Lumenyte International Corporation v Light Transmission Cables Pty Ltd

[2001] APO 1

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 697468 in the name of LUMENYTE  INTERNATIONAL  CORPORATION

Title:          Composition and Apparatus for Making a High Temperature Plastic Light Conduit

Action: Opposition under sec. 59 of the Patents Act 1990 by LIGHT  TRANSMISSION  CABLES  PTY.  LIMITED

Decision:          Issued            .

Abstract

Opposition upheld.  Ground of lack of inventive step established.  Grounds of lack of novelty, non-compliance with section 40 and not a manner of manufacture not established.

The application being opposed was the last in a series of divisional applications, with ancestry back to a great great grandparent. Both the great great grandparent and the great grandparent applications had been successfully opposed by the present opponent which, according to the applicant, was now in liquidation. The great grandparent and the present application were essentially directed to the same subject matter, but with the present claims being effectively cast more widely than those of the great grandparent. The grounds of opposition under which the great grandparent was decided were those available under section 59 the Patents Act 1952, whereas the grounds available under section 59 of the Patents Act 1990 applied to the present application. Although the opponent had served a statement of grounds and particulars, no evidence had been filed in respect of the present invention. However, prior to the hearing regulation 5.11 was invoked in respect of the evidence served in the earlier oppositions.

As a preliminary point it was considered appropriate that any issues determined by the earlier oppositions and relevant to the present opposition should carry over to the present opposition.

Although various section 40 matters in particulars of the present opposition were founded upon the findings in the decisions in the earlier oppositions, sufficient amendment had been made to the description of the present specification to avoid any section 40 shortcomings.

The invention claimed in grandparent application 638707 had been found to be not prior published because none of the prior art in the evidence disclosed certain features.  Because the claims defining the present invention had these two features as integers, the present invention could not be considered to lack novelty.
The invention was found to lack an inventive step when information contained in each of two prior art documents in the evidence of the earlier oppositions was considered together with the common general knowledge in the art, as determined in the earlier oppositions. The possibility of so considering, for inventive step (obviousness) purposes, information contained in documents which were not established as being common general knowledge had not existed in the case of the earlier oppositions as they had been determined under the provisions of the Patents Act 1952.

Application refused.

Costs awarded against the applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 697468 by Lumenyte International Corporation, and an opposition thereto by Light Transmission Cables Pty. Limited under section 59 of the Patents Act 1990.

BACKGROUND

Patent application 697468 was filed on 18 March 1998 by Lumenyte International Corporation as application 59362/98.  It was filed as a divisional application of application 50357/96 (now Patent No. 693009).  This application is in turn a divisional of application 35293/93 (now lapsed), making the latter a grandparent of the present application.  Application 35293/93 is a divisional of application 53667/90, which was accepted and given the six-figure number 638707, but was opposed (see Lumenyte International Corporation v Light Transmission Cables Pty Ltd [1995] APO 22 (10/4/95)) and eventually refused. Application 638707 is therefore the great grandparent of the present application. Application 53667/90 is a divisional of application 592654 (filed as application 75325/87). Application 75325/87 is the originating application of this "family" and is the great great grandparent of the present application. It was also opposed (see Lumenyte International Corporation v Light Transmission Cables Pty Ltd 31 IPR 527, (1995) AIPC 91-192, [1995] APO 21 (10/4/95)), but upon being amended a patent was sealed on the application. It claims priority from United States application number 883350 filed on 8 July 1986. Petty patent application 74209/91 was also filed as a divisional of application 592654, but lapsed.

Application 59362/98 was advertised accepted on 8 October 1998 and given the six-figure number 697468.

Immediately upon acceptance of the present application the attorney for the opponent of the great and great great grandparent cases wrote a letter to the Commissioner of Patents, querying why application 59362/98 had been accepted.  The attorney noted that the text of the specification of application 697468 is "essentially identical" to that of application 638707, and questioned why 697468 had been accepted in the face of the finding of invalidity in the opposition to application 638707.

A notice of opposition to application 697468 was filed on 8 January 1999 by Light Transmission Cables Pty. Limited, the same entity who had opposed applications 592654 and 638707.  A statement of grounds and particulars was also served in the time allotted under the Patent Regulations.  However no evidence has been filed in relation to this opposition.  At the hearing which was convened to hear this opposition the applicant claimed that a liquidator has been appointed for the opponent company, which might explain why the opponent has not pressed the opposition.

The statement of grounds and particulars lists as grounds of opposition the non-compliance with the following provisions of the Patents Act 1990: paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b)(i) (novelty), paragraph 18(1)(b)(ii) (inventive step) and section 40. Most of the prior art documents cited in the particulars had also been in the evidence of the earlier oppositions, and many of the section 40 particulars rested upon findings made in the earlier opposition to application 638707.

