ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd
[1997] APO 70
•24 December 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 606285 in the name of ICI Australia Operations Proprietary Limited
Title: Cable
Action: Request under Regulation 5.5(1), by ICI Australia Operations Proprietary Limited, for dismissal of an opposition under Subsection 104(4) by Commercial Polymers Pty Ltd.
Decision: Issued
Abstract: The particulars provide the applicant with sufficient indication of the material facts which the opponent will need to establish, in order for its case to be made out. The particulars were not shown to be so deficient that the opposition is “manifestly groundless” or “does not admit of argument”.
Previous consideration of amendments by the Patent Office is not a bar to a third party opposing the allowability of the amendments in an appropriately presented opposition.
The fact that an opponent has not lodged an appeal to a previous decision or that they have the right to take action in the Courts in relation to an application are not justification for dismissal of an appropriately framed opposition.
To dismiss an opposition, in whole or in part, on the basis that the opposition would be a rehearing of a previous matter, can only be done where the matter has previously been decided and the issue pressed in the opposition can only involve a reconsideration of the decided matter.
Request for dismissal refused.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 606285, in the name of
ICI Australia Operations Proprietary Limited.
Request under Regulation 5.5(1), by ICI Australia Operations Proprietary Limited, for dismissal of an opposition under Subsection 104(4) by COMMERCIAL POLYMERS Proprietary Limited.
background
Patent Application No. 606285 in the name of ICI Australia Operations Pty Ltd (hereafter ICI) was advertised accepted on 31 January 1991. On 31 April 1991 Commercial Polymers Pty Ltd (hereafter Commercial) filed a notice of opposition under Section 59 of the Patents Act 1952.
The hearing of the substantive opposition was held in September 1995, following completion of the evidentiary stages. The decision issued on 11 April 1996 and the opposition was successful on the grounds of non-compliance with Section 40, prior publication and want of novelty. The hearing officer considered that the specification was capable of being amended to overcome the problems and ICI was given 60 days to propose amendments.
ICI filed a request for leave to amend on 7 June 1996, this was considered by an examiner and ICI subsequently filed a second statement of proposed amendments on 13 August 1996. The granting of leave to amend the specification was advertised on 23 January 1997. Commercial filed a notice of opposition to the allowance of the amendments under subsection 104(4) of the Patents Act 1990 on 22 April 1997 and a Statement of Grounds and Particulars on 22 July 1997.
ICI filed a request for dismissal of the opposition on 22 August 1997 outlining the basic reasons for their request, and the matter was set down for hearing.
The mater was heard in Melbourne on 1 December 1997 and both parties appeared at the hearing. ICI was represented by Mr John McCormack, Patent Attorney of Griffith Hack, Melbourne. Commercial was represented by Greg Chambers, Patent Attorney of Phillips Ormonde & Fitzpatrick, Melbourne.
THE STATEMENT OF GROUNDS AND PARTICULARS
The Statement of Grounds and particulars lists three grounds of opposition. The particulars of the three grounds in relation to the proposed amendment are summarised below:
Ground 1:The specification would claim matter not in substance disclosed in the specification as filed.
a) Proposed claim 1 includes cables where the concentric layers “surround” the functional element but do not “coat” the functional element.
b) Reference to “an exterior layer” in proposed claim 1 which makes mention of “at least two concentric layers” renders the claim ambiguous and is not supported in the specification as filed.
c) Proposed claim 1 refers to applying layers “substantially simultaneously” but there is no reference or disclosure of a process which is “substantially” simultaneous in the specification as filed.
d) Proposed claim 1 does not require that at least one of the polymeric materials be in a fluid state when the two polymeric material are contacted. The invention is described exclusively throughout the description as incorporating this feature and was previously in claim 1, but is now found in claim 10.
Ground 2:The claims of the specification would not in substance fall within the scope of the claims before amendment.
a) In proposed claim 1, “surrounding” has replaced “coated with”. The proposed claim does not require coating and thus falls outside the scope of the claim prior to the proposed amendment.
b) Reference to “an exterior layer” in proposed claim 1 makes it fall outside the scope of the claim prior to the proposed amendment as the claim as accepted referred to “the exterior layer” implying only one such layer.
c) Proposed claim 1 does not require that at least one of the polymeric materials be in a fluid state when the two polymeric material are contacted. This feature was a characterising limitation on claim 1 as accepted, but is now found in claim 10.
