Lumenyte International Corporation v Light Transmission Cables Pty Limited
[1998] APO 20
•3 April 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 638707 in the name of LUMENYTE INTERNATIONAL CORPORATION
Title: Optical pipe
Action: Opposition by LIGHT TRANSMISSION CABLES PTY LIMITED to an amendment of the specification.
Decision: Issued .
Abstract
Allowance of the amendments refused.
As a result of the amendment, the claims would not be unclear. The claims were construed in the context of a light pipe. While no evidence was presented on the point, a light pipe is understood to be a device that will transmit light for general illumination purposes. It is more likely than not that a skilled reader would understand that the claims define the purity of the reactants by the result that the product will transmit general illumination light on a "white in - white out" basis. [page 5]
As a result of the amendment, the claims would not go beyond the scope of the claims as accepted. The claims as amended are constructed from a different combination of words. Although it is possible that the amended claims could go beyond the scope of the claims as accepted, it has not been established that they would (in fact) go beyond the scope of the claims as accepted. [page 5-6]
As a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed. The question to be answered is whether there is fair basis for claims involving purity of the reactants defined by the transmission of the light. There are examples of the invention in which the light pipe is said to transmit colour with a yellow tint and others where there is no colour, so there is a basis for producing light pipes which transmit colour truly. However, the light pipe that transmits colour truly is stated to be prepared the same way as that which does not, except that a different initiator is used. There seems to be no basis for purifying the starting reactants so as to produce true colour transmission. [page 7-8]
The applicability of res judicata and issue estoppel discussed. [page 6-7]
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 638707 by Lumenyte International Corporation, and an opposition by Light Transmission Cables Pty Limited to an amendment of the specification.
background
Australian patent application 638707 in the name of Lumenyte International Corporation (hereafter referred to as Lumenyte) was advertised accepted on 8 July 1993. The grant of a patent was opposed by Light Transmission Cables Pty Limited (hereafter referred to as Light). I heard that opposition in December 1994, and issued a decision (hereafter referred to as the first decision) on 10 April 1995. I found that the specification did not comply with section 40 and the invention was prior published, and allowed Lumenyte time to propose amendments to overcome these deficiencies.
Lumenyte proposed amendments on 8 June 1995 and 1 September 1995. The amendments were advertised on 15 February 1996. On 15 May 1996 Light filed a notice of opposition to the amendments. The service of evidence was completed on 17 June 1997.
The opposition to the amendments was heard in Sydney on 6 March 1998. Lumenyte was represented by Mr G.Turner, patent attorney of Spruson & Ferguson, Sydney. Light was represented by Mr G.Davidson, patent attorney of Halford & Co, Sydney.
the grounds and particulars of opposition
The grounds specified in the Statement of Grounds and Particulars are as follows.
1. That, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
2. That, as a result of the amendment, the scope of the claim would not in substance fall within the scope of the specification before amendment.
3. That, as a result of the amendment, the specification would not comply with sub-section 40(2) or 40(3).
The particulars specified for these grounds are:
"the expression 'essentially impurity (/inhibitor) free to the extent that said pipe transmits colour truly' defines a level of purity beyond that disclosed in the specification as filed";
"In the case where an impurity or inhibitor is present in an amount insufficient to prevent true colour transmission or is a type of impurity or inhibitor which does not affect colour transmission, this product will not fall inside the scope of 'essentially inhibitor/impurity free' as claimed before amendment but may fall inside the scope of the qualified statement 'essentially impurity (/inhibitor) free to the extent that said pipe transmits colour truly' as amended"; and
"The scope of the term 'essentially impurity (/inhibitor) free to the extent that said pipe transmits colour truly' is not clear".
evidence
The evidence in support consists of a declaration by Geoffrey Robert Davidson.
The evidence in answer consists of declarations by John A Robbins and James Zarian.
The evidence in reply consists of declarations by Geoffrey Robert Davidson and Jill M Pietrini.
