Lucent Technologies Inc v Geca Tapes B.V. and Pacific Dunlop Limited

[1999] APO 59

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 655687 by AMERICAN TELEPHONE AND TELEGRAPH COMPANY, now proceeding in the name of  LUCENT TECHNOLOGIES INC.

Title:          Communication cable having a core wrap binder which provides water-blocking and strength properties.

Action: Oppositions under Section 59 of the Patents Act by GECA TAPES B.V., and PACIFIC DUNLOP LIMITED.

Decision:          Issued  .

Abstract:Final determination. 

In a decision issued on 26 September 1997 the claims of application 655687 were found to lack novelty and lack inventive step in the light of a US patent specification and a Geca Tapes brochure.

The applicant subsequently proposed amendments to attempt to overcome the above deficiencies.  These amendments have been found to overcome the deficiencies, and maintain the claims fairly based on the description of the invention.

The application is in order for sealing.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 655687 by AMERICAN TELEPHONE AND TELEGRAPH COMPANY, now in the name of LUCENT TECHNOLOGIES INC, and oppositions by GECA TAPES B.V., and PACIFIC DUNLOP LIMITED under Section 59.

BACKGROUND

I issued a decision on the oppositions to patent application 655687 on 26 September 1997.  I found the claims of the application lacked novelty and lacked inventive step in the light of US patent specification 4913517 and a brochure by Geca Tapes B.V. entitled "Waterblocking yarns".

The applicant subsequently proposed amendments to attempt to overcome the above deficiencies.  These amendments essentially introduce definitions of a communication cable having at least one strand comprising water blocking filaments and strength filaments that are distributed as a blend within a bundle to form the or each strand.  The claims previously defined the two filament types as being purposely commingled.

Pacific Dunlop Limited ("Pacific Dunlop") and Geca Tapes B.V. ("Geca Tapes") both provided comments on the proposed amendments.  Pacific Dunlop and Geca Tapes asserted the amendments were not allowable under section 102 and that the claimed invention still lacked novelty and inventive step.  In any event Pacific Dunlop and Geca Tapes did not pursue the points under section 102 when leave was subsequently granted to the applicant to amend.  Consequently the amendments were allowed unopposed.  The remaining issue to be determined is whether the invention as now claimed overcomes the deficiencies I raised in my earlier decision and any other ground of opposition.

DECISION

Pacific Dunlop comment that the presently claimed invention is not fairly based on the description of the invention and that the claims lack clarity.  Pacific Dunlop suggest there is no basis in the specification for the expressions, "bundle", and "distributed as a blend within a bundle", as now defined in the claims.

While the word, "bundle", is not apparent elsewhere in the specification, it is clear the invention concerns the grouping together of multiple water blocking and strength filaments in a single strand.  The reference to a bundle is a most appropriate definition of this arrangement.  Similarly the reference to distribution as a blend within a bundle is a most appropriate way to define the arrangement of the two types of filaments in the present invention.  The claims are fairly based and clear on these points.

The comments from Geca Tapes introduce a new argument of lack of sufficiency in the description of the invention.  Geca Tapes assert the description does not sufficiently enable a person skilled in the art to produce a communication cable of reduced diameter as desired.

The specification states the particular method to fabricate the strand is not a particular point of novelty.  I am also satisfied a specific arrangement of water blocking and strength filaments need not be specified to ensure the invention can be put into practice.  The essence of the invention resides in a distributed blend of water blocking and strength filaments in a strand rather than previously known arrangements of grouping like filaments and mixing these groups together.  I expect a person skilled in the field of communication cables would readily be able to put the invention into practice given the information in the specification.  In any case the specification suggests preferable ratios of water blocking and strength filaments for optimal performance.

Geca Tapes also assert the claimed invention is still not novel and inventive over US patent specification 4913517 and the Geca Tapes brochure.  Geca Tapes suggest the present definition of a blend of water blocking and strength filaments within a bundle is no different to the previous definition of purposely commingled filaments.  In this respect Geca Tapes noted my observation in my earlier decision where I said the words, "purposely commingled", did not appreciably add anything to the yarn blend defined earlier in the main claim.

Geca Tapes appear to have overlooked the distributed nature of the blend now claimed, or alternatively may be suggesting the distributed aspect is also insignificantly different from the prior art.  For contrast I found in my earlier decision that the total enclosure of a group of strength filaments by a group of water blocking filaments in multiple fibre bundles in US 4913517 falls within the scope of the expression, "purposely commingled".  Similarly the Geca Tapes brochure's disclosure of the two filament types in specific ratios in a yarn falls within this scope.  On the other hand a distributed blend of water blocking and strength filaments is different.  This suggests an intermixing of individual filaments of the two filament types within a strand such that there is no distinct grouping of either water blocking or strength filaments in the strand.  Neither the US patent specification nor the Geca Tapes brochure discloses a distributed blend of water blocking and strength filaments to form a strand.  The invention as now claimed is novel and inventive.

The amendments overcome the deficiencies that I raised in my earlier decision and overcome any other ground of opposition on the available evidence.  I direct the application proceed to sealing.

M.G. Kraefft

Delegate of the Commissioner of Patents

Attorneys for A.T.&T. :  Spruson & Ferguson, Sydney

Attorneys for Geca Tapes :  Watermark, Melbourne

Attorneys for Pacific Dunlop:   Griffith Hack, Melbourne