THE HEARING

The matter was set down for hearing on 15 February 2000 in Canberra.  In light of the unusual circumstances appertaining in this matter, on 2 February 2000 I advised the applicant's patent attorney, Mr Greg Turner, in writing that I was invoking regulation 5.11 to inform myself of all facts contained in the evidence of the earlier oppositions.  The hearing duly got under way, with Mr Greg Turner, patent attorney of the firm Spruson & Ferguson, Sydney, representing the applicant.  The opponent did not participate in the hearing.

At the hearing, after commencing by making some submissions on the status of the opponent, Mr Turner then expressed concern about the lateness of the notice that had been given that regulation 5.11 was to be invoked.  He drew attention to the difficult situation in which it placed the applicant of not knowing for certain the case it had to answer, with a resultant lack of opportunity to file evidence in answer to that case.  Mr Turner submitted that an appropriate course of action would be for the Patent Office to review the material it proposed to rely upon and then to raise any objections it may have by way of a bar to sealing action.  Mr Turner cited Coal Corporation of Victoria v David William Hinkley and Brian Alan Nugent [1993] APO 56 (17 September 1993).

There is no doubt that for the hearing process to have taken its normal course, the applicant would have been denied procedural fairness, and to that extent I agree with Mr Turner.  However, I do not consider that a bar to sealing action is appropriate in the present circumstances.  Although I am not in any case strictly bound to follow the approach taken by the delegate of the Commissioner in Coal Corporation of Victoria v Hinkley,I note that the only evidence of any kind involved in that matter was evidence filed under section 57 of the Patents Act 1952, and, unlike the present circumstances, there had been no opposition action in respect of any related case. In contrast, present application is effectively a continuation of a previous application (638707), which had been subjected to an opposition upon which a determination had been made. In light of this I consider that the present application should continue to be subjected to the full rigour of an opposition determination under section 59 of the Patents Act rather than be relegated to a bar to sealing consideration.

Accordingly I proposed to Mr Turner that I adjourn the hearing and appoint an examiner of patents as an independent expert to report any objections which "are believed to constitute issues in relation to which a significant probability exists that the opposition would be upheld".  There is ample precedent for utilizing an examiner in this way in ex parte matters - for instance in Anthony James Magee v Jonathon Edward Farrell 7 IPR 288, (1986) AIPC 90-269 I had this role. I undertook to Mr Turner that the report by the examiner would be provided within one month, whereupon the applicant would have three months in which to file evidence in rebuttal to the objections in the examiner's report. Upon the applicant filing its evidence in rebuttal or after the passing of three months the hearing was to be reconvened at the first available opportunity.

This proposal was generally acceptable to Mr Turner, but he asked to be able to put the case for the applicant on the substantive issues then and there before the hearing was adjourned.  I  agreed to this, and so Mr Turner proceeded to make submissions on the validity of the application.  Following this I adjourned the hearing.

The report by a patent examiner, Dr Michael O'Rourke, was duly forwarded to the applicant.  That report considered that the grounds of inventive step, manner of manufacture and, as an alternative to inventive step, fair basis met the criterion that there was a significant probability that the opposition might be upheld on those grounds, and supported these conclusions with detailed reasons.  The applicant opted not to avail itself of the opportunity it had been allowed to file evidence, and the hearing was set down for resumption on 5 September 2000.  In forwarding Dr O'Rourke's report I invoked regulation 5.11 a further time, this time in respect of two reference books which were available in the Australian Patent Office library and which had been cited in Dr O' Rourke's report.

THE SPECIFICATION

The invention is entitled "Composition and Apparatus for Making a High Temperature Plastic Light Conduit".  I gather from the specification that the expression "light conduit" refers to a class of conduit-like items of manufacture of which optical fibre for data transmission purposes is probably the best known member.  As I understand it (from both the specification and also submissions made by Mr Turner at the hearing), the invention is not so much concerned with light conduit on the scale of optical fibre for data transmission purposes, but rather with conduit of a cross section several orders of magnitude greater.  (I say this despite the fact that the claims are directed to a "cylindrical fiber optic conduit", which is just one of a number of inconsistent and contradictory aspects of this specification.)  Light conduit of these dimensions finds use for such purposes as general illumination, rather than, as in the case with optical fibre, data transmission.