Three pieces of evidence caused me particular concern, and I will discuss them here.
a) The Davidson declaration in support and the declarations by Robbins, Zarian and Pietrini all refer (in part) to an action in the United States involving a patent related to the present application. This evidence consists of a copy of the reasons for judgment, statements of facts not included in the reasons, and explanations of US court practice. I was also informed at the hearing that this action is not yet complete. Clearly there is more to this US decision than is apparent from the judgment itself. As it is not apparent whether I have all relevant information about this US decision, it would not be safe to rely on this evidence. I will place no weight on this evidence in my decision.
b) The evidence of Mr Robbins included two samples of light pipes - the first transmits illumination from a light box truly, and the second does not. If I am to give weight to this evidence I must be satisfied that the first exhibit is within the scope of the claims and why the second exhibit is not within the scope of the claims. I put my concerns to Mr Turner on several occasions. Mr Turner could not tell me anything about the exhibits, and asserted that I must simply accept Mr Robbins' statement that the first exhibit is an example of the invention as claimed. This is clearly wrong. The construction of a claim is a question of law (for example, see Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-6), and is properly a matter for this tribunal. I do not know how Mr Robbins decided that the first exhibit is an example of the invention, as he provided no information about how the sample was produced. Mr Robbins declared that the second exhibit was prepared using feedstock which has not been purified as directed in the present specification. Again there is no detail about how the sample was prepared. I am not satisfied that I understand what this evidence is, and consequently I will place no weight on it.
c) Objection was taken to the Davidson declaration in reply on the basis that it contains evidence (in the form of five exhibits of overseas patent specifications) that was not properly in reply. I consider that this evidence is not necessary in order to reach my decision, so I do not need to determine its admissibility.
Details of the other evidence will be given where appropriate in this decision.
Decision
The relevant law
The present case is an opposition to the allowance of amendments. The right to oppose arises from section 104(4). By virtue of section 104(5), the criteria for determining whether the amendments are allowable are those laid down in section 102.
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 an obvious mistake made in, or in relation to, a complete specification.
Section 102(1) is not offended by an amendment that merely alters the descriptive part of the specification while leaving the scope of the claims unchanged (see Lumenyte International Corporation v Light Transmission Cables Pty Ltd (1995) AIPC 91-191, 31 IPR 520). However, where an amendment leads to a change in the emphasis of the invention claimed to something not originally disclosed, that will offend against section 102(1) (see Enichem Synthesis SpA v Ciba-Geigy AG (1996) AIPC 91-276).
b) The issues
The issues raised in this opposition are threefold:
i)as a result of the amendment, are the claims unclear insofar as they use the term "transmits colour truly";
ii)as a result of the amendment, do the claims fall within the scope of the claims before amendment with regard to purity defined by "transmits colour truly"; and
iii)as a result of the amendment, do the claims define matter not in substance disclosed in the specification as filed in that they define a level of purity not disclosed in the specification as filed.
c) The amendment
The independent claims 1, 2 and 7 are reproduced below, with the new text resulting from the amendment shown underlined, and the text deleted by the amendment shown as struck through.
1. An optical pipe comprising:
a transparent, flexible, elongated, cross-linked, essentially bubble-free, essentially void-free polymer which is the product of a free radical polymerisation of:essentially inhibitor-free methyl methacrylate monomeric units of about 20 to about 160 parts by volume; and
a cross-linking multifunctional monomer agent comprising units of about 1 to about 80 parts by volume; and
an initiator comprising of about 0.1 to 0.50 parts by volume;and
a tubular-shaped sheath surrounding the polymer and wherein said methyl methacrylate is inhibitor free to the extent that said pipe transmits colour truly.
2. A monofilament fiber optic pipe, the improvement comprising:
a substantially transparent, solid, flexible, essentially impurity free, thermoset polymer,
said polymer being the polymerisation reaction product of at least one monomer selected from the group consisting of esters, vinyls, or styrenes and using a cross-linking multifunctional monomer, and wherein
said polymer is essentially impurity free to the extent that said pipe transmits colour truly.7. A monofilament fiber optic pipe having improved light transmission properties comprising:
a substantially transparent, solid, flexible, essentially impurity free, essentially inhibitor free, essentially initiator free, essentially bubble free, essentially void free thermoset polymer,
said polymer being the polymerisation reaction product of at least one monomer selected from the group consisting of esters, vinyls or styrenes and using a cross-linking multi-functional monomer, and wherein
said polymer is essentially impurity free and essentially inhibitor free to the degree that said pipe transmits colour truly.
d) Clarity
Light submitted that as a result of the amendment the claims would be unclear because the qualifications "essentially impurity free" and "essentially inhibitor free" to the extent that the "pipe transmits colour truly" are not clear. This is a situation of defining the level of purity of the materials by reference to the properties of the pipe that is produced, sometimes known as claiming by result. Claiming by result is a well established practice in patent specifications (No Fume Ltd v Frank Pitchford & Co., Ltd (1935) 52 RPC 231) and is acceptable so long as the test is understandable without the exercise of inventive faculty. If the property of "transmits colour truly" is not understood, then the scope of the claim is not clear.
