when read with the support requirement of subsection 40(3).
CONCLUSION
The proposed amendments contravene subsection 102(1) and paragraph 102(2)(b) when read with the support requirement of subsection 40(3), and are therefore not allowable. I will accordingly refuse the amendments.
COSTS
The opposition is successful. I see no reason to depart from the usual practice that costs follow the event. I will accordingly award costs against the applicant.
O L Haggar
Delegate of the Commissioner of Patents
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