The specification sets out the deficiencies in the prior art, principal among which appears to be the high temperature properties of the prior art materials ("high temperature" in this case being 120°C and higher).  Other deficiencies are said to be voids, bubbles and trapped impurities.  According to the specification the prior art resulting in these deficient properties "all involves thermoplastic polymers, which are linear chain-linked polymers…….or branched with same morphology as linear polymers".  The specification goes on to talk about the desirable properties of cross-linked polymers, which, in contrast to thermoplastic linear chain-linked polymers, are thermosetting.  The specification then states:

"Therefore, a significant need exists for a light conduit that is lightweight, flexible, will not deteriorate with age, even though exposed to heat in excess of about 120°C to about 350°C at the tip that is exposed to light and about 250°C throughout its length, has good resistance to the surrounding environment, has good light transmission characteristics, does not shrink substantially, does not melt, oxidize or otherwise deteriorate when exposed to high temperatures, remains flexible, and is relatively easy and inexpensive to produce."

The object of the invention is then given to be

"to provide a reactor which addresses the above discussed disadvantages."

Following a consistory statement corresponding to Claim 1 (which I will set down presently), the specification then goes on to describe the best method of performing the invention, commencing by stating:

"Although the present invention, that is a reactor, will now be described with reference to specific embodiments, such embodiments are described by way of example only……….

Use of the following described reactor can provide a cross-linked, that is, a thermoset organic polymer light conduit having good light transmitting characeristics……….

Preferably ingredients used in the reactor should be chosen so that when polymerized, they produce a product having a high refractive index and good light transmission characteristics."

There are then described various starting materials or feedstocks for use in the reactor.  Most of these appear to be described as prior art.  At one point, however, in discussing desirable feedstocks the specification states that:

"It has been found, however, according to the present invention, that chain transfer agents can provide significant benefits to cross-linked polymer, or copolymer production processes."

Thereafter, however, the specification returns to the theme of the reactor being the invention, stating:

"Referring to Figure 1, there is shown a reactor embodying the present invention, and to use the reactive mixture previously described or the reactive mixtures according to the prior art",

However, I do note there is some slight suggestion in this passage that there may be something inventive in a reactive mixture that has been described.

The description then goes on to describe in considerable detail a reactor apparatus for making a light conduit, and then gives examples of various actual light conduits produced by the described reactor and the starting mixtures, methods and reaction parameters employed in making those light conduits.

The specification concludes with 16 claims, with Claim 1 being the only independent claim.  It reads as follows:

“1.  A cylindrical fiber optic conduit comprising:

a polymer core surrounded by a cladding;
the core comprising a solid, flexible, essentially bubble free essentially void free, thermoset, organic polymer."

The appended claims variously specify certain parametric values the fibre optic conduit defined by claim 1 may have, organic polymers of which the fibre optic conduit may be composed and starting materials for manufacturing the fibre optic conduit.  I will set out the appended claims in full later in the decision when considering inventive step.

Thus, despite what is conveyed by the description (disregarding the consistory statement), the invention which is the subject matter of the present application is neither a reactor nor particular feedstock materials which may be used in that reactor, but rather an item of manufacture (a cylindrical fibre optic conduit) which may, or may not, have been produced by the described reactor and which may, or may not, have been produced from the described feedstock materials.
What has led to this inconsistency between the invention as described and as claimed is fairly apparent - being the combined effect of historical circumstance and defective drafting.  The parent of this application was directed to a reactor.  In dividing out the present application the parent specification was used as the basis for the offspring specification but incomplete modification was made to the parent specification.

As I have already noted, only two members of this family of applications have proceeded to grant.  They are Patent No.s 592654 and 693009.  Both these patents are in respect of a reactor.  Patent No. 693009 is divided out from application 35293/93, which lapsed after an examiner's report had issued.  That application had been in respect of both a reactor and a "composition of matter" which effectively is the material which is defined in present Claim 1 as being the material of which the core of the fibre optic conduit is comprised.  Application 35293/93 is divided out from application 638707.  That application was directed to the fibre optic material invention, and was successfully opposed.  And the progenitor of all these applications was application 75325/87, which was directed to the reactor and was also successfully opposed, although it was ultimately accepted after having been amended.  There is thus something of a history with this family of applications of unconsummated attempts to obtain patent protection for a fibre optic conduit per se composed of certain specified materials, culminating in the present application.

APPLICATION  638707

Findings have already been made in opposition proceedings in respect of antecedent applications 592654 and 638707 which, in the absence of any additional evidence, I believe should carry over to the present opposition where they remain relevant.  In particular, issues of common general knowledge determined in the earlier oppositions should, in my view, be carried over to the present application.  To do otherwise would appear to be tantamount to re-hearing aspects of the earlier oppositions, a procedure which the High Court in Ex parte Mole Engineering Pty. Ltd. (1981) 35 ALR 119 held to be not permissible.