Ground 3:The specification would not comply with sub-section 40(2) or (3).
Eight items a) to h) are particularised in relation to alleged ambiguities, inconsistencies or lack of clarity in the proposed amended claims.
SUBMISSIONS
The general submissions of Mr McCormack for ICI in support of the opposition being dismissed can be summarised as follows:
The invention described and defined in the present application is clearly set down in the hearing officer’s decision on the substantive opposition. The amendments are allowable as they address the concerns raised in that decision.
There is nothing of substance in the Statement of Grounds and Particulars, the objections to the wording of the claims are petty and trivial in the extreme. There is nothing in the claims which is unclear, all claims are fairly based and the opposition is untenable as a result.
The procedure in the current situation is lengthy and time consuming and may still be the subject of further similar actions. The process to serve any useful purpose must be based on objections which have some substance and are not of the trivial or nit-picking nature, as in this case.
As set down in Borden, Inc v Elkem A/S 24 IPR 146 the Commissioner has a duty to speed up matters of this type. The interests of both parties are served by speeding up this process.
If the opponent has any concerns regarding the interpretation of the claims they can attend to this through revocation action in the court, which is the correct forum.
The opponent has indicated that they propose to adduce evidence that the extrusion is not “simultaneous”, however, this would be a rehearing of matters already heard in the substantive opposition. This is not permitted, the only matter which can be investigated in the current opposition is a self-contained inquiry within the specification as to the support for simultaneous extrusion, which has nothing to do with “tandem” versus “simultaneous” extrusion.
More specifically in relation to the Statement of Grounds and Particulars Mr McCormack made the following submissions:
There is no difference in meaning between the terms “surrounding” and “coating”.
The proposed reference in claim 1 to “an exterior layer” is for drafting purposes to provide an antecedent for that term in subsequent claims, as this is the first mention of the feature.
The use of the word “substantially” is totally appropriate for the purpose of defining the feature of “simultaneous co-extrusion” in claim 1. There is, and must be, some tiny difference in time in the co-extrusion process since the “second” layer must be applied subsequent to the “first” layer in order for the second layer to be successfully bonded to the first layer. The use of the term “substantially” in patent claims has been previously considered and approved.
The proposed deletion of the feature “wherein at least one of the polymeric materials is in a fluid state when the two polymeric materials are contacted” is of no consequence. The change of terminology in this instance to “such that the two layers bond to each other” is simply looking at the same phenomenon from two different perspectives. The first perspective being the physical nature/property of the two polymeric layers, ie one being in a fluid state. The second perspective being the chemical aspect/nature of the two layers, ie that the two polymeric components are bonded as a result of co-extrusion. The patentee or applicant is entitled to claim the invention in whatever manner he so desires or chooses, there is nothing wrong with that in terms of the Patents Act.
The assertion by the opponents that the feature of “the exterior layer” in the dependent claims has no antecedent, is incorrect. This feature is set out in claim 1 as an exterior layer and clearly provides an antecedent for this feature in subsequent dependent claims.
The use of the feature “at least two concentric layers” is totally appropriate in defining the current invention. The specification clearly shows that there can be more than two layers present, ie other non-inventive layers can be present. It has been established, that the gist of the invention is the bonding of the two polymeric layers specified in claim 1 via co-extrusion which produces a superior quality coating. A sensible construction of the claims is required as set down in Hendrickson v Tallon Ltd (1965) RPC 434 and not an absurd or obtuse construction as proposed by the opponent.
The general submissions of Mr Chambers in support of the opposition not being dismissed can be summarised as follows:
In relation to the Section 59 opposition and compliance with Section 40, these matters were previously dealt with, but were in relation to the claims in the unamended form. Quite significant changes to the claims have been proposed. The previous opposition did not deal with the proposed amended claims and hence is irrelevant to whether the proposed amended claims meet the requirements of the Section 40 of the Act.
Regulation 5.4 provides specific grounds as set down in Section 102 of the Act for opposition to amendments. The opponent has filed a statement clearly setting out the grounds and particulars, under Section 102, it relies upon in relation to the amended claims.
The guiding principles in relation to the exercise of the discretionary power to dismiss an opposition are set down in the two decisions in L’Air Liquide, SA L’Etude et L’Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd 24 IPR 77 quoting the decision in General Steel Industries Inc v Commissioner for Railways(NSW) and others (1964), 112 CLR 125. The test is stated as "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".