The specification as accepted (and as a result of amendment) does not contain a definition of "transmits colour truly". The only evidence on this point is in paragraph 3 of the Robbins declaration:
"In essence, to a skilled person in this industry, the phrase 'transmits colour truly' merely means to convey the colour accurately."
In essence, this means that the colour of the light leaving the pipe is the same as the colour of the light entering the pipe, which was referred to as a "white in - white out" test. The statement of grounds and particulars states that the test is subjective, and consequently different people may view the result differently. This is probably so, but it does not automatically make the claims unclear. The key question is whether the reader would understand the conditions under which the test of "white in - white out" is to be carried out. Evidence was provided that light transmission can be described very accurately (for instance, by absorption coefficients), but I do not accept that this means that a subjective test is unacceptable.
It is well accepted that claims are construed in context. The context of the present claims is that of a light pipe. While no evidence was presented on the point, I understand a light pipe to be a device that will transmit light for general illumination purposes (I use the term general illumination as meaning that the light that is applied to the device is the product of an artificial lighting device, and is not merely daylight). I think it is more likely than not that a skilled reader would understand that the claims define the purity of the reactants by the result that the product will transmit general illumination light on a "white in - white out" basis as assessed by eye.
Some doubt was cast over this conclusion by a comment made by Mr Turner. I put to Mr Turner that the first nine examples in the specification would no longer be examples of the invention because the specification says that they transmitted light with a yellow tint. Mr Turner replied that it was "a matter of degree". I do not agree with this submission. If an admitted "white in - yellow out" result can be regarded as transmitting colour truly then claim 1 is entirely unclear. I believe the correct position is that the claims are clear, but examples 1 to 9 are not examples of the invention according to the claims as a result of the amendment.
It has not been established that, as a result of the amendment, the scope of the claims would be unclear due to the use of the term "transmits colour truly".
e) Claiming beyond the claims as accepted
The statement of grounds and particulars includes the following statement which summarises Light's position on this matter.
"In the case where an impurity or inhibitor is present in an amount insufficient to prevent true colour transmission or is a type of impurity or inhibitor which does not affect colour transmission, this product will not fall inside the scope of 'essentially inhibitor/impurity free' as claimed before amendment but may fall inside the scope of the qualified statement 'essentially impurity (/inhibitor) free to the extent that said pipe transmits colour truly' as amended."
It is true that if there is an impurity of the type postulated then the claims as amended would include matter outside the scope of the claims as accepted. However there is no evidence that any such impurity exists.
The question under section 102(2)(a) is whether I am satisfied that the claims would not fall within the scope of the claims before amendment. I have no evidence that the claims would not fall within the scope of the present claims, only a speculation that they might not. Consequently I am not satisfied that the amended claims would not fall within the scope of the claims before amendment.
f) Claiming matter not in substance disclosed in the specification as filed
Light submitted that there was no basis for claiming purity levels based on transmitting colour truly. This is a surprisingly complex issue. In the first decision I discussed at length the invention as described in the specification. I concluded as follows:
"I consider that the description discloses improved light conduits having the following combination of features
(1)a cross-linked polymer, prepared in the following way:
(2)the starting materials are purified;
(3)a multifunctional monomer is used to produce the cross-linking;
(4)a chain transfer agent is used in the polymerisation;
(5)the polymer is formed by progressive polymerisation inside a sheath;
(6)the polymerisation is carried out over a short length of material at a time; and
(7)the unreacted monomer is kept cooled at -10°C to 20°C."
[page 12]
In relation to the purification of the starting materials I stated:
"I conclude from the description that the degree of purity required of the reagents is no more than conventional levels of purity. However, I conclude from LUMENYTE’s evidence that it is actually essential to employ higher levels of purity, which are not identified anywhere in the specification."
[page 9]
Mr Davidson submitted that the disclosure of the specification had been decided in the first decision, and it was not now open to the parties to contest this point. Mr Turner made no submissions on this point. I will quickly deal with the issue. Reference was made to the High Court decision in R v Smith; Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340, where the High Court unanimously found that a decision of a Deputy Commissioner in a patent opposition was final (even though it gave the patent applicant an opportunity to propose amendments) and there could be no rehearing. In the present case there was no suggestion of reconsidering the first decision. However, a question of issue estoppel arises. Issue estoppel was described by Dixon J in Blair v Curran (1939) 62 CLR 464 at 532:
"The distinction between res judicata and issue-estoppel is that in the first the very right or cause of action claimed or put in suit has in the former proceedings passed into judgment, so that it is merged and has no longer an independent existence, while in the second, for the purpose of some other claim or cause of action , a state of fact or law is alleged or denied the existence of which is a matter necessarily decided by the prior judgment, decree or order."