In discussing the findings of the previous oppositions, I shall focus on application 638707, since its claims correspond closely to those of the present application, whereas those of application 592654 do not.

I should also note at this point that as application 638707 was lodged prior to, but was advertised accepted after, the commencement of the Patents Act 1990, the opposition is in substance determined, in accordance with the provisions of section 234(3) of the 1990 Act, under Part V of the Patents Act 1952 but with the procedures of the opposition governed by Chapter 5 of the Patents Regulations 1991. This is in contrast to the present application, which was filed after the commencement of the Patents Act 1990 and thus is determined purely under the provisions of the 1990 Act. These circumstances assume considerable importance in the outcome of this opposition.

Application 638707 has six independent claims, which are as follows:

"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 polymerization of:

essentially inhibitor-free methyl methacrylate monomeric units of about 20 to about 160 parts by volume; and
cross-linking agent 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."

"2.  A monofilament fiber optic pipe, the improvement comprising:

a substantially transparent, solid, flexible, essentially impurity free, thermoset polymer,
said polymer being the polymerization reaction product of at least one monomer selected from the group consisting of esters, vinyls, or styrenes."

"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."

"12.A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe having a length and a diameter and including a thermosetting polymer being the polymerisation reaction product of at least one monomer selected from the group consisting of esters, vinyls, or styrenes, the improvement comprising:

a uniform composition of polymer throughout the length and diameter of said pipe."

"13.A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe having a length and a diameter and including a thermosetting polymer being the polymerization reaction product of at least one monomer selected from the group consisting of esters, vinyls, or styrenes, the improvement comprising:

a uniform of[sic] index of refraction throughout the length and diameter of said pipe."

"17.A substantially tubular, essentially impurity free, flexible, monofilament fiber optic pipe having a length and a diameter, comprising a thermosetting polymer being the polymerization reaction product of a monomer mix including CR-39."

CR-39 is defined in the specification as diethylene glycol bis( allylcarbonate) (see page 19).

Claim 1 in particular of the claims of 638707 appears to fall within the scope of present Claim 1.  There are some variations to the wording, but these appear to be only superficial.  The expression "optical pipe" in 638707 is substituted by "cylindrical fiber optic conduit" in present Claim 1, but the skilled addressee would, I think, in the context of the present specification, regard these expressions as interchangeable.  While it is true that, as a matter of linguistics, a pipe is not necessarily cylindrical, it is nonetheless the case that no other conformation for the pipe is envisaged by 638707.  The same applies to the expressions "sheath" and "cladding", and indeed this is indicated by the present specification itself when it states in the description:

"To improve the resulting light conduit further, it is desirable to use a sheath or cladding material whose interior is very highly polished, clean and free of scratches."

Similarly, the fact that the polymer is the core of the optical pipe and that it is solid (both of which features are explicit in present Claim 1) would be regarded as being implicit in Claim 1 of 638707 by the skilled addressee.

Claim 7 of 638707 does not quite fall within the scope of present Claim 1, as it lacks the sheath or cladding.  However the use of cladding on optical fibres/conduits is standard practice in the art, so for purposes of distinction it is inconsequential.

Findings made in the decision on the opposition to application 638707 which it might be considered are potentially relevant to the present matter due to the relationship between these are:

·    The expressions "essentially inhibitor free", "essentially impurity free" and "essentially initiator free" are not clear in their use of the term "essentially" because they relate to matters that are central to the invention.

·    The expressions "essentially bubble free", "essentially void free", "substantially transparent" and "substantially tubular" do not cause any ambiguity because they relate to matters which are not central to the invention.

·    Claims 1-26 of 638707 are not fairly based on the matter described in the specification, because the following preparative features are described as essential features of the invention but are not defined by the claims:

(i)    a multifunctional monomer is used to produce the cross-linking;

(ii)   a chain transfer agent is used in the polymerisation;

(iii)  the polymer is formed by progressive polymerisation inside a sheath;
(iv)  the polymerisation is carried out over a short length of material at a time; and

(v)   the unreacted monomer is kept cooled at -10°C to 20°C.

·    The specification does not fully describe the invention because it gives the impression that the invention resides in the use of a cross-linked polymer, whereas it seems that the invention resides more in the method of polymerisation.  The use of cross-linked polymers for light conduits had been disclosed in a prior art patent (US Patent No. 3,641,322 to Reick et al) in which the present applicant had had exclusive rights prior to the priority date of the present application.

·    The specification also does not fully describe the invention or its best method of performance because it is silent on the essentiality of the chemical feedstocks for the polymers of the invention to have a purity greater than conventional purity (according to evidence provided by the applicant), as well as on the degree of purity required, how to achieve it and how to recognize it.