Borden, Inc v Elkem A/S 24 IPR 146 sets out that the fact that a matter has been the subject of previous consideration during examination, is not a bar to subsequent consideration at opposition. The opposition usually involves evidence and submissions not available during the examination of the application.
In relation to the way the opponent particularises the opposition the relevant principle is in Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd 24 IPR 368 which states:
“The Commissioner is the administrator of the system, with a responsibility for keeping the opposition moving efficiently, and the arbiter in the dispute. If the Commissioner also determines what the wording of the particulars is to be, he or she is moving into the area which is the sole province of the opponent. This would be contrary to the clear intention of the Act. The only time that the Commissioner can intrude into the province of the opponent is if the particulars are totally inadequate, and then he or she can dismiss the opposition.”
In relation to the letter of 22 August by the applicant’s attorney in support of the opposition being dismissed:
Firstly, the fact that the specification has been previously considered by the Patent Office, is of no consequence, as this is always the case in Section 104 oppositions. The further contention that the matters raised in the particulars have been dealt with by the Patent office, is plainly wrong, as the particularised objections have not all been dealt with by the Office. But even if that had been the case, this would not shut the opponent out from raising the issues in a properly formulated opposition.
Secondly, any possible prejudice to the applicant, due to the further delay of the granting of the patent, is not a ground under which the opposition can be dismissed, indeed all oppositions are prejudicial to applicants as they wish to have their application granted. Opposition proceedings are none-the-less provided to enable the broader public interest and third party interests to be protected. Further delay in the granting of the present patent is also prejudicial to the opponent as there is further uncertainty as to the final scope of the claims of this case.
Thirdly, the assertion that the current opposition is an appeal from the decision of the Hearing Officer and therefore is not taken in the correct forum or within the time allowed for lodging an appeal, is plainly wrong. This opposition deals with certain amendments which have been put forward and whether those amendments are allowable under Section 102, see Concorde Trading v Croner 29 IPR 507 where and identical situation arose.
In relation to the particulars set out in the Statement of Grounds and Particulars Mr Chambers made the following submissions:
The opponent will provide evidence to show that the term “coat” has a special meaning in this field of technology and that that meaning is not the same as that of the term “surrounding”. This issue could be of importance in matters of infringement.
In relation to the use of the phrase “an exterior layer”, this phraseology appears to include the possibility that the so-called “exterior layer” is not in fact the exterior layer at all but is simply “exterior” to the first mentioned layer to which it is bonded. The phrase appears to be defining the exterior layer relative to the interior layer, but is not definitive in terms of its relationship, if any, to any additional layers other than the two specifically mentioned. Further, this is not how the invention was previously defined.
The term “substantially simultaneous” could include tandem extrusion of the layered product, which is clearly not part of the invention. There is a clear difference between co-extrusion and tandem extrusion in terms of the die head used to effect extrusion and the claim as presently proposed does not exclude tandem extrusion. The Office decision clearly sets out that “simultaneous co-extrusion” was an essential feature of the invention and needs to be defined in the claim. Further, the decision states that the claims are not fairly based and the invention is not fully described if the claims cover tandem extrusion.
In relation to the proposed change to the wording “wherein at least one of the polymeric materials is in a fluid state when the two polymeric materials are contacted”. While it is permissible for the applicant to define the invention in terms they see fit, this is only so when preparing the patent specification. Subsequent to acceptance, if the applicant wishes to amend their monopoly they must meet the requirements of Subsections 102(1) & (2) of the Act. Hence, if the applicant choose to amend the claims to remove the feature that “at least one of the polymeric materials is in a fluid state when the two polymeric materials are contacted” then this change must be in accord with Section 102.
The proposed amendment to introduce the phrase “at least two concentric layers” clearly produces ambiguities in the claims.
DECISION
The reasons for dismissing an opposition are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways(NSW) and others (1964), 112 CLR 125. The relevant passage is:
"It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".
At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance".”
On this basis, an opposition will be dismissed if, and only if, it is clear that the opposition could not possibly succeed. Additionally, the onus resides with the party seeking dismissal, in this case ICI, to show that the opposition is clearly untenable.