It is unclear whether issue estoppel applies to a tribunal (see Bogaards v McMahon (1988) 80 ALR 342). However, I am not satisfied that an estoppel would be appropriate in the facts of the present case. The issue in question is whether the description discloses purification of the starting reactants so that the product will transmit colour truly. That question did not arise in the first hearing. I will reconsider the facts that underpinned the first decision so as to decide the matter before me, but not to reconsider the first decision. I believe that this course is consistent with recent Federal Court statements (see Langley v Repatriation Commission (1993) 115 ALR 51 at 58).
The specification as accepted contains the following statements relating to purity and light transmission:
"The resulting product is a thermoset polymer light conduit, having good light transmission characteristics ..." [page 9, lines 15 to 16]
"The present invention provides a cross-linked, that is, a thermoset organic polymer light conduit, having good light transmitting characteristics. It is important that the finished product be substantially transparent and transmit color truly, which requires a very high degree of purity and the absence of voids or bubbles." [page 10, line 26 to page 11, line 4]
"To produce such a product, the ingredients must be purified to insure that: (1) no impurities in the feed stock retard the polymerisation reaction, and (2) there are no impurities, voids, or bubbles in the polymer mass after the reaction is completed, which would diminish the ability of the light conduit to transmit light." [page 11, lines 13 to 18]
"For the purpose of this invention an efficient initiator was so chosen that ... did not impart any color to the light conduit." [page 20, lines 5 to 11]
"Excessive amounts of initiator imparted a yellow tint to the polymeric light conduit." [page 22, lines 25 to 26]
The examples of the invention contain some comments on the light transmission properties of the light pipes:
"The resulting light conduit transmitted light fairly well. A very slight yellow tint was observed, probably due to the benzoil peroxide residues." [example 1]
"The yellow tint observed with conduits prepared using benzoil peroxide were not present in conduits employing IPP." [example 10]
Mr Turner considered that the general statements in the description provide an adequate basis for the new claims. Mr Davidson suggested to me that the general statements in the description were effectively throw away comments, and that there was no substantial disclosure of transmitting colour truly.
The question to be answered is whether there is fair basis for claims involving purity of the reactants defined by transmission of the light. It is clear that the description is concerned with producing light pipes with a "white in - white out" property. It is also apparent that in example 10 that end is achieved. However, in example 10 that end is achieved by replacing the benzoyl peroxide used in example 1 with diisopropyl peroxydicarbonate. No special purification of the reactants was carried out. This is reinforced by the statements at pages 20 and 22. The description seems to suggest that the yellow colour is the result of the choice of initiator rather than the purity of the other reactants. I cannot find a clear disclosure of colour resulting from impurity in the starting reactants, and that colour can be removed by purification of the starting reactants.
I am satisfied that there is insufficient basis for claiming purity of the reactants defined by the transmission of light. As a result of the amendment the specification would claim matter not in substance disclosed in the specification as filed. Consequently, the amendment is not allowable under section 102(1).
g) Conclusion
The amendment is not allowable under section 102(1) as the specification would claim matter not in substance disclosed in the specification as filed.
Consequently I refuse to allow the amendments.
h) Further opportunity to amend
Mr Turner submitted that if Lumenyte were unsuccessful in this opposition they should have further time to propose amendments to overcome the matters raised in my first decision. Mr Davidson submitted that if I gave a further opportunity to amend, that I should attempt to ensure that the process was not allowed to run on in an open ended way. Mr Turner stated that his client would not unnecessarily delay any further amendments.
If I do not allow a further opportunity to amend that will amount to refusal of the application. The parties have not had a proper opportunity to make submissions on refusal, so I do not consider it appropriate to refuse at this time. However, I am conscious of the fact that this matter has been extremely protracted. I will allow 28 days from the date of this decision in which to propose further amendments. I do not believe that I have the power to set a date for finalising amendments.
Costs
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Company v W.R. Grace & Co.-Conn (1994) AIPC 91-063, 30 IPR 292).
In the present case the opposition was successful on the ground that the specification would claim matter not in substance disclosed in the specification as filed. This is a major ground, and in my opinion it is appropriate for costs to be awarded against the applicant.
I award costs in accordance with Schedule 8 against Lumenyte International Corporation.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Patent attorneys for the opponent : Halford & Co, Sydney
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