·    Reick (supra) and European patent application 171294 to Sumitomo do not prior-publish Claim 1 of application 638707, since both Reick and Sumitomo do not explicitly refer to the properties of "essentially bubble free" and "essentially void free".  While it is possible that a skilled reader of Reick and Sumitomo would have read these features into the disclosure, there is no evidence that the skilled addressee of the specification would have so read the disclosure.

·    It was standard practice to produce light conduits that were solid, cylindrical, transparent, flexible, elongated, bubble free, void free, impurity free (where impurity includes from any source) and encased in a tubular sheath.  It would have been obvious to retain this combination of features.  The key question with respect to each of the independent claims relates to the nature of the core material: would it have been a matter of routine to select the specific cross-linked polymers of the independent claims to solve the problem of providing an improved polymeric light conduit?  There is no evidence to suggest that cross-linked polymers of methyl methacrylate, esters, vinyls or styrenes, or CR-39 would have been considered as likely to solve the problem.  Acrylic polymers might have been suggested for their clarity, but that would only solve a part of the problem.  The best that might be said is that acrylic polymers might have been included as part of a routine investigation of the problem.

SUBMISSIONS

Mr Turner's first submission at the hearing concerned the status of the opponent.  According to Mr Turner, the opponent is a company which is being wound up and for which a liquidator has been appointed, and therefore the opponent has no right to take any action in these proceedings.  It was clear from what Mr Turner said that by "these proceedings", he meant the hearing proceedings.  As it eventuated, the opponent did not participate in the hearing, which I think satisfactorily disposes of this.  If by "these proceedings" Mr Turner had been referring to the appropriateness of the opposition action to proceed, then this would depend on the opponent's status at the time the opposition was filed.  If the opponent was not in the hands of a liquidator when the opposition was filed, then the subsequent appointment of a liquidator does not dispose of the proceedings and the action continues as it otherwise would.  I have no evidence before me to suggest that the opponent was in the hands of a liquidator when the opposition was filed.

Following this, Mr Turner presented his submissions, which I have outlined earlier, on the manner in which this matter should proceed in light of my invoking of regulation 5.11.  He then turned to the substantive issues of the opposition.  The thrust of his submissions in relation to the substantive opposition was that the evidence served in respect of the opposition to application 638707 was either not available for consideration in, or not applicable to, the present opposition and that findings in the decision on the opposition to application 638707 could not be applied to the present matter. As I have already indicated, generally I am inclined to disagree with both of those propositions.

DECISION

Section 40

The statement of grounds and particulars asserts non-compliance of the specification with section 40 in a number of aspects.  Most of these draw on the findings in the opposition to application 638707 and apply them to the case at hand.  However, many of the defects which were found to exist in application 638707 appear to arise from a quite extensive list of essential features that, in the decision, the invention in that case was construed as having.  An important factor in arriving at that list appears to have been the enumeration of those features in a statement of the invention (consistory statement) in the description part of the specification.  However the applicant has made a number of subtle changes to the present specification (including to the consistory statement) which render the interpretation applied to 638707 no longer applicable to the present application.  As I have already indicated, were the consistory statement to be absent from the description one might easily conclude that the described invention is something quite different to what it is that is claimed.  However I am prepared to give the applicant the benefit of the doubt and conclude that, firstly, when the consistory statement is taken into account there is a basal level of support in the specification for what is claimed as the invention and, secondly, the specification provides a sufficient description of the invention.  Certainly there is a full disclosure of all features which are claimed, so that in that respect the claims are fairly based.  It is only where the essential nature of the invention is concerned that the specification is susceptible of criticism.

In particular, where the decision on application 638707 found that the invention resides more in the method of polymerisation rather than in the use of a cross-linked polymer, I do not consider that this can be said of the present application.  The invention is a fibre optic conduit made of a thermoset polymer having certain physical characteristics.  Thus I do not consider that the finding on application 638707 that it does not fully describe the invention or its best method of performance because it is silent on the essentiality of the chemical feedstocks for the polymers of the invention to have a purity greater than conventional purity is transferable to the present context.

In the decision on application 638707, the delegate of the Commissioner differentiated between instances of use of the words "essentially" and "substantially" from the point of view of clarity, depending on whether they related to matters which were or were not central to the invention.  He thus found that the expressions "essentially bubble free" and "essentially void free" were clear on that basis, as they were not central to the invention.  I am not entirely sure what the distinction is between central and non-central features, but I am inclined to agree with the assertion made by the opponent in its statement of grounds and particulars that the features of "essentially bubble free" and "essentially void free" would have to be considered to be "central" to the present invention.