I will deal firstly with the adequacy of the particularisation of the opposition in the Statement of Grounds and Particulars. Both parties have made submissions in relation to specific matters in the Statement of Grounds and Particulars, but I need not make reference to those matters in detail. The particulars which have been summarised above identify the specific phrase/feature (or lack there of) in the proposed amended specification; the alleged deficiency with the phrase/feature; and the manner in which deficiency is alleged to result in non-compliance with the stated ground. In this case this is sufficient to particularise the opposition.
The particulars, achieve their purpose by providing the applicant a sufficient indication of the material facts which the opponent will need to establish in order for its case to be made out. I am convinced that the Statement of Grounds and Particulars provides adequate particularisation for the opposition.
In relation to the Statement of Grounds and Particulars, Mr McCormack in support of the opposition being dismissed, has submitted that the present opposition is trivial, nit-picking and untenable. Prima facie, the particulars do involve a reasonable proportion of matters which could be regarded as nit-picking or petty. However, this is not a bar to the opposition proceeding, since the applicant must show that the opposition as presented in the grounds and particulars is manifestly bad.
The applicant has not satisfied me that the particulars are so faulty that they do not admit of argument. On the contrary, there appears to me to be several matters in the particulars which I believe provide a basis for argument in the substantive opposition. It follows that I will not dismiss this opposition on the basis that the particulars are so deficient that they are “manifestly groundless”.
Mr McCormack submitted that the specification and amendments have already been the subject of consideration by relevant personnel in the Patent Office. The first time as a part of the substantive opposition and the second time in relation to the proposed amendments which are the subject of this opposition. He has stated that the previous review is more than adequate to ensure the present invention is described and defined in accordance with the Patents Act. I cannot agree with this contention. The Act makes specific provision for interested parties to oppose the allowance of amendments following the acceptance of an application, as has taken place here.
To deny the right to oppose the amendments, on the ground that the specification with or without amendments has been previously considered in the Patent Office, would be in clear contradiction of the legislative intent. On this issue I must agree with the submissions of Mr Chambers, the particularised objections have not all been dealt with by the Office, but even if that had been the case, this would not shut the opponent out from raising the issues in a properly formulated opposition.
Mr McCormack has argued that the current opposition is, in effect, an appeal from the Hearing Officer’s decision and as such is not taken in the correct forum or within the time allowed for lodging an appeal. I do not concede that the current action is a de facto appeal from the previous decision. I must agree with submissions of Mr Chambers for the opponent, that the two matters are unrelated. The present action deals with the specification as proposed to be amended by the applicant and is not an appeal in relation to matters as decided in the previous decision. I can find no reason why the present opposition should be regarded as "so manifestly faulty that it does not admit of argument" as a result of the fact that the opponent has not availed themselves of other legal avenues of appeal.
Any appeal rights the opponent has had in the past, or may have in the future, have no bearing on the present action for dismissal. Again, I must agree with Mr Chambers, that the current opposition is clearly within the parameters provided for by the Act which has no connection whatsoever with the opponent not having filed an appeal against the previous office decision.
Mr McCormack also submitted that if the opponent has concerns regarding the interpretation of the claims they can attend to that through revocation action in the Courts, which is the correct forum. Again, this is not relevant to providing justification for dismissal of the opposition. The fact that the opponent has had, and will continue to have, the potential for disputing the scope of the monopoly in the Courts, is not a bar to them opposing the current amendments in the form of appropriately presented opposition.
Mr McCormack’s has asserted that the opposition should be dismissed because the amendments are allowable as they address the concerns raised in the hearing officer’s decision. Firstly, I am not in a position to make any determination as to whether the amendments are allowable nor whether they address the issues in the previous decision. Secondly, while the applicant may be of the opinion that the amendments are allowable and address the matters raised in the Hearing Officer’s decision, this is not of itself sufficient to dismiss an opposition which is otherwise adequate. Indeed, it is the allowability of the amendments which is the subject of the current opposition and to deny the opponent the right to put their case in relation to the allowability of the amendments would be tantamount to preempting the opposition itself, and is clearly inappropriate.
Mr McCormack has further submitted that the Commissioner has a duty to speed up matters of this type and that the interests of both parties would be served by speeding up the present matter, by dismissing it. I know of no authority to dismiss an otherwise tenable opposition, based solely on the contention that this would expedite matters and serve the interests of both parties. To summarily dismiss the current opposition simply because this would bring about a timely disposal of the matter, would be clearly inappropriate. Such an action would manifestly divest the opponent of their right to be heard on the matters which have been raised.