However, if there has been a shift in the focus of the invention in this respect, it would seem to follow that that would, at the least, dilute the relevance of any findings made in the decision on 638707 in relation to this.  In my view in the present specification the expressions "essentially bubble free" and "essentially void free" occurring in the claims are not lacking in clarity.  The impact of the expression "essentially" is to be understood in these contexts as requiring negligible attenuating effect from bubbles or voids in fibre optic conduit.

As a final point on section 40, particulars for this ground assert that claims 2 and 13 are not fairly based because of their reference to permitting "transmission of light colour truly for a distance of at least 20 feet".  At the hearing, Mr Turner drew my attention to references in the specification to conduit lengths being 20 feet, and it is a clear objective of the invention to produce optical fibre conduit which is neither cloudy nor discoloured.  Accordingly I am satisfied that Claims 2 and 13 are fairly based in this respect.

I find that that the present application satisfies all the requirements of section 40 of the Patents Act.

Priority date

As a particular to the ground of lack of novelty, it is alleged that the present application is not entitled to divisional priority from parent application 50357/96.  I cannot agree.  The materials of the optical fibre conduit disclosed in each application are the same, and in 50357/96 the material is described as bubble free and void free.  Thus the invention has clearly been disclosed in the parent specification (as required by section 39), although it is not the described invention, which is not surprising given its appearance in a divisional application.

The opponent also tried to link the findings in the oppositions to applications 638707 and 592654 of lack of fair basis to a lack of priority of the present application.  This line of reasoning is also flawed, since the finding of lack of fair basis was predicated upon a failure to define the invention as described and there was no suggestion that there had not been a disclosure of an optical fibre conduit having the features as claimed.

I find that the priority date of this application is the priority date of the great great grandparent application, namely, 8 July 1986.

Novelty

As a consequence of my finding above in relation to the priority date of the present application, the only particulars still in play for this ground are Reick (supra), Sumitomo (supra) and two alleged instances of prior use.  Each of these items of prior art were considered in the decision on the opposition to application 638707, and were found to lack the features of the fibre optic conduit being bubble free and void free.  I can see no reason why that finding should not be maintained in respect of the present opposition.

I find that the present application does not lack novelty over the prior art in the evidence in this matter.

Inventive Step

According to subsections 7(2) and 7(3) of the Patents Act 1990, a claimed invention will lack an inventive step if it is obvious in the light of:

(a)  common general knowledge; or

(b)  common general knowledge considered together with information in a single document or through doing a single act, provided that the document or act could reasonably be expected to have been ascertained, understood and regarded as relevant to work in the relevant art in the patent area by the person skilled in the art.

A widely accepted definition of common general knowledge is that provided by Aickin J in Minnesota Mining and Manufacturing Company and Another v Beiersdorf (Australia) Limited 144 CLR 253 at 292:

"The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade.  It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge."

The state of the common general knowledge is a question of fact which must, in general, be determined on the basis of evidence from persons whose background enables them to testify authoritatively as to the common general knowledge in the particular art.  Indirect evidence such as widespread publication or admissions made in patent specifications may also serve to indicate something is common general knowledge.

The state of the common general knowledge, and in particular whether it was common general knowledge to make fibre optic conduits bubble free and void free, is pivotal to whether the present invention lacks an inventive step.  This is because both Reick (supra), Sumitomo (supra) disclose every feature of present Claim 1 except for the bubble free and void free features, as was found in the opposition to application 638707.

The evidence that these two features were common general knowledge seems compelling.  I note the following:

·    In the present specification, page 3 lines 8 to 17, known problems caused by bubbles and voids in the prior art are discussed.

·    In the statutory declaration by Robert Paul Burford dated 10 May 1991:

(i)   in paragraph 5.5.1, it is stated that "Factors which adversely affect the visual clarity of a polymer include … bubbles, voids …";

(ii)  in paragraph 6 headed "Acrylic Polymers", a selection of publications representing the common general knowledge within the art is given, including in particular paragraph 6.9 which describes in a discussion of "commercial practice" stripping of dissolved gases which would form bubbles.  Paragraph 6.14 further describes methods of commonly employed processes for polymerisation of acrylic monomers", and in this context, paragraph 6.15 once more exemplifies removal of dissolved gases, and prevention of bubble and void formation is again discussed in this context in paragraph 6.17 and 6.18; and

(iii) in paragraph 7.3, reference is made to US 2136423 ( to Fields et al) which discloses a polymerisation process for forming "elongated shapes such as rods, tubes, sheets and the like", in which column 5 lines 9 to 22 refers explicitly to prevention of formation of bubbles.

·    In the statutory declaration by Robert Paul Burford dated 30 March 1992:

(i)   In paragraph 3, the adverse effects of bubbles and voids is stated to have been "well known in the field of polymer processing in Australia for many years prior to 1986":

(ii)  Paragraph 8 describes the adverse effects of bubbles and voids as "self-evident," and refers to two patents relating to methods of avoiding bubbles and voids: and

(iii) Paragraph 9 refers to the patents referenced in the present specification, and their references to, inter alia, freedom from bubbles.

·    The prior art cited in the specification includes the following references to bubble-free conduits for thermoplastic optical pipes:

(i)   In US 4505543, column 7 line 11 and column 9 lines 28 and 29, the preform used as the core is described as being "free of air bubbles";

(ii)  In US 3993834, column 10 lines 6 to 8, reference is made to avoiding amongst other things gases such as air, which is a cause of bubbles and voids.

(iii) In US 3930103, column 1 line 43, bubbles are exemplified.

·    The following text books on fibre optics include discussions on fibre imperfections:

(i)   CHARLES K. KAO, "Optical Fiber Systems", published 1982 by McGraw-Hill, Inc (USA), available in the Patent Office library 7 March 1984.  On page 37 under the heading "Fiber Imperfections", organic polymer cores are discussed, and void inclusions are specified on page 38.  Particulate inclusions and voids are further discussed on pages 11 and 32; and

(ii)  JAMES C. DALY, "Fiber Optics", published 1984 by CRC Press (USA), available in the Patent Office library 19 March 1985.  On page 23, adverse effects of bubbles are discussed.

The unavoidable conclusion seems to be that the adverse effects of bubbles and voids in light conduits was well known within the art before the priority date of the claims, as was the need to delete them in order to maximise light transmission through an optical conduit.  It is clear from the evidence that methods for doing so were in existence and were being used in a commercial context.  The delegate of the Commissioner in the opposition to application 638707 seemingly went further than saying it was common general knowledge - he concluded that it was "standard practice" to produce light conduits free from bubbles and voids.  Indeed, the science of light transmission through the particular light transmitting medium of glass goes back to ancient times, and it seems hard to imagine that the deleterious effect of bubbles and voids on light transmission through optically transparent media such as light conduits would not have been part of the basic knowledge of the skilled workman in the field before the priority date of the present claims.

At the hearing, Mr Turner submitted that, even if I found that the elimination of bubbles and voids from fibre optic cables was common general knowledge, I still had no evidence from those in the field to say that the invention defined by Claim 1 would be obvious in the light of Reick and Sumitomo when read together with this common general knowledge, and thus I had nothing upon which to base a finding of lack of inventive step.  It is true that I do not have the evidence to which Mr Turner referred, and there is some support among the authorities for what he says.  For example, as the Vice Chancellor in UK Court of Appeal in Mölnlycke AB v Procter & Gamble Ltd (1994) RPC 49 stated:

"The Act requires the court to make a finding of fact as to what was, at the priority date, included in the state of the art and then to find again as a fact whether, having regard to that state of the art, the alleged inventive step would be obvious to a person skilled in the art.  In applying the statutory criterion and making these findings the court will almost invariably require the assistance of expert evidence.  The primary evidence will be that of properly qualified expert witnesses who will say whether or not in their opinions the relevant step would have been obvious to a skilled man having regard to the state of the art."

However, I note the qualification of "almost invariably" used in this passage.  There are clearly going to be situations which either are that open and shut or the delegate of the Commissioner is able to so apply his or her own background knowledge so that it is possible to reasonably conclude that the invention is lacking an inventive step.  In my opinion this is one of those cases, on both counts.  A basic knowledge of optics is all that is need in order to understand the implications of bubbles and voids to light transmission down an fibre optic conduit.  What the inventor of the present invention has done is to take a prior art fibre optic conduit and add to that the well known, almost self evident, desiderata that the fibre optic cable be essentially bubble free and void free.  In my view to do so has required no use of the inventive faculty, and thus Claim 1 is lacking an inventive step.

Claims 2 and 13 read as follows:

2.  The fiber optic of Claim 1 wherein the core is sufficiently transparent to permit transmission of light color truly for a distance of at least 20 feet.

13.  The fiber optic of Claim 1 wherein the core is sufficiently microstructure free to permit transmission of light color truly for a length of at least 20 feet.

The subject matter of these claims appears to be merely an outcome of the fibre optic conduit not having any bubbles or voids.  It does not appear to amount to an inventive step.