Mr McCormack has argued that the opposition process to be useful must be based on objections which have some substance. I agree that for the opposition process to be useful the grounds and particulars must have some substance. However, in relation to dismissal of an opposition the test to be applied is: Is the opposition “so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument”?
As I have outlined above, I believe that there is sufficient substance in the Statement of Grounds and particulars not to regard the case being put by the opponent as “so manifestly faulty that it does not admit of argument”. The opponent has provided sufficient particularisation for the applicant to know the case it has to answer in relation to each ground. I believe there is sufficient substance in the opposition, as it has been put, for the opposition to proceed.
Mr McCormack has stated that the intention of the opponent to adduce evidence that the extrusion process is not “simultaneous” would be a rehearing of the matters already heard in the substantive opposition, which is not permitted. It is true, that matters which have been decided in an earlier decision are final insofar as those matters were capable of determination at that earlier point, ex Parte Mole Pty Ltd 147 CLR 340. However, to dismiss the opposition in relation to this specific matter I need to be convinced that the objection to the allowability could only be a rehearing of the matter. In other words, if I can see that there is scope for new evidence and/or argument to be raised in relation to the new ground of objection which has not previously been dealt with, then this would be sufficient for me not to dismiss that particular aspect of the opposition.
The issue relates to the phrase “substantially simultaneously” in reference to the extrusion process. In the previous decision a reasonable amount of consideration was given by the Hearing Officer to the “extrusion process” and how it was defined. On pages 3 to 5 of that decision there is a reasonably large amount of deliberation surrounding the terms “in a single operation”; “consecutively applied”; “tandem extrusion”; “co-extrusion” etc. There is, however, no consideration nor conclusion in relation to the currently proposed term of “substantially simultaneously” with reference to the extrusion process. The paragraphs of most relevance are on page 5 of the decision, where it is stated:
“Overall, the applicant’s evidence suggests to me that the applicant considers it is essential to the invention that the polymer layers be applied simultaneously by coextrusion.
As presently drafted the specification clearly indicates that consecutive or simultaneous extrusion is included in the term “in a single operation”. In so far as simultaneous coextrusion is essential to the invention the specification does not fully describe the invention.”
The Hearing Officer has not made any conclusions as to the meaning of “substantially simultaneously” nor, strictly speaking, how that term would be construed in the art. What has been stated is that insofar as “simultaneous coextrusion” is essential to the invention it is not fully described in the specification. The opponent has now alleged that there is no disclosure of the feature of “substantially simultaneous” extrusion in the specification as filed. These two issues are not the same. A specification can contain a disclosure of a feature but not have a full description of that same feature.
The hearing officer has only considered the issue in relation to “simultaneous” extrusion and not “substantially simultaneous” extrusion and more importantly has not had to make a determination as to whether that term was in substance disclosed in the specification as filed. There is scope for argument from both parties as to whether the feature of “substantially simultaneous” extrusion is disclosed in the specification as filed. It follows, that I will not dismiss this matter as I believe there is room for argument which would not involve a rehearing of the substantive opposition. As an aside, I should add that this is not a justification for the opponent to have a another attempt at the same issue from a different perspective nor for them to raise new or additional arguments in relation to an issue which has previously been decided.
In summary, I am unconvinced by the applicant’s submissions. They have not established that the opposition is untenable. The applicant has not discharged the onus upon them to show that the opposition is "manifestly groundless", "so manifestly faulty that it does not admit of argument", or that it "discloses a case which the court is satisfied cannot succeed".
CONCLUSION
There is nothing before me to suggest that the opposition is so manifestly groundless or obviously untenable that it could not possibly succeed.
I refuse the request to dismiss the opposition in its entirety.
Pursuant to Regulation 5.8 (1) (a) (iii) the time for service of evidence in support of the opposition commences from the date of this decision.
COSTS
In actions before the Commissioner, costs normally follow the event. I see no reason for departing from this, and I award the costs against the applicant, ICI Australia Operations Pty Ltd.
Victor Portelli
Delegate of the Commissioner of Patents
Patent Attorneys for the applicant : Griffith Hack, Melbourne
Patent Attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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