Claims 3 and 5 read:

3.  The fiber optic of Claim 1 wherein the core is essentially impurity free.

5.  The fiber optic of Claim 1 wherein the core is essentially initiator free.

Both these features are, according to the decisions on the oppositions to application 638707 and 592654, standard practice and do not constitute an inventive step.

Claim 4 reads:

4.  The fiber optic of Claim 1 wherein the core is the polymerization reaction product of at least one monomer selected from the group consisting of esters, vinyl esters, styrenes and hydrocarbon derivatives of styrene.

Reick discloses the use of methacrylate esters, for example in Claim 2, and thus Claim 4 lacks an inventive step in light of Reick.

Claims 6, 7 and 12 read as follows:

6.  The fiber optic of Claim 1, wherein the core is of uniform composition throughout its length and diameter.

7.  The fiber optic of Claim 1 wherein the core is of uniform index of refraction throughout its length  and diameter.

12.  The fiber optic of Claim 1 wherein the cladding has a clean, scratch free interior.

These appear to be obvious expedients to enhance the optical characteristics of the fibre optic conduit, and to be devoid of any inventive step.

Claims 8 and 9 read:

8.  The fiber optic of Claim 1 wherein the core is the polymerization reaction product of a monomer mix including diethylene glycol bis(allyl carbonate).

9.  The fiber optic of Claim 1 wherein the core comprises a poly (alkyl methacrylate) monofilament.

The subject matter of both these claims is disclosed in Sumitomo (at pages 4 and 5, respectively), and accordingly both claims lack an inventive step over Sumitomo.

Claims 10 and 14 read as follows:

10.  The fiber optic of Claim 1 wherein the core has a diameter of about 1/16^th inch to about 1 inch.

14.  The fiber optic of Claim 1 wherein the core has an optical refractive index of at least 1.356

These appear to be arbitrary design features involving no inventive step.  Apropos Claim 14, Reick uses poly methyl methacrylate with a refractive index of 1.49.

Claim 11 reads:

11.  The fiber optic of Claim 1 wherein the cladding has a refractive index less than the refractive index of the core.

This is standard practice and is disclosed in Sumitomo at page 2.  It is therefore not inventive.

Claim 15 reads:

15.  The fiber optic of Claim 1 wherein the core is the free radical reaction product of mixing, heating and removing excess heat of reaction from a a progressive polymerization of:

a.  at least one monomer comprising from about 20 to 160 parts by volume; and

b.  a cross-linking agent comprising from about 1 to about 80 parts by volume.

The decision on the opposition to application 638707 found that Reick disclosed the subject matter of present Claim 15.  Accordingly, Claim 15 is lacking an inventive step.

Claim 16 reads:

16.  The fiber optic of Claim 15 wherein the reaction product results from the further mixing of a chain transfer agent comprising of from about 0.5 parts to 5 parts by volume.

Interestingly, this feature has changed from the corresponding feature of "about 0.1 to about 0.5 parts by volume" in Claim 1 of application 638707, which the decision on the opposition to that application found was disclosed by Reick.  The numerical values defined in Claim 16 are not explicitly mentioned in the specification of application 638707, or in the body of the present specification.  At the very most these values can be a non-inventive selection, and thus Claim 16 is lacking an inventive step.
Hence I find that Claims 1 to 16 lack an inventive step in light of US Patent No. 3641332 and European patent application 171294 when each is considered in light of the common general knowledge before the priority date of the claims.

Manner of Manufacture

In his report Dr O'Rourke put forward the possibility that the invention could involve the mere new use of an old substance without invention, and thus not achieve the threshold for invention required by paragraph 18(1)(a). Given that the material of the fibre optic conduit which is claimed has the novelty conferring features of being essentially bubble free and essentially void free, I am not convinced that the substance defined in the claims can properly be considered as being "old".

Accordingly I find that the invention is a manner of manufacture as required by paragraph 18(1)(a) of the Patents Act 1990.

CONCLUSION

I have found that the grounds of opposition of non-compliance with paragraph 18(1)(a) (manner of manufacture), paragraph 18(1)(b)(i) (novelty) and section 40 of the Patents Act 1990 have not been established, but I have found that the opponent has been successful in its ground of opposition of non-compliance with paragraph 18(1)(b)(ii) (inventive step). Moreover, having regard to the subject matter to which the present application is directed, I do not discern anything disclosed in the specification as enabling the specification to be amended to overcome the ground of lack of inventive step.

I refuse the application.

COSTS

In accordance with the general principle that costs follow the event, I award costs in accordance with Schedule 8 of the Patents Regulations against the applicant Lumenyte International Corporation.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant   :   Spruson & Ferguson, Sydney
Patent attorneys for the opponent   :   Halford & Co, Sydney